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Remembering S. P.

Sathe
THE 11TH NATIONAL MOOT COURT COMPETITION 2016-17
BEFORE
THE BOMBAY HIGH COURT

S. 62 OF INDIAN COPYRIGHT ACT, 1957; S. 134


OF

OF

THE TRADEMARKS ACT, 1999; S. 20

CIVIL PROCEDURE CODE, 1908; RULE 6A TO 6G OF CPC, 1908.

JACK SAMUELSON AND BRIGHTWALKER STUDIOS LTD.


V.

EARL GREY AND EDIFIED COMICS LTD.

COUNSEL APPEARING ON BEHALF OF THE DEFENDANT

MEMORIAL FILED ON BEHALF OF THE DEFENDANT


TEAM CODE: SP-31

TABLE OF CONTENTS
INDEX OF AUTHORITIES..........................................................................................................iii

STATEMENT OF JURISDICTION................................................................................................x
STATEMENT OF FACTS..............................................................................................................xi
ISSUES..........................................................................................................................................xii
SUMMARY OF ARGUMENTS..................................................................................................xiii
ARGUMENTS ADVANCED..........................................................................................................1
1. THAT THERE IS NO MISAPPROPRIATION

OF THE CHARACTER OF PLAINTIFF IN TERMS OF

COPYRIGHT INFRINGEMENT BY THE FANFICTION OR

ECL ON THE BASIS OF DE MINIMIS

AND

SUBSTANTIAL SIMILARITY DOCTRINE ...........................................................................................1


2. THAT THE CHARACTER DEVELOPED BY THE PLAINTIFF

WAS A MERE IDEA AND THUS NOT

PROTECTED ......................................................................................................................................5

3. THAT THE PLAINTIFF BSL WAS NOT

THE BROADCASTER IN I NDIA AND HENCE CANNOT

CLAIM COPYRIGHT PROTECTION UNDER THE

4. THAT THERE IS NO MISAPPROPRIATION


5. THAT THERE WAS AN INFRINGEMENT

ACT........................................................................9

OF PLAINTIFF S CHARACTER ....................................11

OF DEFENDANT S TRADEMARK ...................................17

PRAYER........................................................................................................................................xv

INDEX OF AUTHORITIES
Cases
Ainsworth v Walmsley........................................................................................................................13
AMF Inc v Sleekcraft Boat.................................................................................................................14
Anderson v Stallone...........................................................................................................................10
Animated Music Ltd Trademark........................................................................................................17
Apollinaris Co Ltd v Duckworth & Co..............................................................................................13
Arnstein v Porter..................................................................................................................................2
Associated Electronic and Electrical Industries v Sharp Tools...........................................................4
Associated Newspapers Ltd v Express Newspapers..........................................................................12
Bach v Forever Living Prods US Inc...................................................................................................9
Baigent v Random House.....................................................................................................................6
Baker v Selden.....................................................................................................................................6
BBC Worldwide v Pally Screen Printing...........................................................................................16
Benay v Warner Bros Entertainment Inc.............................................................................................4
Berkic v Crichton.................................................................................................................................7
Blackwood v AN Parasumaran............................................................................................................6
Blanch v Koons....................................................................................................................................4
Boison v Banian...................................................................................................................................2
Borden v Andrews................................................................................................................................6
Brestian v Try.....................................................................................................................................15
British Legion v British Legion Club.................................................................................................13
Brown v Its Entertainment Inc..........................................................................................................18
BT v One in a Million........................................................................................................................15
Burroughs v Metro-Golwyn Mayer Inc................................................................................................9
Cairns v Franklin Mint Co................................................................................................................16
Campbell v Acuff-Rose Music..............................................................................................................5
Campbell v Acuff-Rose Music Inc........................................................................................................5

CCH Canadian Ltd v Law Society of Upper Canada..........................................................................9


Chamberlin v Uris Sales Corpn...........................................................................................................8
Chancellor Masters and Scholars of the University of Oxford v Narendra Publishing House...........5
Chhattar Extractions Ltd & Anr v Kochar Oil Mills Ltd...................................................................14
Columbia Pictures Corp v National Broadcasting Co........................................................................1
Conan Doyle v London Mystery Magazine Ltd.................................................................................17
Conipco Corporation v Day-Brite Lighting Incorporated..................................................................1
Dallas Cowboys Cheerleaders Inc v Pussycat Cinemas Ltd.............................................................18
Danjaq LLC v Sony Corp..................................................................................................................19
Davis v Gap Inc...................................................................................................................................2
DC Comics Inc v Reel Fantasy Inc....................................................................................................10
DeCosta v Columbia Broadcasting Systems Inc................................................................................14
Designers Guild Ltd v Russell Williams Ltd........................................................................................7
Detective Comics v Bruns Publication................................................................................................7
Disney Enterprises Inc v Harakchand Keniya...................................................................................16
Donald v Zackmeyers TV Sales & Services.........................................................................................8
Donoghue v Allied Newspapers Ltd.....................................................................................................7
Eastern Book Co v DB Modak.............................................................................................................9
Edmund Irvine Tidswell Ltd v Talksport Ltd......................................................................................16
Ellis v Diffie.........................................................................................................................................3
Erven Warnink Besloten Vennotschap v J Townend & Sons (Hull) Ltd.............................................15
Erven Warnink v Townend & Sons Ltd..............................................................................................12
Euromarket Designs Inc v Peters......................................................................................................18
Fleischer Studios Inc v AVELA Inc....................................................................................................16
Fredrick Warne & Co, Inc v Book Sales Inc......................................................................................12
Gaiman et al v McFarlane et al...........................................................................................................8
Gruelle v Molly-Es Doll Outfitters Inc..............................................................................................12
Grundy Television Pty Ltd v Star Train Ltd.......................................................................................17

Harrods Ltd v Harrodian School Ltd.................................................................................................11


Harrods Ltd v R Harrod Ltd..............................................................................................................13
Harrods v Harrodian School.............................................................................................................13
Hart v Relentless Records Ltd............................................................................................................13
Herbert Rosenthal Jewelry Corp v Honora Jewelry Co......................................................................1
Hindustan Pencils Pvt Ltd v India Stationery Products & Co...........................................................18
Hodgkinson and Corby Ltd v Wards Mobility Services Ltd...............................................................17
Hollinrake v Truswell..........................................................................................................................7
India TV Independent News Service Ltd v Yashraj Films Ltd.............................................................2
Indian Performing Right Society Ltd v Eastern Indian Motion Pictures...........................................10
Inland Revenue Commissioners v Muller & Co.'s Margarine Ltd....................................................15
Interlude Technologies v Popular Entertainment Network Ltd...........................................................4
International News Service v Associated Press...................................................................................9
J Irizarry Y Puente v President and Fellows of Harvard College.......................................................7
JB Oxford & Co v First Tennessee Bank Nat Assn..............................................................................8
JB Williams Co v H Bronnley & Co Ltd............................................................................................17
Jewelers Circular Publishing Co v Keystone Publishing Co.........................................................8, 9
John Wiley & Sons Inc v Prabhat Chander Kumar Jain...................................................................10
Johnson & Johnson v Christine Moden (India) Pvt Ltd....................................................................14
Kelley v Arriba Soft Corp....................................................................................................................5
Kelly v Cinema Houses Ltd................................................................................................................10
Kenrick & Co v Lawrence and Co.......................................................................................................7
Kirloskar Diesel Recon Pvt Ltd v Kirloskar Proprietary Ltd............................................................19
Kouf v Walt Disney Pictures & Television...........................................................................................4
KP Permanent Make-up Inc v Lasting Impression............................................................................16
Lahr v Adell Chem Co.........................................................................................................................1
Leahy Kelly v Glover.........................................................................................................................13
Lone Ranger Inc v Cox......................................................................................................................19

Lyngstad v Anabas Products Ltd.......................................................................................................17


Manish Vij v Indra Chug....................................................................................................................14
Metcalf v Bohco...................................................................................................................................7
Miller v Universal City Studios Inc.....................................................................................................9
Miss World (Jersey) Ltd v James Street Productions Ltd..................................................................13
Mohendra Chundra Nath Ghosh v Emperor.......................................................................................3
Morecombe v Mecca..........................................................................................................................15
Murray Hill Publications Inc v Twentieth Century Fox Film Corp....................................................2
Music Broadcast Ltd v Indian Performing Right Society Ltd............................................................10
National Comics Publications v Fawcett Publications.......................................................................1
New Line Cinema v Easter Unlimited Inc...........................................................................................9
Nichols v Universal Pictures Corp......................................................................................................9
Norowzian v Arks Ltd.........................................................................................................................11
Oertli v Bowman................................................................................................................................13
Oslon v National Broadcasting Co Inc................................................................................................9
Palm Grove Beach Hotels Pvt Ltd v Royal Palms (India) Pvt Ltd....................................................18
Parker Knoll v Knoll International....................................................................................................15
Parle Products Ltd v JP & Co Mysore..............................................................................................18
Pellegrini v Allegrini...........................................................................................................................4
Perfect 10 Inc v Amazon Inc................................................................................................................4
Polaroid Corp v Polarad Elect Corp.................................................................................................13
Premier Pabst Corp v Elm City Brewing Co.....................................................................................18
Processed Plastic Co v Warner Communications..............................................................................12
Prouty v National Broadcasting Co.....................................................................................................1
R v Johnstone.....................................................................................................................................17
Reckitt & Colman Products Ltd v Borden..........................................................................................11
Reckitt & Colman Products Ltd v Borden Inc...................................................................................12
RG Anand v Delux Films.............................................................................................................1, 2, 7

Rice v Fox Broadcasting Co................................................................................................................4


Rich Products Corpn v Indo Nippon Food Ltd..................................................................................15
Robert W Cabell v Zorro Productions Inc.........................................................................................19
Rogers v Grimaldi..............................................................................................................................14
Rogers v Koons....................................................................................................................................6
Sabel v Puma.....................................................................................................................................15
Schweppes Ltd v Gibbens..................................................................................................................14
Sears Roebuck and Company v Stiffel Company.................................................................................1
Shipman v Radio Pictures Inc..............................................................................................................7
Shri Gopal Engineering & Chemical Works v POMX Laboratories.................................................18
Sid & Marty Krofft Television Prods Inc v McDonalds Corp..............................................................8
Sid & Marty Krofft Televisions Prods v McDonalds Corp...............................................................18
Singer Manufacturing Co v Loog......................................................................................................13
Smith v Weinstein.................................................................................................................................6
Sony Corp of America v Universal City Studios Inc............................................................................5
Sony Corporation of America v universal City Studios Inc.................................................................5
Sony Corporation of America v Universal Studios Inc........................................................................2
Spelling Goldberg Production Inc v BPC Publishing Ltd.................................................................11
Star India Ltd v Leo Burnett (India) Ltd............................................................................................11
Star India Private Limited v Leo Burnett (India) Private Limited......................................................7
Star India Private Ltd v Leo Burnett (India) Pvt Ltd.........................................................................16
Star Industrial Co Ltd v Yap KweeKor..............................................................................................15
Suntrust v Houghton Miffin Co............................................................................................................5
Thakkar Balvantray Purshottamdas v Hasmukhbhai Ugarchand Patel............................................12
The European v The Economist.........................................................................................................15
Three Boys Music Corpn v Bolton.......................................................................................................8
Universal Athletic Sales Co v Salkeld..................................................................................................1
Universal City Studios v Nintendo Co...............................................................................................12

University of London Press Ltd v University Tutorial Press Ltd.........................................................8


Walt Disney Prods v Air Pirates..........................................................................................................8
Walt Disney Productions v Air Pirates..........................................................................................7, 10
Warner Bros Entertainment v The Global Asylum.............................................................................19
Warner Brothers v Columbia Broadcasting Systems...........................................................................9
Whitman v Disney Productions..........................................................................................................18
Wright Layman & Umney v Wright...................................................................................................14

Statutes
Trademarks Act 1999.........................................................................................................................19

Books
Luigi Pirandello, Six Characters In Search of an Author, In Naked Masks.........................................7
William Cornish, Clarendon Law Lectures: Intellectual Property-Omnipresent, Distracting,
Irrelevant.........................................................................................................................................2

Article
Copyright in Characters: What Can I Use?.......................................................................................8
How You Are Protected.....................................................................................................................8
WIPO Broadcast Treaty and Webcasting........................................................................................11
Andrea D Fessler, The Next Frontier: Film Distribution over the Internet.....................................11
Anupam Chander & Madhavi Sunder, Everyones a Superhero: A Cultural Theory of Mary Sue
Fan Fiction as Fair Use...................................................................................................................3
Divyakant Lahoti, Copyright and Trade Mark Protection in the Title of a Movie and Characters...3
Jasmina Zecevic, Distinctively Delineated Fictional Characters That Constitute The Story Being
Told: Who Are They And Do They Deserve Independent Copyright Protection?.........................9
Kenneth E Spahn, The Legal Protection of Fictional Characters.....................................................2
Leslie A Kurtz, The Independent Legal Lives of Fictional Characters.............................................3

Leslie A Kurtz, The Rocky Road to Character Protection................................................................9


Pierre N Leval, Toward a Fair Use Standard....................................................................................4
Suzanne Keen, Readers Temperaments and Fictional Character......................................................3
Yankwich, Originality in law of Intellectual Property......................................................................2
Zahr K Said, Fixing Copyright in Characters: Literary Perspectives on a Legal Problem...............1

STATEMENT OF JURISDICTION

The Defendants humbly submit this memorandum before the Honorable Bombay High Court,
invoking section 62 of Copyrights Act 1957, section 134 of Trademarks Act, 1999 and section 20
of Code of Civil Procedure, 1908. The claimants further invoke Rule 6 (a) to 6 (g) of Code of
Civil Procedure, 1908 for filing a counterclaim for Infringement of Trademark under section 134
of Trademark Act, 1999.

This memorandum sets forth the facts, contentions and arguments for the defendants/
claimants in the given case.

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STATEMENT OF FACTS
Samuelsons literary masterpiece comprised an entire fantasy land of kings, dragons and
addictive political drama and quest for ultimate power. Samuelson decided to publish the Ballad
of Malice and Power in a series of seven books. The first book was released in 1994.
Brightwalker Studios Ltd. (BSL), a US based network and production company, successfully
closed a deal with Jack Samuelson in 2005 and acquired an exclusive license to adapt the Ballad
of Malice and Power into television show called Valar Dohaeris: The Beginning. BSL
released the first of the seven seasons of the show in 2009. In India it was viewed through a paid
online portal named ZoomIn.
Ms. Earl Grey intrigued by Boromir Bohemia one of the characters. He has never been alive in
the books or the series. But other characters make references to him and his feats of the past time
and again. She defined him as the protagonist in her version of the conquests Boromir had in the
land of Vengursa. She then employed her own imagination to create a plotline, new characters
and a new world altogether all in intricate detail. She calls her version of Boromirs conquests as
The Bohemian Rhapsody. She runs a blog called The Pickwick Papers. Her blog had highly
frequent viewership owing to which she raked in decent amount of revenue from advertisers.
Edified Comics Ltd. (ECL) approached Ms. Grey and secured an all-encompassing IP
assignment in The Bohemian Rhapsody in exchange for a hefty sum of royalty. Before launching
the comic book in 2016, ECL monetize the prevailing popularity of Boromir Bohemia from
Greys comics which were released in Feb 2015. BSL released the last episode of the Show in
2015. Series ended in February 2015, BSL produced and developed a spin-off series (a prelude to
the show) called Boromir the Conqueror based on the life and conquests of Boromir Bohemia.
BSL also commenced marketing and released a teaser-trailer in June 2015. The show was
globally released on 9th February 2016.
ECL released The Bohemian Rhapsody (the Comic) in the ongoing and hugely popular
ComiCraze event in Mumbai on 16th August 2016.
Highly aggrieved, Samuelson and BSL initiated appropriate legal proceedings against Earl Grey
and ECL before the Bombay High Court for misappropriating their character Boromir Bohemia.

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ISSUES

1.

THAT

THERE IS NO MISAPPROPRIATION OF THE CHARACTER OF PLAINTIFF IN TERMS

OF COPYRIGHT INFRINGEMENT BY THE FANFICTION OR

MINIMIS AND SUBSTANTIAL SIMILARITY


2.

THAT THE

ECL

ON THE BASIS OF

DE

DOCTRINE .

CHARACTER DEVELOPED BY THE

PLAINTIFF

WAS MERE AN IDEA AND THUS

NOT PROTECTED .

3.

THAT THE

PLAINTIFF

BSL WAS

NOT THE BROADCASTER IN INDIA AND HENCE CANNOT

CLAIM COPYRIGHT PROTECTION UNDER THE

ACT.

THAT THERE

IS NO MISAPPROPRIATION OF PLAINTIFF S CHARACTER .

5. THAT THERE

WAS AN INFRINGEMENT OF DEFENDANT S TRADEMARK .

4.

12

SUMMARY OF ARGUMENTS
1.

THAT

THERE IS NO MISAPPROPRIATION OF THE CHARACTER OF PLAINTIFF IN TERMS

OF COPYRIGHT INFRINGEMENT BY THE FANFICTION OR

ECL

ON THE BASIS OF

DE

MINIMIS AND SUBSTANTIAL SIMILARITY DOCTRINE .


The claimant humbly submits that there is no misappropriation of the plaintiffs character. Once
a reader comes to be familiar with a character, he wants to spend more time with that character.
There exists no copyright in ideas, themes, plots whereas expression of these is protected and the
copy done should be substantial to claim for infringement. The scope of the protection which the
law characters is uncertain because recovery of unfair competition could be claimed when there
is harm to the authors reputation by fanfiction.
2.

THAT THE

CHARACTER DEVELOPED BY THE

PLAINTIFF

WAS MERE AN IDEA AND THUS

NOT PROTECTED .
The claimant humbly submits that the protection of the right requires proof of copying of the

way in which the work is expressed, and not just of the initial idea behind it. It has been
suggested that the American cases show that in determining whether copyright protection should
be accorded to a character two questions must be answered: First, was the character as
originally conceived and presented sufficiently developed to command copyright protection, and
if so, secondly, did the alleged infringer copy such development and not merely a broader and
more abstract outline. Plaintiffs have not shown that defendants have copied the developed
character, and not merely the broader outlines. It is the clothing of an idea which is protected
rather than the idea itself, here the character was merely an underdeveloped idea and the
production of spin-off series was also an unexpressed idea.
3.

THAT THE

PLAINTIFF

BSL WAS

NOT THE BROADCASTER IN INDIA AND HENCE CANNOT

CLAIM COPYRIGHT PROTECTION UNDER THE

ACT.

An author does not possess any rights in the work once those rights are assigned in favor of the
producer of a cinematographic film who becomes the first owner of the copyright in such literary
work. Rights of the owner and exclusive licensee may not be the same. Section 2(ff) of the Act,
does not include transmission through internet and contains only four categories which do not
bring transmission through internet under its ambit and anyone with a fast internet connection
can become a broadcasting organization.
4.

THAT THERE

IS NO MISAPPROPRIATION OF PLAINTIFF S CHARACTER .

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The claimant humbly submits that there is no misappropriation of the character in terms of
trademark as well. It is claimed that the trademark BOROMIR has achieved distinctiveness. The
said trademark is a well-known mark in India and the unauthorized use of BOROMIR in relation
to any goods or services of any nature is likely to dilute the distinctive character of the mark.
5.

THAT THERE

WAS AN INFRINGEMENT OF DEFENDANT S TRADEMARK .

The principle of deemed public user of the mark by virtue of prior registration will apply and the
suit for infringement will be maintainable. The registration of a trademark gave the registered
proprietor the exclusive right to the use of the trademark in relation to his goods and to obtain
relief in respect of the infringement of the trademark in the manner provided by the act. Whether
a registered trademark comprising the name of a fictional character is infringed or not depends
on the circumstances, both of the type of use by the proprietor and the alleged infringer. The
trademark protected elements of character must fulfil the requirements of distinctiveness and
single source indication before they can be registered. Not just fictional characters, but the names
and costumes, even the total concept of feel of characters can be protected.
ARGUMENTS ADVANCED
1. THAT

THERE IS NO MISAPPROPRIATION OF THE CHARACTER OF PLAINTIFF IN TERMS

OF COPYRIGHT INFRINGEMENT BY THE FANFICTION OR

MINIMIS AND SUBSTANTIAL SIMILARITY

ECL

ON THE BASIS OF

DE

DOCTRINE .

Once a reader comes to be familiar with a character, he wants to spend more time with that
character.1 There exists no copyright in ideas, themes, plots whereas expression of these is
protected and the copy done should be substantial to claim for infringement. 2 The scope of the
protection which the law characters is uncertain 3 because recovery of unfair competition4 could

1 Zahr K Said, Fixing Copyright in Characters: Literary Perspectives on a Legal Problem [2014] 35 CLR 769.
2RG Anand v Delux Films AIR 1978 SC 1613.
3 Sears Roebuck and Company v Stiffel Company376 US 225 (1964).
4 Conipco Corporation v Day-Brite Lighting Incorporated376 US 234 (1964).

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be claimed when there is harm to the authors reputation by fanfiction. 5 No passing off or
confusion of cartoon character6 "Superman" caused by cartoon character "Captain Marvel"; No
public deception or confusion of plaintiffs picture "From Here to Eternity" by defendant's
burlesque "From Here to Obscurity".7
Relief is granted only when some additional interest is involved and denied if no public
deception or injury to the author was proven. 8 Even where copying is clear, it is necessary to
determine if the copying went so far as to constitute improper appropriation. 9"The threshold
question is what characteristics of [plaintiffs'] work have gained copyright protection." 10A
character appearing in fiction is not itself the subject ofcopyright, instead an element.
Simplybecause a work is copyrighted does not mean every element of that work is
protected.11As the character does not have a tangible existence, copyright law does not
recognize nor protect thecharacter outside the particular copyrighted work in which it appears.12
Accordingly, courts must rely on inferences drawn from the substantial similarity between
defendants work and the allegedly infringed work13 which in this case is infringed by the

5 Lahr v Adell Chem Co 300 F2d 256 (1stCir 1962); Prouty v National Broadcasting Co 26 FSupp 265 (1939).
6 National Comics Publications v Fawcett Publications93 FSupp 349 (SDNY 1950).
7Columbia Pictures Corp v National Broadcasting Co 137 FSupp 348 (SD Cal 1955).
8National Comics Publications v Fawcett Publications93 FSupp 349 (SDNY 1950); Columbia Pictures Corp v
National Broadcasting Co 137 FSupp 348 (SD Cal 1955).
9Universal Athletic Sales Co v Salkeld 511 F 2d 904, 907 (3rdCir).
10Herbert Rosenthal Jewelry Corp v Honora Jewelry Co 509 F2d 64, 65 (2nd Cir 1974).
11Boison v Banian273 F3d at 268 (2nd Cir 2001).
12 Kenneth E Spahn, The Legal Protection of Fictional Characters [1992] 9U MESL 331.
13Murray Hill Publications Inc v Twentieth Century Fox Film Corp361 F3d 312 (6th Cir 2004).

15

plaintiff.14 Thus it is essential to determine where characters stand on the theoretical continuum
by which expression is ultimately connected to idea. "[A] scattershot approach cannot support a
finding of substantial similarity because it fails to address the underlying issue: whether a lay
observer would consider the works as a whole substantially similar to one another." 15The
significance of such determinations gets clear when a fictional character is removed from its
original setting and carried forward in new vehicles. To justify the charge that a new character is
not original but an infringement, the incidents and situations through which that character
expresses must be looked into.16
The omission of any one of three elements of character viz. characterization, actions, and
reactions reduces the property taken to either an idea or its expression and neither is protected
under copyright law. In the Betmax case it was held that little copying which had been done had
caused no demonstrable harm to the copyright owner 17and do not break the law.18 In considering
the de minimis intent of the wrongdoer and size and type of harm have to be considered and
which cannot be proved in our case.19
In RG Anand v. Delux Films20 the court came to the conclusion that the number of similarities by
themselves is not sufficient to raise an inference of colorable imitation. Infringement occurs
when a substantial part of a work is taken, and that turns as much on what makes the work sell as
on any aesthetic criterion.21

14Arnstein v Porter 154 F 2d 464 (2nd Cir 1946).


15Williams v Crichton 84 F3d 588.
16 Yankwich, Originality in law of Intellectual Property [1952] 11 FRD 457.
17Sony Corporation of America v Universal Studios Inc 78 LEd 2d 574.
18Davis v Gap Inc246 F3d 152 (2nd Cir 2001).
19India TV Independent News Service Ltd v Yashraj Films Ltd (2012) 192 DLT 502.
20RG Anand v Delux Films (1978) 4 SCC 118.

16

The similarities are trivial and touch insignificant points and not appear to be of substantial
nature. One of the surest tests to determine whether or not there has been a violation of copyright
is to see if the reader, spectator or the viewer after having read or seen both thee works is clearly
of the opinion and gets an unmistakable impression that the subsequent work appears to be a
copy of the original. If the similarity of title and form between two works is not sufficient to
deceive a person of ordinary intelligence, no relief will be granted.22
Here, Greys version i.e. Bohemian Rhapsody was widely popular and garnered massive
response from the readers across the worlds. Had it been a copied version it would not be
accepted by the readers so freely.23 The two works were in no sense substantially similar the fan
developed the character with her talent and sketched him a face and body, installed a mind and
gave a storyline and made him a protagonist in her version.
The fact that when a novel ends, readers are sorry to part with the characters, and in that feeling
of association readers begin to compare themselves with their favorite character, imitate him,
empathize with him, or imagine him in new stories. 24Readers who are authors as well, try to
accommodate such characters in their own subsequent literary works. 25She used her imagination
to create a plotline, new characters and a new world altogether all in intricate detail, thus an
independent creation.26

21 William Cornish, Clarendon Law Lectures: Intellectual Property-Omnipresent, Distracting, Irrelevant (1st edn,
Oxford University Press 2005) 46.
22 Divyakant Lahoti, Copyright and Trade Mark Protection in the Title of a Movie and Characters [2010] PL
<http://beta.scconline.com> accessed 6 August 2016.
23Mohendra Chundra Nath Ghosh v Emperor AIR 1928 Cal 359.
24 Suzanne Keen,Readers Temperaments and Fictional Character [2011] 42 NLH 295.
25 Anupam Chander, Everyones a Superhero: A Cultural Theory of Mary Sue Fan Fiction as Fair Use [2007] 95
CLR 597, 601.
26Ellis v Diffie177 F3d 507 (6th Cir 1999).

17

It is a creative reuse of characters by the creation of original derivative works, which is


significant in its own right and can generally be distinguished from mere copying quite
effortlessly.

27

If a second author aims to make something fresh using the seeds of an earlier

work, what he will do is lift the characters out of earlier work and commence from that starting
point.28 Creative Intellectual activity is essential for the public welfare.29
The substantial similarity inquiry entails both an extrinsic and intrinsic test, both of which must
be satisfied.30 The intrinsic test focuses on whether the ordinary reasonable audience would find
the woks substantially similar in their total concept and feel.31
The reader, spectator or viewers opinion and impression on the work of the author is the lay
observer test.32
The extrinsic test is an objective measure of the articulable similarities between the plot, themes,
dialogue, mood, setting, pace, characters, and sequence of events.33 The test as to infringement of
copyright is not the test of mere likeness, but the work must be a copy, of the copyrighted work,
and not an original treatment of a subject open to treatment by the copyright holder. 34 Here the
content was totally different where the fan created her story, further plotline and characters.
Where the theme is same but resented and treated differently so that the subsequent work
27 Leslie A Kurtz, The Independent Legal Lives of Fictional Characters [1986] WLR 473.
28 Leslie A Kurtz, The Independent Legal Lives of Fictional Characters [1986] WLR 473.
29 Pierre N Leval, Toward a Fair Use Standard [1989] 103 HLR 1105.
30Rice v Fox Broadcasting Co 330 F 3d 1170 (9th Cir 2001).
31Benay v Warner Bros Entertainment Inc 607 F3d 620 (9th Cir 2010).
32Associated Electronic and Electrical Industries v Sharp ToolsAIR 1991 Kant 406.
33Kouf v Walt Disney Pictures & Television 16 F3d 1042, 1045.
34Pellegrini v Allegrini 2 FD 2d 620.

18

becomes a completely new work, no question of violation of copyright arises. There have to be
striking similarities between the two works compared as it cannot be by mere chance.35

1.1. That the work of the defendants was a transformative work and was protected by fair use
provisions: A work is transformative when the new work does not merely supersede the
objectives of the original creation but rather adds something new, with a further purpose or
different character, altering the first with new expression, meaning. 36 The more
transformative37 the new work, the less will be the significance of other factors (so was held in
Campbell38), like commercialism, that may weigh against a finding of fair use. 39 Other factors are
the quantum and the value of the matter taken and also the effect on the market share of the prior
work.40 The subsequent work must be different in character or transformative and not a mere
substitute it is not sufficient that superficial changes are done, the basic character remaining same
is transformative.
If it is transformative it might not matter that the copying is whole or substantial and not act as a
market substitute. Under U.S. Copyright law, the legality of a given work of fan fiction will
depend principally on three legal doctrines: (1) copyright ability of the underlying source work;
(2) the derivative work right; and (3) fair use. If the fan fiction creates a new work it is protected
and does not violate any copyright. In The Wind Done Gone controversy41 the highly
transformative nature of the defendants work overcame the other prongs of the fair use test.
35Interlude Technologies v Popular Entertainment Network Ltd (2009) 40 PTC 485 (Del).
36Perfect 10 Inc v Amazon Inc 508 F3d 1146.
37Blanch v Koons467 F3d 244 (2nd Cir 2006).
38Campbell vAcuff-Rose Music510 US 569 (1994).
39Sony Corporation of America v universal City Studios Inc 78 LEd 2d 574.
40CM and Scholars of the University of Oxford v Narendra Publishing House (2008) 38 PTC 385 (Del).
41Suntrust v Houghton Miffin Co252 F3d 1165 (11th Cir 2001).

19

There is no violation of copyright if the plaintiff fails to prove that the defendants work had
either reduced their viewership ornegatively impacted their business.42
For commercial use factor, courts consider two kinds of harm to the potential market for the
original work. First, whether the use in question acts as a direct market substitutefor the original
work. And second, when a commercial use amounts to mere duplication of the entirety of the
original, it clearly supersedes the object of the original, and making it likely that cognizable
market harm to the original will occur.43 The third factor assesses the amount and substantiality
of the copyrighted work that has been used. In general, the less that is used in relation to the
whole, the more likely the use will be considered fair.
In Sony Corp. of America v. Universal City Studios, Inc.44 copying entire television programs for
private viewing was upheld as fair use. In Kelly v. Arriba Soft Corporation45, if the secondary
user only copies as much as is necessary for his or her intended use it is not infringement. While
determining fair use the purpose for which a copyrightable material was used is considered. 46
There had to be some additional element of material alteration sufficient to make the work an
original work.

2. THAT

THE CHARACTER DEVELOPED BY THE

PLAINTIFF

WAS A MERE IDEA AND THUS

NOT PROTECTED .

The protection of the right requires proof of copying of the way in which the work is expressed,
and not just of the initial idea behind it. 47It has been suggestedthat the American cases show that
42Sony Corp of America v Universal City StudiosInc464 US 417 (1984).
43Campbell vAcuff-Rose Music Inc510 US 569 (1994).
44Sony Corp of America v Universal City StudiosInc464 US 417 (1984).
45Kelley v Arriba Soft Corp77 FSupp 2d 1116 (CD Cal 1999).
46Blackwood v AN Parasumaran AIR 1959 Mad 410.
47 TRIPs Agreement, art 9(2).

20

in determining whether copyright protection should be accorded to a character two questions


must be answered: First, was the character as originally conceived and presented sufficiently
developed to command copyright protection, and if so, secondly, did the alleged infringer copy
such development and not merely a broader and more abstract outline. 48 Plaintiffs have not
shown that defendants have copied the developed character, and not merely the broader
outlines.49It is the clothing of an idea which is protected rather than the idea itself, here the
character was merely an underdeveloped idea and the production of spin-off series was also an
unexpressed idea.50 It is not the idea which is protected but rather expression of idea that gives it
the distinctiveness and uniqueness is protected.51
In Da Vinci Code Case52, Lord Hoffmann stated that it was no infringement to replicate or
usefacts, ideas, theories, themes derived from the original copyright work. Law does not
recognize property rights in ideas53 but only in expression of the same in a particular manner
adopted by the author.54 In RG Anand it was held that a mere idea cannot be the subject matter of
copyright55 and impression conveyed to the audience is the sole determining factor.56 In
Designers Guild Ltd. v. Russell Williams Ltd57 it was observed that Copyright subsists not in
48Kurtz, Comparison between Characters [1990] 2 ELR 62.
49Smith v Weinstein578 FSupp 1297 (SDNY 1984).
50Borden v Andrews139 USPQ 557.
51Rogers v Koons 22 USPQ 2d 1492 (2nd Cir 1992).
52Baigent v Random House(2007) EWCA Civ 247.
53Baker v Selden101 US 99 (1879).
54J Irizarry Y Puente v President and Fellows of Harvard College 248 F2d 799 (1st Cir 1957).
55RG Anand v Delux Films AIR 1978 SC 1613.
56Shipman v Radio Pictures Inc100 F2d 533.
57Designers Guild Ltd v Russell Williams Ltd2001 FSR 11.

21

ideas but in the form in which the ideas are expressed 58 and there exists no copyright in ideas,
schemes or systems. Ideas however original are not protected59 under copyright act.60
Protectable expression includes the specific details of an authors rendering of ideas, or the actual
concrete elements that make up the total sequence of events 61 and the relationships between
major characters.62The intention of making a prelude was also an idea and not even conveyed to
the public. For a fictional character to be separately covered under the scope of copyright
protection, it is important that the character has been treated as an individual work of art.63

2.1. That the character in plaintiffs work was not sufficiently defined and thus not
copyrightable: Kellman states a fictional character to be considered of one or more of three
elements: 1) It can be an idea- a general concept (Like in this case); 2) It can be the expression or
detailed Development of an idea; 3) It can be a name.64A character is protected under
copyright only when it has a unique expression with certain attributes and not which is
vague orgeneric 65or stock, and needs some originality 66 and external factor to be added to
it to be protected. 67Stock or Basic character types are not entitled to copyright protection. 68 This

58Hollinrake v Truswell(1894) 3 Ch 420 (CA).


59Kenrick& Co v Lawrence and Co(1890) LR 25 QBD 99.
60Donoghue v Allied Newspapers Ltd(1937) 3 All ER 503.
61Berkic v Crichton 761 F2d 1293 (9th Cir 1985).
62Metcalf v Bohco 294 F3d 1069 (9th Cir 2003).
63Star India Private Limited v Leo Burnett (India) Private Limited 2003 (2) Bom CR 655.
64 Leon Kellman, The Legal Protection of Fictional Characters [1958] 25 BLR 3.
65Walt Disney Productions v Air Pirates 581 F2d 753 (9th Cir 1978); Detective Comics v Bruns Publication111 F2d
432 (2nd Cir 1940).
66Gaiman et al v McFarlane et al360 F3d 644.

22

gets very blurry in context of literal work where the author needs to describe the character
by sufficient originality.69
A work may be protected by copyright if it has contributed a substantial 70 distinguishable
variation from the older works as trivial variation71 falls below originality.72
Also, as visual characters are easier to delineate distinctively and are more likely to contain
some unique elements of expression, they tend to receive more copyright protection than
literary characters.73 At the same time, the visual perception of the character tends to create a
dominant impression against which the similarity of a defendants character may be readily
compared, and significant differences readily noted. 74 The costumed H.R. Pufnstuf characters
from childrens television show were found protectable.75
The idea of a man portraying money by wearing a costume of an exact replica of a US one
dollar bill is not protectable. However, the expression of this idea in the form of Bill, with
his costume, name, and specific character traits, is protectable. 76The court formulated the sweat
67How You Are Protected [2008] TWV <https://www.tvwritersvault.com/writers/HowYouAreProtected>accessed
21 August 2016.
68JB Oxford & Co v First Tennessee Bank Nat Assn427 FSupp 2d 784 (2006).
69Copyright in Characters: What Can I Use? [2006]<http://www.aspectlg.com/posts/copyright-in-characters-whatcan-i-use> accessed 22 August 2016.
70Chamberlin v Uris Sales Corpn150 F 2d 512 (2nd Cir 1945).
71Three Boys Music Corpn v Bolton 212 F3d 477, 489 (9th Cir 1945).
72Donald v Zackmeyers TV Sales & Services 426 F2d 1027 (5th Cir 1970).
73Walt Disney Prods v Air Pirates581 F2d 751 (9th Cir 1978).
74JB Oxford & Co v First Tennessee Bank Nat Assn 427 FSupp 2d 800 (2006).
75Sid & Marty Krofft Television Prods Inc v McDonalds Corp 562 F2d 1157 (9th Cir 1977).
76JB Oxford & Co v First Tennessee Bank Nat Assn 427 FSupp 2d 800 (2006).

23

of the brow77 doctrine to scrutinize whether a work was original or not and effort of the author
should be visible.78 The sweat of the brow doctrine has numerous flaws as it said that the second
author cannot take one word of the previous authors work and rather work independently. 79 The
doctrine thereby, eschewed the most fundamental axiom of copyright law that no one may
copyright facts or ideas.80 Later this doctrine was negated.81 The Supreme Court in Eastern Book
Co. v. D.B. Modal82 rejected the sweat of the brow doctrine, and held that the work must be
original and different in character with a distinguishable variation 83 with minimal degree of
creativity.
The SC noticed that the two positions, i.e. the sweat of the brow and modicum of creativity were
extreme positions. Judge Learned Hand developed the distinctly delineated threshold in the
landmark case Nichols v. Universal Pictures84, as Character Delineation Test which prescribes
that more developed the character, the more it embodies expression, and less a general idea and
more likely it is to be copyrightable. 85 Now developed in a two-part test: Whether the characters
expression is sufficiently delineated to be copyrightable; and, if it is, whether there has been an
infringement of this expression.86
77University of London Press Ltd v University Tutorial Press Ltd(1916) 2 Ch 601.
78Jewelers Circular Publishing Co v Keystone Publishing Co 281 F 83 (2nd Cir 1922).
79Jewelers Circular Publishing Co v Keystone Publishing Co 281 F 89 (2nd Cir 1922).
80Miller v Universal City Studios Inc 650 F 2d 1365-1369 (5th Cir 1981).
81CCH Canadian Ltd v Law Society of Upper Canada (2004) 1 SCR 339.
82Eastern Book Co v DBModak(2008) 1 SCC 1.
83International News Service v Associated Press536 F2d 486.
84Nichols v Universal Pictures Corp 45 F2d 119 (2nd Cir 1930).
85 Jasmina Zecevic, Distinctively Delineated Fictional Characters That Constitute The Story Being Told [2006] 8
VJETL 365.
86 Leslie A Kurtz, The Rocky Road to Character Protection [1990] ELR 62, 67.

24

The crux of Judge Hands test is that an inadequately developed character amounts merely to be
an idea not securing any copyright protection.87The test of fictional characters being sufficiently
delineated has been cited in Tarzan88, Freddy Krueger and his glove89, Jonathan Livingston
Seagull90In Warner Brothers v. Columbia Broadcasting Systems 91, The Story Being Told was
developed that if a character is not a prominent part of the story, it is not copyrightable, and
others may use the character without infringing on copyright of the story. The character must be
distinctly delineated92.The Sam Spade test would eliminate most characters from copyright
protection, since it seems limited to stories devoid of plot.93
These courts expressed that copyright protection can be given to a literary character only, when it
attains a distinctive personality.94In Kelly v Cinema Houses Ltd95, in a judgment approved by the
Court of Appeal, the question was expressly left open by Maugham, J. when he said:
If, for instance, we found a modern playwright creating a character as distinctive and
remarkable as Falstaff, or as Tartuffe, or (to come to a recent classic) as Sherlock Holmes,
would it be an infringement if another writerwere to borrow the idea and to make use of an
obvious copy of the original? I should hesitate a long time before I came to such a conclusion
But whatever the answer may be I am strongly of the opinion that there can be no infringement
in such a case if the characteris devoid of novelty.

87Oslon v National Broadcasting Co Inc855 F2d 1446 (9th Cir 1988).


88Burroughs v Metro-Golwyn Mayer Inc519 FSupp 391 (SDNY 1981).
89New Line Cinema v Easter Unlimited Inc1989 US Dist Lexis 17340 (EDNY 1989).
90Bach v Forever Living Prods US Inc473 FSupp 2d 1127 (WD Wash 2007).
91Warner Brothers v Columbia Broadcasting Systems216 F2d 945 (9th Cir 1954).
92Anderson v Stallone 11 USPQ2D 1161 (CD Cal 1989).
93Walt Disney Productions v Air Pirates 581 F2d 751 (9th Cir 1978).
94DC Comics Inc v Reel Fantasy Inc696 F2d 24 (2nd Cir 1982).
95Kelly v Cinema Houses Ltd MacG Cop Cas (1935) 362 (CA).

25

3. THAT

THE PLAINTIFF

BSL WAS

NOT THE BROADCASTER IN INDIA AND HENCE CANNOT

CLAIM COPYRIGHT PROTECTION UNDER THE

ACT.

An author does not possess any rights in the work once those rights are assigned in favor of the
producer of a cinematographic film96 who becomes the first owner of the copyright in such
literary work.97 Rights of the owner and exclusive licensee may not be the same. 98Section 2(ff) of
the Act, does not include transmission through internet and contains only four categories which
do not bring transmission through internet under its ambit and anyone with a fast internet
connection can become a broadcasting organization. Approval of the broadcaster/webcaster will
also be needed if property-like rights are bestowed upon the act of distributing signal in the form
of a broadcast or hosting audio and visual content for webcasting. Materials in the public domain
and openly-licensed content will become more difficult to gain access to, and the exercise of fair
dealings with copyrighted content will be hampered.
Thus, the fair dealing rights over the signal will probably end up being more limited than the fair
dealing rights over content. This often has the negative effect of making the availability of
content dependent upon the provider, with the consumer having little or no choice on whether
they receive the product.99 In all internet distribution deals, the producer will be required to
warrant that it has all necessary rights to license the audio-visual product to the distributor. Thus,
owning thecopyright for a feature film may not be sufficient to be able to distribute the film on
the internet if, for example, the author, on whose work the screenplay was closely based, did not
grant internet distribution rights in the original license or assignment which becomes
tedious.100For the second broadcast to infringe the right of the first broadcast it has to be an actual
copy of the first film and only the recording and nothing else.
96Indian Performing Right Society Ltd v Eastern Indian Motion Pictures(1977) 2 SCC 820.
97Music Broadcast Ltd v Indian Performing Right Society Ltd (2011) 47 PTC 587 (Bom).
98John Wiley & Sons Inc v Prabhat Chander Kumar Jain (2010) 170 DLT 701.
99 WIPO Broadcast Treaty and Webcasting [2010]<http://cis-india.org/a2k/blogs/wipo-broadcast-treaty-andwebcasting> accessed 27 August 2016.
100 Andrea D Fessler, The Next Frontier: Film Distribution over the Internet [2000] ELR 183.

26

If it totally matches but still is a reshoot it is protected. 101 It should be a total or partial copy and
not be reshoot.102 It has to be an exact copy of the original film and not remake of the film and if
it is shot or filmed separately by a person and it resembles the earlier film, the subsequent film is
not a copy of the first film and therefore does not amount to infringement of whole of the
copyright of the first film.103

4. THAT THERE IS NO MISAPPROPRIATION OF PLAINTIFF S CHARACTER.


It is claimed that the trademark BOROMIR has achieved distinctiveness. The said trademark is a
well-known mark in India and the unauthorized use of BOROMIR in relation to any goods or
services of any nature is likely to dilute the distinctive character of the mark.

4.1.That there was no case of passing off: Factors of classical trinity: 1. Reputation of the
plaintiff; 2. Misrepresentation by defendant; 3. Damage to the plaintiff. 104 The plaintiff must
establish goodwill or reputation such that the get-up is recognized by the public as distinctive
specifically.105In 1978-79, Diplock LJ set out five guidelines for passing off actions in Erven
Warnink v. Townend& Sons Ltd.106
Oliver LJ in Reckitt & Colman Products Ltd. v. Borden Inc. distilled these into the three
probanda in the tortious actions in passing off that we now know as the Classic Trinity. The
Classical Trinity places on a plaintiff the burden of proving goodwill in its goods or services. 107

101Norowzian v Arks Ltd 2998 FSR 394.


102Spelling Goldberg Production Inc v BPC Publishing Ltd 1981 RPC 283.
103Star India Ltd v Leo Burnett (India) Ltd (2003) 2 Bom CR 655.
104Reckitt & Colman Products Ltd v Borden (1990) RPC 341.
105Associated Newspapers Ltd v Express Newspapers (2003) FSR 51.
106Erven Warnink v Townend & Sons Ltd[1979] AC 731 (HL).
107Reckitt & Colman Products Ltd v Borden Inc[1990] 1 All ER 873.

27

In Spalding v. Gamage108, 5 characteristics were identified for a valid action of passing off: (i)
Misrepresentation; (ii) Made by the trader in the course of trade; (iii) to prospective customers;
(iv)which is calculated to injure the goodwill of the business; (v) which causes actual damage to
a business or goodwill of the particular trader. In passing off action, dissimilarity is required to
be taken into consideration as well.109
4.1.1. That there is no single source of identification: Single source origin for trademarks can
prove to be troublesome for fictional characters since they are associated with different sources
like authors110, producers111 and even with themselves. If the plaintiff is not able to establish that
their character had acquired secondary meaning as a source identifier, then defendant could not
be held liable.Held, that the plaintiffs character illustrations were not inherently distinctive but
could have acquired it through widespread use and recognition which plaintiff had to prove and
that the illustrations signify the goodwill and reputation.112
Held, that existence of other right and license holders of the mark indicated the trademarks
inability to designate a single source of origin.113

4.1.2.The reputation was not affected, hence there was no misrepresentation: The courts
observed that there is fraud where there is an attempt to pose as being a particular business firm
when you are not and are not entitled to use their name. 114 Reputation is affected when plaintiff
uses a mark in relation to his goods and builds association with it and the defendant induces
108Spalding v Gamage(1915) 32 RPC 273.
109Thakkar Balvantray Purshottamdas v HasmukhbhaiUgarchand Patel (1994) 2 Guj 1714.
110Gruelle v Molly-Es Doll Outfitters Inc94 F2d 174 (3rd Cir 1937).
111Processed Plastic Co v Warner Communications Inc 675 F2d 852 (7th Cir 1982).
112Fredrick Warne & Co Inc v Book Sales Inc481 FSupp 1191 (SDNY 1979).
113Universal City Studios v Nintendo Co 578 FSuppl 911 (SDNY 1983).
114Harrods Ltd v R Harrod Ltd (1923) 41 RPC 74.

28

customers and misrepresents his goods as those of the plaintiffs. 115 The overriding consideration,
in judging extent of reputation, is whether the claimant has used his mark so extensively that
people might be misled116 and has built up goodwill to the point where substantial damage will
be caused to it by the acts he complaints of.117 The defendants goods must lead people to accept
them on the faith of the plaintiffs reputation, and it must not merely demonstrate a connection. 118
Innocence is sometimes accepted as a defense.119
The use of similar name or get-up in order to satirize or disparage the plaintiff or his goods
or business is not actionable as passing-off in the absence of a misrepresentation even if
such conduct is likely to be damaging to the plaintiff. 120 Activities which in some sense can be
regarded as taking advantage of the plaintiffs trading reputation and goodwill, like copying the
plaintiffs goods or a novel character or selling goods or services by reference to him or as if
similar or a substitute for themare not actionable.121
There is no evidence that plaintiff has suffered either through loss of customers or injury to
reputation, since defendant has conducted its business with high standards; and that the very
nature of defendant's businessprecludes any substantial possibility of confusion and defendant
also asserts plaintiff's laches to be a bar.122

115Oertli v Bowman (1957) RPC 388 at 397.


116Leahy Kelly v Glover (1893) 10 RPC 141 at 155.
117Hart v Relentless Records Ltd (2003) FSR 567 at 574.
118Harrods v Harrodian School (1996) RPC 697 at 713.
119Ainsworth v Walmsley (1866) LR 1 EQ 518.
120Miss World (Jersey) Ltd v James Street Productions Ltd(1981) FSR 309 (CA).
121Halsburys Laws of England (4th edn, 1995) vol 48, para 173.
122Polaroid Corp v Polarad Elect Corp 287 F2d 492 (2nd Cir 1961).

29

4.1.3. Just the proof of fraudulent intention is not essential:A trader is entitled to sail close to the
wind, so long as he steers clear of actual misrepresentation.123

4.1.4. There must be a proof of likelihood of deception or confusion: Likelihood of confusion


tests vary from jurisdiction to jurisdiction, but generally if character is well known, the courts
have often enjoined the infringing users from using the fictional character in a different form. An
eight factor test was introduced examining the: 1) strength of the mark; 2) proximity of the
goods; 3) similarity of the marks; 4) evidence of actual confusion; 5) marketing channels used;
6) degree of care customers are likely to exercise; 7) defendants intent in selecting the mark; 8)
likelihood of expansion in other markets.124
The defendant may escape liability if he can show that the added matter is sufficient to
distinguish his goods from those of the plaintiff.125 The deception must be more than momentary
and inconsequential.The added matter, the difference in the trademark etcetera negates the
possibility of deception.126 While dealing with a passing-off action, the whole question is that
whether the thing is taken in its entirety would deceive a person with reasonable comprehension
and proper insight.127
Judge Jon O. Newman in Rogerss v Grimaldi128 said that the [Lanham] Act should be construed
to apply to copyrighted works only where the public interest in avoiding consumer confusion

123Wright Layman & Umney v Wright (1949) 66 RPC 149.


124AMF Inc v Sleekcraft Boat599 F2d 348 (9th Cir 1979).
125Chhattar Extractions Ltd& Anr v Kochar Oil Mills Ltd1995 SCC OnLine Del 570.
126Johnson & Johnson v Christine Moden (India) Pvt Ltd (1987) 1 Arb LR 11.
127Schweppes Ltd v Gibbens (1905) 22 RPC 601 (HL).
128Rogers v Grimaldi875 F2d 994 (2nd Cir 1989).

30

outweighs the public interest in free expression. Held, that limited use of character and
difference in audience was not likely to result in confusion.129

4.1.5. The degree of resemblance must also be looked into: The visual, oral and
conceptualsimilarity of the marks must be considered and particular regard has to be made to the
dominant and distinctive elements of the marks.130 Similarity per se is acceptable so long as it
does not lead to confusion.131

4.1.6. The goodwill of the Plaintiff must be affected and damage must be caused: Goodwill has
been described as the attractive force which brings in customers. 132Lord Diplock said that the
essence of the tort of passing-off is a misrepresentation made by the defendant which is
calculated to cause damage to the business or goodwill of the plaintiff..133The act of the tort
should injure the goodwill not just his reputation.134
The plaintiff must show that he has proprietary interest in the name and that the adoption of
name by the defendant brings about a tangible risk of damage. 135A passing off action is a remedy
for the invasion of a right, name or get-up improperly used, but if the business or goodwill likely

129DeCosta v Columbia Broadcasting Systems Inc520 F2d 520 (1st Cir 1975).
130The European v The Economist (1998) FSR 283; Sabel v Puma 1998 RPC 199.
131The European v The Economist (1996) FSR 431.
132Inland Revenue Commissioners v Muller & Co Margarine Ltd [1901] AC 217.
133Erven Warnink Besloten Vennotschap v J Townend & Sons (Hull) Ltd(1979) 2 All ER 927 (HL).
134Rich Products Corpn v Indo Nippon Food Ltd 2010 SCC OnLine Del 734.
135Brestian v Try 1958 RPC 161 (CA).

31

to be injured by the misrepresentation. 136The claimant is required to establish a likelihood of


actual financial loss from the defendants actions.137

4.1.7. There must be a common field of activity:The claimant either has to prove fraud or requires
something akin to a monopoly interest in the name or indicia so that there is real damage to the
exclusivity in the name.138

4.2. Limits of passing off: Trading must be honest and also must not even unintentionally be
unfair.139 The defendant is not liable for mere confusion caused by cessation of de facto
monopoly which the defendant breaks and the customers assume to believe for a certain period
of time that his goods are those of the plaintiffs. 140It would be difficult to accept at this stage that
Defendant has misrepresented to prospective customers of Plaintiff with an object of injuring
Plaintiffs business or goodwill. Ingredients of passing off as per settled principles are not
established.

4.3.That there is no character merchandising: In relation to character merchandising, unless the


public can be shown to be well aware of merchandising in the particular field, there will be no
obvious link between the production of television programs or films and the manufacturers of
toys, clothes, etcetera, with which character names may be profitably used. 141It is not a necessary

136Star Industrial Co Ltd v Yap KweeKor 1976 FSR 256 (PC).


137Morecombe v Mecca (1966) RPC 423.
138BT v One in a Million (1999) FSR 1 (CA).
139Parker Knoll v Knoll International (1962) RPC 265 at 278.
140My Kinda Town v Soll (1983) RPC 407(CA).
141Star India Private Ltd v Leo Burnett (India) Pvt Ltd (2003) 27 PTC 81 (Bom).

32

feature of merchandising that the members of the public will think that the products are in any
sense endorsed by the filmmakers or the actors in the film.142
The Plaintiff must show that the public would look at the defendants artwork and consider it to
represent the plaintiffs products made with the plaintiffs approval, for the plaintiff to succeed in
an action for passing off.143In a case144the plaintiffs submitted that Disney Trademarks when used
in respect of merchandizing signify to the purchaser that the product or service comes from the
plaintiffs and is of highest quality. Like in the case at hand in which the defendants have put in a
lot of efforts and have advertised the character over a long time, the plaintiffs alleged that they
spent enormous amounts of money and effort promoting its goods and services through the use
of the Disney Characters. The case was held in the plaintiffs favor.
Where the mark is used to describe alleged infringers own goods rather than misleading about
the source, then it is a situation of fair use. 145 Even use that might cause some confusion can be
considered as fair.146Defendants depiction of Betty Boop character in its merchandise was a fair
use.147

4.3.1. Passing off in Character Merchandising: Use of the name of a character in the title of a
book was not to be regarded as trade mark use in the absence of evidence that the name was
perceived by consumers as an origin of the goods. 148Fictional characters become

142Edmund Irvine Tidswell Ltd v Talksport Ltd (2002) EWHC 367 (Ch).
143BBC Worldwide v Pally Screen Printing (1998) FSR 665.
144Disney Enterprises Inc v Harakchand Keniya2011 SCC OnLine Del 4504.
145Cairns v Franklin Mint Co 292 F3d 1139 (9th Cir 2002).
146KP Permanent Make-up Inc v Lasting Impression Inc 543 US 119 (2004).
147Fleischer Studios Inc v AVELA Inc654 F3d 958 (9th Cir 2011).
148Animated Music Ltd Trademark (2004) ETMR 1076.

33

trademarkseither by registration as trademarks or use in such a way that they will be seen
as trademarks.149

4.3.2. Elements of passing off in relation to character merchandising:Firstly, it must be shown


that the public will assume from the way in which reference is made to the character or story that
the defendants goods are connected with or licensed by the plaintiff. 150 It was held that Badges
Depicting Popular Musicians satisfied a popular demand among teenagers for effigies of their
idols and did not imply that the musicians had authorized them. 151Secondly, the assumption on
the part of the public that the plaintiff is connected with the defendants goods must arise from
the misrepresentation made by him, and if he has merely adopted features of the plaintiffs
character or story which have inside value, it may be difficult to attribute the assumptions to any
misrepresentation.152Thirdly, the plaintiff must establish the likelihood of damage to his business
or goodwill as a result of the defendants misrepresentation.153
Since the defendants are not passing off the character of the petitioner but merchandizing their
own thus after the production of the prelude by the petitioner the public will connect their
merchandized goods as that of petitioners which is blatant infringement by the petitioners. In a
case154 it was held that since the public connected the turtles drawings by the defendants with
plaintiffs and this was sufficient link between the goods being sold and to found a case of passing
off.

149R v Johnstone [2003] UKHL 28.


150Conan Doyle v London Mystery Magazine Ltd (1949) 66 RPC 312.
151Lyngstad v Anabas Products Ltd (1977) FSR 62 (Abba).
152JB Williams Co v H Bronnley & Co Ltd (1909) 26 RPC 765 (CA).
153Hodgkinson and Corby Ltd v Wards Mobility Services Ltd(1974) 1 WLR 1564.
154Mirage Studios v Counter-Feat Clothing Co Ltd [1991] FSR 145.

34

4.4. Defense of delay against passing off action: Unexplained Delay of one and a half years
held fatal to the grant of injunction. 155 Inordinate Delay: Delay for so long that the defendant
may come to the conclusion that the plaintiff has possibly abandoned his right to seek relief. 156 If
the passage of time can be shown to have lulled defendant into a false sense of security, and the
defendant acts in reliance thereon, laches may be found.157

5. THAT THERE

WAS AN INFRINGEMENT OF DEFENDANT S TRADEMARK .

The principle of deemed public user of the mark by virtue of prior registration will apply and the
suit for infringement will be maintainable.158 The registration of a trademark gave the registered
proprietor the exclusive right to the use of the trademark in relation to his goods and to obtain
relief in respect of the infringement of the trademark in the manner provided by the act. 159
Whether a registered trademark comprising the name of a fictional character is infringed or not
depends on the circumstances, both of the type of use by the proprietor and the alleged
infringer.160 The trademark protected elements of character must fulfil the requirements of
distinctiveness and single source indication before they can be registered. Not just fictional
characters, but the names161 and costumes162, even the total concept of feel of characters can be
protected.163
155Shri Gopal Engineering & Chemical Works v POMX Laboratories AIR 1992 Del 302.
156Hindustan Pencils Pvt Ltd v India Stationery Products & Co AIR 1990 Del 19.
157Whitman v Disney Productions 263 F2d 229 (9th Cir 1958).
158Palm Grove Beach Hotels Pvt Ltd vRoyal Palms (India) Pvt Ltd 2016 SCC OnLine Bom 2178.
159Parle Products Ltd v JP & Co Mysore AIR 1972 SC 1359.
160Euromarket Designs Inc v Peters (2001) FSR 20.
161Premier Pabst Corp v Elm City Brewing Co9 F Supp 760(D Conn 1935).
162Brown v Its Entertainment Inc34 F Supp 2d 860 (EDNY 1999).
163Sid & Marty Krofft Televisions Prods v McDonald Corp562 F2d 1167 (9th Cir 1979).

35

Held that the uniform worn by the character was trademarkable and the other party was
prohibited from using it regardless of the fact that the party filing the suit had not registered
trademark on its uniform.164 Held that Lone Ranger was a well-known character and using it in
circus and rodeoshows was enjoined to prevent likelihood of confusion.165 If the trademark has
achieved wide recognition, the user of the identical trade name is not permissible as it would be
sufficient if it causes an actual confusion.166 Court prohibited the use of James Bond mark by
Sony because that would lead to dilution of the mark by blurring.167 Held, that Age of the Hobbits
was similar to The Hobbit: An Unexpected Journey and thus injunction barring its distribution
was granted.168 It is possible to prove distinctiveness for a trademark bearing a fictional
characters name even decades later.169 Trademarks depicting subject matter or content of goods
rather than the trade origin are non-distinctive.170

Therefore, since the word BOROMIR was given a graphical representation by the defendants, its
use would induce the customers to believe that the source of the products is the defendant and
not the plaintiff. A case of clear infringement of the defendants trademark by the plaintiff is
hence established.
If the mark is being used by another party in such a manner that potential consumers are likely to
believe that such use is endorsed by or otherwise associated with the marks owner, then the
marks owner may have rights to prevent such use and to seek damages and other remedies for
the same. Therefore, when the plaintiff goes ahead and conveniently uses our pictorial
164Dallas Cowboys Cheerleaders Inc v Pussycat Cinemas Ltd604 F2d 204 (2nd Cir 1979).
165Lone Ranger Inc v Cox124 F2d 650 (4th Cir 1942).
166Kirloskar Diesel Recon Pvt Ltd v Kirloskar Proprietary LtdAIR 1996 Bom 149.
167Danjaq LLC v Sony Corp 165 F3d 915 (9th Cir 1998).
168Warner Bros Entertainment v The Global Asylum(2012) WL 6951315 (CD Calif 2012).
169Jules Rimet Cup Ltd v The Football Assocation Ltd (2007) EWHC 2376 (Ch).
170Robert W Cabell v Zorro Productions Inc OHIM No 7924 C.

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representation as a base for his character in the prelude, there exists a clear case of infringement
of trademark by the plaintiff.
Of key significance in the law of passing-off is the requirement that the name or catch phrase
should be distinctive of the plaintiff rather than of another person. If the mark does not possess
this quality, then a business claiming ownership of this mark cannot be damaged by its
misappropriation. Thus, the registration of the defendants mark stands valid, since the
distinctiveness to it was given by the breathing of life and soul into Boromirs character by Ms.
Earl Grey. Therefore when the plaintiff failed to provide distinctiveness to its character owing to
it being just a concept, unlike the defendant who developed the character in its entirety, the
plaintiff approached the court for misappropriation to put a blanket on its infringing activity
thereby trying to evade their liability for infringement.
Supreme Court in Dastar Corp v. Twentieth Century Fox Film,171 interpreted the term origin in
the Lanham Act, to apply only to the producer of the tangible goods which are offered for sale,
and not to the author of any idea, concept or communication embodied in these goods. Therefore
when the public associates the term Boromir to a product, it would be the defendants products,
and hence the defendants have succeeded to create a secondary meaning of the trademark by
establishing an association of the term with their products.

Hence, under Section 29 (4) (c) of The Trademarks Act 1999, a registered trademark is infringed
by a person who not being a registered proprietor uses in the course of trade, a mark which has a
reputation in India and the use of the mark without due cause takes unfair advantage of or is
detrimental to, the distinctive character or reputation of the registered trademark.
PRAYER

In the light of arguments advanced and authorities cited, the Claimants humbly submit that
the Honble Court may be pleased to adjudge and declare that:

171 Dastar Corp v Twentieth Century Fox Film 539 US 31 (2003).

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1. That the claim for misappropriation of the plaintiffs character Boromir Bohemia
by the defendants be dismissed.
2. That the order be passed for injunction against the unlawful use of the claimants
trademark by the plaintiffs under s.135 of Trademarks Act, 1999.

3. That monetary relief be provided which includes damages sustained by the


claimants, accounts of profits by plaintiffs.

4. That there should be an appointment of authority for withholding of the


infringing material.

Grant any other order as it deems fit in the interest of equity, justice and good
conscience.
Sd/(Counsels for the Claimants)

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