SEEDLING SCHOOL OF LAW AND GOVERNANCE

JAIPUR NATIONAL UNIVERSITY

BEFORE THE HON’BLE DISTRICT COURT

UNDER SECTION 20 OF CIVIL PROCEDURE CODE

PRODUCER A………………………….………………………………...…………(PLAINTIFF)

V.

ASSOCIATION OF PAST PROFUCERS……………………………………………….(DEFENDANT)

MATTER CONCERNING INFRINGEMENT OF TRADEMARK AND COPYRIGHTS

SUBMITTED TO: SUBMITTED BY:-

POOJYASHREE KUMAWAT DIVYA ASHWANI
ASSISTANT PROFESSOR B.A.LL.B.,
(HONS.)
S.S.L.G, JNU VIITH SEMESTER
(2018-2023)
 TABLE OF CONTENTS

CONTENTS PAGE. NO.

LIST OF ABBREVIATIONS 3

INDEX OF AUTHORITIES 4-5

STATEMENT OF JURISDICTION 6

STATEMENT OF FACTS 7-8

ISSUES RAISED 9

SUMMARY OF ARGUMENTS 10

PLEADINGS 11-18

PRAYER 19
 LIST OF ABBREVIATIONS

AIR All India Reporter

A Article

Hon’ble Honourable

Ors. Others

PIL Public Interest Litigation

SC Supreme Court

SCC Supreme Court Cases

u/s Under Section

UOI Union of India

v. Versus

Vol. Volume
 INDEX OF AUTHORITIES

CASES

STATUTES

OTHER AUTHORITIES

ARTICLES

BOOKS REFERRED:

1. Anne Gilson, Lalonde Gilson on Trademarks, vol 3 (Lexis Nexis 2010)

2. Arthur Wineburg Editor, Intellectual Property Protection in Asia (2nd edn Lexis Nexis
2010)
3. Dr. Raghbir Singh, Law Relating to Intellectual property, vol 1 (2nd edn Universal Law
Publishing.co.pvt.ltd)
4. Dr. Raghbir Singh, Law Relating to Intellectual property, vol 2 (2nd edn Universal Law
Publishing.co.pvt.ltd)

WEBLINKS:

 http://www.manupatra.com

 http://www.Indiankanoon.com

 http://lexisnexis.com

 http://www.lawyersclubindia.com

 http://www. westlaw.com

 http://www.lawindia.com
 STATEMENT OF JURISDICTION

The Plaintiff humbly submits this memorandum in response to the suit filed before this
Honourable Court. The counter-claim invokes its jurisdiction under Section 134 of The Trade
Marks Act, 1999, Section 62 of Copyright read along with Section 20 of the Code of Civil
Procedure. It sets forth the facts and the laws on which the claims are based.
 STATEMENT OF FACTS

Producer A engaged a team of students to research possible parameters that could have defined
the success of 50 pre-determined blockbusters, selected by the Producer, out of a collection of
several hundred blockbusters. The parameters that are to be examined include the lead and
supporting actors, movie theme, music, lyrics, dialogues, time of release of film, extent of
special effects used, technical finesse, characters displayed by the actors, backdrop of social
conditions prevalent in the society, etc.

The team of students revisits the 50 blockbusters by examining the scenes by scene footage,
interviews the Producers and Directors of the said films randomly, screens newspaper articles,
reports and interviews and prior and post release notes and conduct a poll of few movie lovers
across generations to create a list of such "success factors".

The research material is then submitted to Producer A, who exercises his discretion and
identifies a few elements of relevance in modern day film making. Such elements are then
regrouped and evolved the form of a "success formula" which is then applied for protection
under the Patents Act. Based on the Success Formula evolved by Producer A, a protocol was
developed having pre-defined steps with a dynamic database to arrive at the said success
formula. The database stored all the parameters which during the research were considered as
being relevant for determining the success of the blockbusters. Pursuant to having evolved the
said protocol, Producer A by various permutations and combinations of the success parameters
and with reasonable certainty was able to predict the possibility of success of a film.

The Producer additionally applies for a copyright in the said formula as an original artistic work
by giving it the title "A success formula for film making" and the language of the work is
indicated as "Bollywood Lingo".

The Producer then approaches a selection of lyrists and playback singers from past successful
lyrists and playback singers and calls upon them to revisit and be inspired by the past hit songs,
lyrics and themes of the success movies. He does brief them to adapt the lyrics and songs for the
new production through use of modern-day instruments and special effects.

A film plot is made and the Producer springs a casting coup in terms of handpicking the best
actors from the past success and aligning them together for the first time in his new production.

The characters chosen are given the same screen names as were used in the past 50 movies
although they have never appeared together in a plot.

For the purpose of the title of the film, the Producer adopts a name that emerges from an
amalgamation of 3 hit titles and applies separately for a trademark registration for his new title.
The movie is made and released and based upon the success formula proves to be a hit. While
promoting the movie, the actors advertise with reference to the characters of the past. When
moviegoers see the movie and hear its songs and dialogues, nostalgic memories of the past are
raised and the dialogues used appear to be the same although on a closer scrutiny are found to
emanate from an effective use of thesaurus.

A suit for injunction is instituted against Producer A by a newly formed association of past
Producers and claiming:

(i) That the title of the movie constitutes an infringement of trademark rights;

(ii) There is a violation of copyright as the essential theme and the arrangement of characters has
been impersonated and there is substantial copying of a developed idea;

(iii) The patent applied for protection by Producer A with variable claims is invalid on the
ground of obviousness even though the patent has not yet been granted and no objection on the
lack of obviousness has been raised by the Patent Office.

The filing of the suit causes a dip in box office collections and increase in the re-screening of
past hits.

(iv) The defendant files a counter suit against the plaintiff for defamation caused by negative
publicity and contests the validity of trademark rights, copyright and the patent. Both parties also
claim damages against each other citing their respective parameters for evolution of damages.
 ISSUES RAISED

ISSUE I

WHETHER THERE IS AN INFRINGEMENT OF TRADEMARK AND COPYRIGHT BY THE

PLAINTIFF.

ISSUE II

WHETHER THE PLAINTIFF ARE ENTITLED TO ANY REMEDY. IF SO, THE NATURE AND

QUANTUM OF THE REMEDY.

PLEADINGS

ISSUE 1 WHETHER THERE IS AN INFRINGEMENT OF TRADEMARK AND COPYRIGHT BY THE

PLAINTIFF.

Copyright has been defined in Section 14 of the Copyright Act, 1957 as an exclusive right
to do or authorise the doing of any of the following acts in respect of a work or any
substantial part thereof, namely:

 Reproduce the work in any form including storing the work in any form
 Issue copies of the work to the public
 Perform the work in Public
 Make any cinematographic film in respect of the work
 Translate the work
 Make an adaptation of the work
Substantial Similarity:- Basic principle for infringement of copyright
In case of any copyright infringement, the plaintiff (party who initiates the law suit)
must prove that the defendant’s (a person or party against whom an action or claim is
brought in a court) work is “substantially similar” to the plaintiff’s work. Hence, the
infringement test involves two important components. First, did the defendant actually
copy the plaintiff’s work? And secondly whether the copied elements would protect
the expression and is sufficiently important to be actionable. In simple words, the aim
of the test is to determine if the copying constitute any infringement.
To prove copyright infringement, infringer shall have access to the plaintiff’s work. In
this context, access means whether the infringer had a suitable opportunity to witness
the original work or not. Therefore, while determining infringement, the courts often
compare all possible elements of both the works created by the plaintiff and the
defendant & exclude all public domain elements from work and look only to the key
elements that are protectable. Hence, in establishing the protectable elements, the
court would distinguish between the idea underlying in the work created and its
expression. For that reason the term “substantial similarity” causes confusion in the
copyright infringement analysis because the same term has different meanings at two
different points in the infringement analysis.

The traditional approach to identify substantial similarity is the “Total concept and
feel” test which relies on the visceral response of the ordinary observer or the
audience or more appropriately the ‘lay observers’ test. The basis of the test is to
determine whether an average lay observer would recognize the alleged copy as
having been appropriated from the copyrighted work. The ordinary observer is then
taken as a bench mark against the determination of presence or absence of substantial
similarity.
The other approach is the “Extrinsic-intrinsic test” which is applicable to most literary
works, such as books and scripts, musical compositions and artwork. This test
 comprises two separate tests firstly the extrinsic test measures whether there was
substantial similarity in general ideas of the infringed and the original work and
secondly, the intrinsic test which measures the substantial similarity in the protectable
expression of both the works.
Yet another approach is the “Abstraction-Filtration-Comparison” or AFC test. AFC
test involves three steps in order to determine the substantial similarity of the non-
literal elements of a computer program.
Landmark case R.G. Anand v. Delux Films delivered by Indian Supreme court helps
in understanding the concept of the substantial similarity. In this case, the author of
the play Hum Hindustani R.G. Anand sued a production company Delux films for
making a movie that was allegedly an exact copy of his play. The Supreme Court of
India held that despite some similarities, the movie did not infringe the play’s
copyright as there some substantial dissimilarities between the two. The
dissimilarities were differences in story, theme, characterization and climaxes. Apart
from this the Court also held that the copyright cannot be sought for an idea, it’s
applicable only for an expression of an idea and not idea itself, as the allegation by
Anand was that the defendants violated his copyright by copying his idea which was
held invalid.
Therefore, the issue of substantial similarity is a critical element in infringement
claims. Even where the fact of copying is conceded, no legal consequences will
follow from the fact unless the copying is substantial. Furthermore, the term
“substantial similarity” is not defined in the Copyright Act and it is a fact determined
by the judge or the jury. Thus the decision rests on the shoulders of the Court to
decide which test needs to be applied for which case and give a good justice.

The Delhi high court drew a distinction between cases of infringement by use of ‘trade name’
under Section 29(5) of the Trade Marks Act, and the cases of infringement by use of
‘trademark’ under sub-sections (1) to (4) of Section 29. The court held that to make out a case
of infringement by use of ‘trade name’ under Section 29(5), mere similarity or deceptive
similarity with the registered trademark was not sufficient, and that there has to be exact use
of registered trademark or part of it as the trade name of the business. The court further
expounded that the test of “similarity or deceptive similarity” was applicable only for cases of
infringement by use of ‘trade mark’ covered by sub-sections (1) to (4) of Section 29.

TRADEMARK VALIDATION

“Use of a trade name similar or deceptively similar to the registered trade mark would not
constitute infringement under Section 29(5),” stated the court.

The finding was returned by Justice Rajiv Sahai Endlaw of Delhi high court in a dispute
between two pharmaceutical companies – Mankind Pharma Ltd and Mercykind
Pharmaceutical Private Ltd. The court was adjudicating the injunction application filed by
Mankind seeking to restrain the defendant by using “Mercykind” as the name of its company.
The plaintiff, Mankind Ltd, was manufacturing and selling its products by using “KIND” as a
suffix or prefix. However, the court noted that the Mercykind Ltd was not using “KIND” as a
suffix or prefix in any of its products. The plaintiff’s primary contention was that by using
Mercykind as its company name, the defendant infringed the registered trademarks having
“KIND” as suffix or prefix in the products sold by Mankind Ltd. This contention was rejected
by the court noting that none of the products of the defendant was sold under the label
‘Mercykind’ and that Mercykind was not used as a “trade mark”.

The further contention of the plaintiff was that the name ‘Mercykind’ was affixed in all
products of the defendant company, and therefore that amounted to use of trademark as per
Section 29(6) of the Act. However, this did not impress the court, as it noted that the name
‘Mercykind’ was shown as the name of manufacturer in all products as per drug regulatory
laws, and it was not used as a product name. The court also took note of the fact that drugs
are prescribed by doctors by their generic name and not trade name, and hence the showing
of manufacturer’s name in the drug was of not much consequence.

“Mere affixation of the name of the defendant No.2 Company as manufacturer or marketeer
of the drugs/medicines sold by the defendants, would in my opinion, not qualify as a use
thereof as a trade mark, even under Section 29(6) of the Act”, said Justice Endlaw.

While dealing with the final contention of the plaintiff that use of “Mercykind” as company
name infringed plaintiff’s registered trademarks having “KIND” as suffix or prefix, the court
noted that infringement by use of “trade name” as opposed to “trade mark” was exclusively
covered under Section 29(5). The court further noticed that the phrases “identical with or
deceptively similar” were conspicuous by absence in Section 29(5), unlike in sub-sections (1)
to (4) of Section 29. Therefore, to sustain infringement action by use of “trade mark” under
sub-sections(1) to (4) of Section 29, the plaintiff need only show that the impugned trade
mark was “identical or deceptively similar” to the registered trademark. However, that test
will not suffice for claim of infringement by use of “trade name”.
“The Legislature, in spite of having used the words “…identical with, or deceptively similar
to…” in Section 29(1) to (4), having used different words in Section 29(5) and having not
used such words in Section 29(5), is deemed to have not constituted use as name or part of
the name, of a word or mark deceptively similar to the registered trade mark of the plaintiff,
as infringement thereof by the defendants. What has been constituted as infringement under
Section 29(5) is use of the registered trade mark as trade name or part of the trade name.
Thus, there would have been infringement under Section 29(5), if the defendants, as part of
their name, had used, MANKIND or any other registered trade mark of the plaintiff. Merely
because MERCYKIND in the name of defendant No.2 Company maybe deceptively similar
to „MANKIND or any other registered trade mark of plaintiff with „KIND as prefix or suffix,
would not amount to infringement under Section 29(5).”

The court relied on a judgment of division bench of Bombay high court in Raymond Ltd. Vs.
Raymond Pharmaceuticals Pvt. Ltd. 2010 (7) Mh.L.J. 646, and held :

“I respectfully concur with the dicta aforesaid of the Division Bench of the Bombay High
Court. What has been held by the Bombay High Court qua goods, i.e. for infringement of a
registered trade mark by use as trade name, the goods in which the defendant is dealing have
to be “same/identical” and not “similar”, equally applies to the use of the trade mark as
trade name. Use of a trade name similar or deceptively similar to the registered trade mark
would not constitute infringement under Section 29(5).”

ISSUE 2 WHETHER THE PLAINTIFF ARE ENTITLED TO ANY REMEDY.

YES, the plaintiff is entitled to claim damages because of the negative publicity done to
the plaintiff by defendant in terms of defamation that caused loss to plaintiff.

There are different elements for it to constitute the tort of defamation which have to be
proved by the plaintiff or the aggrieved party:
 1. the published words must be defamatory;
2. the alleged defamatory words must refer to the plaintiff and
3. there was a malicious intention while publishing these words.

In the case of D.P. Choudhary v. Kumari Manjulata, a local daily Dainik Navjyoti published
an article that the plaintiff, a girl of about 17 years of age, had run away with a boy named
Kamlesh. This was a false news item as she had gone to attend night classes for her B.A.
degree. This news item was negligently published by the newspaper and caused a lot of
ridicule at the girl. Hence, she filed a suit for defamation and was entitled to damages.

PRAYER
In the light of facts stated arguments advanced and authorities cited, the Appellant humbly
submits that the Hon’ble Court may be pleased to adjudge and declare that

1. Validate the IPR rights of appellant’s movie.

2. Compensate the plaintiff for the losses caused by defendant’s stunt of negative publicity
and defamation caused to plaintiff.

Any other order as it deems fit in the interest of equity, justice and good conscience.

For This Act of Kindness, the Respondent Shall Duty Bound Forever Pray.

DATE: Counsel for the Plaintiff

PLACE: - SSLG, JNU