INTELLECTUAL

PROPERTY
RIGHTS
PAVITHRA G
HC20084
BBA. LLB – B sec; IV yr
 Indian Performing Rights Society
vs.
Eastern Indian Motion Pictures Ltd.

IN THE SUPREME COURT OF INDIA

AIR 1977 SC 1443
Criminal Appeal No 87 of 2020
Petitioner
Indian Performing Rights Society
Respondent
Eastern Indian Motion Pictures Ltd.
Date of Judgement
14th March, 1977
Bench
Jaswant Singh, J; V.R. Krishna Iyer, J
 FACTS OF THE CASE
 IPRS claimed – entitled to ROYALTY, in case the literary work used in
cinematograph films is broadcasted in radio stations – claimed themselves to be
assignees of the literary works.
 Objected by Associations of Cinematographic films before the Copyright Board
under Section 34 of the Act.
 Copyright Board expressed the view that the copyright remains with the music
composers and that they could assign the performing right in public to IPRS.
 Aggrieved respondents appealed before Calcutta HC, which reversed the
decision of the board, held that the music composers don’t have the right instead
it’s the producers that have the copyright of the work.
 Aggrieved by the decision of the HC, Appellants preferred appeal under A.133(1)
of the Constitution.
CLAIMS :

Appellants – IPRS – Music composers have the copyright over the

work and IPRS can charge royalty when it is performed in public.

Respondents - Eastern Indian Motion Pictures Ltd. – claimed that

they have copyright of the work since composers worked under a
contract.
 ISSUES

1. Whether an existing and future rights of

music composer, lyricist, etc. capable of
assignment?
2. Whether the producer of a cinematograph
from can defeat the rights of the composer
by engaging him?
 ARGUMENTS

Arguments by the appellants:

i. composer of a literary or musical work has exclusive copyright in a literary

or musical work and that right is infringed by any person if he without a
license from the owner of the copyright, performs the work in public by
exhibiting the cinematograph film.

ii. A person has to take permission from the owner of the copyright i.e. the
music composer, lyricist, etc. if he wants to perform his work in public
even by way of a cinematographic film.

iii. The Appellants further argued that the copyright in a cinematographic film
and the copyright in a music work is different. They further stated that
Section 17(b) of the Act has no application hence the producers of films
cannot claim copyright over the music work.
Arguments of the respondents:

i. The respondents argued that the soundtrack is part of a cinematograph film by

virtue of Section 2(f) of the Act.

ii. They further argued that cinematograph film is copyrighted under Section 13(1)
(b) of the Act and Section 14(1)(c)(ii) of the Act confers on the owner of
copyright the right to be seen in public and in so far as it consists of songs to be
performed in public. Hence the permission of composers of lyrics or music is
not required for a movie to be seen in public and no fees are required to be paid
to IPRS.

iii. They have further argued that Section 17(b) will apply because if the producers
hire someone to make music or lyrics as part of a film for consideration, it
confers separate copyright on a cinematograph film and the producer can
exercise both the rights under Section 14(1)(c)(ii) and 13(4) of the Act.
 PRECEDENT
Wallerstein v. Herbert, it was held
that the music composed for
consideration by the plaintiff under a
contract for a drama to be performed
on stage was not an independent
composition but is part and parcel of
the drama and hence the music
composer did not have any copyright
over it.
This case was also relied upon by the
appellants.
RULE OF LAW
Section 30:
Assignment of work is possible
by means of issuing a license
duly signed by the composer or
his assignee; and in case of a
license relating to future work,
the assignment shall take effect
after the work comes into
existence.
Section 17(c):
Proprietor becomes the absolute
owner in cases of contract of
service for valuable
consideration unless there is an
agreement contrary to it.
 JUDGEMENT
HOLDING:

1. Yes. Copyright relating to existing and future work can be assigned.

The assignment would take effect only when the work comes into
existence.

2. Yes. The cinematograph film producer becomes the first owner of the
copyright in case he commissions a composer of music, a lyricist, for
reward or for a consideration to compose music to be incorporated in
the cinematograph film as the composer is employed under a contract
of service.
Ratio Decidendi-

1. The Court while deciding Issue no. 1 held that, “It is accordingly held that
an existing and future right of music …… composer and lyricist in their
respective ‘works’ as defined in the Act is capable of the assignment subject
to the conditions mentioned in section 18 of the Act, as also in section 19 of
the Act which requires an assignment to be in writing, signed by the
assignor or by his duly authorized agent.”

2. It was the Second issue which Court considered was a Hot-bed of

Controversy. The Court after considering the various provisions and
arguments of both the parties held that According to Provision (b) & (c) of
Section 17 of the Act if the producer of the film hires a music composer to
make music or lyrics to be incorporated in a film under a contract of service
for a valuable consideration, it is the producer and not the composer who
has the right over the music so composed.
Obiter Dicta-

 Justice Krishna Iyer while agreeing with Justice

Singh widened the right of the music composers to some
extent.
 Justice Iyer held that the producer does have exclusive right
over the film as a whole and he need not pay any fee or royalty
to IPRS.
 But music as a separate part remains the copyright of the
composer which means the producers can claim copyright over
the film when it is performed in public as a whole but the
producers cannot play parts of music separately in a theatre to
attract the audience and if he does so he will infringe the right
of the composer.
Analysis:
Issue no: 1
A composer can assign rights over future work. The assignment takes
effect once the composition comes into existence. Section 30 of the
copyright act 1957 lays down that assignment of work is possible by
means of issuing a license in favor of the prospective owner of the
copyright. The rights can be transferred by means of a document duly
signed by the owner or the assignee. Present and future works of a
composer can be assigned; however, the assignment comes into effect
only after the work in question comes into existence.
Once an agreement is entered into between the production house and
the composer for incorporating the composer’s composition; the
composer loses his rights over the composition and the production
house becomes the owner of the copyright. The agreement can be a
present as well as a future one. In either case, IPRS cannot claim
royalty as it has absolutely no rights over it. However, it is different in
case of lack of any agreement.
Issue no: 2
The court held that the composer loses his right over the composition
automatically when he enters into an agreement with a cinematograph
producer to compose songs to be incorporated in the film for consideration.
Section 17(c) of the copyright act lays down that the producer shall be the
owner of the composition in case of consideration and that the composition
automatically becomes a part of the cinematograph film and the composer
loses his rights over it completely and works falling under such category
cannot be assigned further. IPRS cannot claim royalty as the production house
has the right over the composition the moment it comes into existence. Here
there is a contract of service between the composer and production house. In
this case, the producer of the cinematograph film becomes the absolute owner
and the authority cannot be questioned.
Conclusion:

The decision of the court came as a sigh of relief for

the producers of the film as now they need to pay to
music composers and then to the IPRS as fees for
whenever the film is performed in public. On the
other hand, this case increased hardships for the
music composers as ringtones and caller tunes were
also part of the music. Due to the persistent efforts of
the music composers, the Copyright (Amendment)
Act, 2012 was passed by parliament which protects
the rights of the composers to some extent. This
judgment has been relied upon by the Supreme Court
recently in the International Confederation of
Society of Authors v. Aditya Pandey. Hence, the law
remains the same even as today to the extent it is
amended by the Amendment Act of 2012.
 N.R. DONGRE and Ors.
v.
WHIRLPOOL Co. and Anr., 1996
(1996) 5 SCC 714

Name of the court - Hon’ble Supreme court of India

Plaintiff, respondent – Whirlpool corporation and another
Defendant-appellant - N.R. Dongre and others
Hon’ble bench - Justice JS Verma, Justice K Venkataswami
Date of judgement - 30TH August 1996
It is an established principle under the
trademark law in India that whoever uses
the trademark first will be considered the
owner or the creator of it. This principle is
known as the doctrine of prior use. It is a
judicial principle which states that the prior
user of the mark will have superior and
exclusive rights against that of a registered
proprietor claiming for such mark. In this
presentation, we will discuss the landmark
case of N.R. Dongre
and Ors. v Whirlpool Co. and Anr., 1996
wherein Whirlpool claimed a mark based
on the principle of ‘prior use’ and its
transborder reputation stating that the
goods being marketed by using such mark
gave the impression that such goods belong
to Whirlpool.
 Facts of the case
The Whirlpool Corporation was the original and prior user of the trademark
‘whirlpool’ since the year 1937. The said trademark was used for their electrical
goods which included washing machines.

Whirlpool Corporation got its trademark registered in India in the year 1956
which was renewed regularly, however, in the year 1977 the respondents failed to
do the renewal on account of which the registration expired.

The Whirlpool Corporation, a multinational company incorporated in the United

States and TVS Whirlpool, a company incorporated in India (respondents, initially
the plaintiffs) entered into a joint venture in the year 1987 to sell machines. Prior to
this, the machines were sold to the US embassy in India bearing the mark of
whirlpool.

In the year 1986, N.R. Dongre and others (appellants, initially defendants) applied
for the registration of the trademark ‘whirlpool’ with the registrar for selling certain
goods which included washing machines and in the year 1988, the said trademark
was advertised for the first time in the trademark journal.
Subsequently, an objection was raised by the respondents which was dismissed by
the registrar on the basis of lack of reputation and non-usage of the
trademark ‘whirlpool’ in India. It was further said that the usage of the trademark
‘whirlpool’ by N.R Dongre for selling his goods would not create any confusion in the
market.

The appellants herein were granted the registration in the year 1992. In 1994, the
appellants invited dealers for washing machines under the trademark of whirlpool.

The respondents purchased a washing machine from the appellants and discovered
that it is of inferior quality when compared to the washing machines manufactured by
the respondents.

 Aggrieved by this, the respondents filed an action for passing off and grant of an
interlocutory injunction. The learned single judge of the Delhi High Court granted a
temporary injunction in 1994 and thereafter, on appeal, a division bench of the same
Court affirmed the decision of the learned single judge in the year 1995.

Aggrieved by this, the appellants herein approached the Hon’ble Supreme Court.
 Issues raised in the case

Whether or not the action for passing off is maintainable against the registered
proprietor of a trademark by the respondents who are not the registered
proprietors of the ‘whirlpool’ trademark concerning washing machines?

Whether or not the respondent acquired a transborder reputation?

Whether such transborder reputation transcends the territorial boundaries or

not?
 Contentions of the parties
Contentions of the appellants -

The main contentions put forward by the appellants before the Court are –
• That the respondents have no reputation in India provided that the
mark ‘whirlpool’ was not in use within the territory of India. Since there is a lack of
reputation and non-usage of the mark in India, the respondents have no right to stop
the appellants from using the said mark.

•That the usage of the trademark ‘whirlpool’ by the appellants for selling their goods
would not create any confusion among the people as the said mark was not being
used in India.

•That there is a culpable delay, laches and acquiescence on part of the respondents.
The appellants also stated that the respondents have abandoned the mark themselves.
Contentions of the respondents –

The main contentions put forward by the respondents before the Court are –

• That the appellants only registered for the mark ‘whirlpool’ in 1986, however, the
respondents have been using the said mark since 1956. The registration lapsed in
1977 but it is still prior to the earliest claim made by the appellants in 1986.

• That the washing machines which are being manufactured by the appellants are of
inferior quality when compared to the ones manufactured by the respondents. If the
sale of such inferior quality washing machines is allowed then it will most likely
affect the goodwill and reputation of the respondents.

•That there is a lack of evidence that can be relied upon to establish that the
appellants have in fact marketed the washing machines manufactured by them for
any considerable period of time prior to the date of grant of injunction.
 Judgment of the case
• The Hon’ble Supreme Court observed that the Whirlpool Corporation
was the prior user of the trademark since the year 1937, however, the
appellants applied for the said trademark only in 1986. The Court stated
that the principle on which passing off action is based states that no
person must sell his goods as the goods of another.

• The Court further stated that ‘whirlpool’ is the registered trademark of

the respondents since 1937 in 65 countries wherein they have
continuously been in business. It was also noted that even though
whirlpool products were only sold to the US embassy in India, however,
the brand name ‘whirlpool’ was often advertised in international
magazines having wide circulation in India and as a result, it was
gaining a well-known reputation in India. Subsequently, the respondents
acquired a transborder or spillover reputation with ‘whirlpool’ mark by
which people identified washing machines and other such electrical
goods.
• The Court also stated that since the mark ‘whirlpool’ has become
synonymous with washing machines and other such electrical
appliances of the respondents, the people intending to buy their
goods will most likely be confused or deceived if the appellants
continue to sell their goods under the same mark ‘whirlpool’.

• If the appellant is allowed to sell his goods under the same mark
then the respondents might suffer heavily as the goods sold by the
appellants are of inferior quality than that of the respondents. Based
on the above-mentioned grounds, the Apex Court upheld the
decision of the Delhi High Court and dismissed the appeal with a
cost of Rupees 10,000.
 RULE OF LAW

1. Section 28 of the Trademarks Act, 1999 provides an exclusive right to use

a trademark if such trademark is registered for trade purposes, however,
an exception to this provision is mentioned under Section 34 of the
Trademarks Act, 1999.

2. This provision, S.34 states that the rights of an actual owner of the mark
cannot be violated on an identical trademark which has been registered by
another. This means that the rights of the original owner or creator of the
mark will be protected by the Trademarks Act, 1999 even if not
registered, however, such mark must be in use prior to the date of
registration done by the proprietor.

3. Section 35 of the Trademarks Act, 1999 deals with the concept of

transborder or spillover reputation. It provides protection to foreign
trademarks based on their reputation at the global level.
 Analysis
In the present case of N.R. Dongre and Ors. v Whirlpool Co. and
Anr., 1996, the Hon’ble Supreme Court through its division bench
held that mere advertisement of a trademark was sufficient enough to
establish local use and goodwill even if there is no physical presence
of goods in the Indian market. This case clearly supported the
transborder reputation concept of a mark even against the registered
proprietor of the trademark.
 Conclusion
For the first time in the Indian legal regime, the concept of
well-known marks and transborder reputation was discussed
in detail through the case of N.R Dongre and Ors. v
Whirlpool Corporation and Anr in 1996. This case laid
down that the registration of a trademark is not an essential
requirement to establish a successful action of passing off.
It further laid down that in case of misuse, the owner of a
well-known mark can seek an injunction.