By Harita Rao* and Gurram Ramachandra Rao**
Advertising is a key part of the sales process. Its role is to bring together people selling a product with those who may be interested in buying it. It is important to remember that potential customers are careful with their money. Rarely will they buy something they don't want. The Institute of Practitioners in Advertising (IPA) defines advertising as, "The means of providing the most persuasive possible selling message to the right prospects at the lowest possible cost".1 Effective customer communication is an essential part of any business. Properly used, advertising can contribute to development and growth. Badly used, it can be a very costly mistake.
Advertisement serves a double purpose first being the informational purpose that is, if consumers are to extract the maximum satisfaction or utility from their limited resources, then they need adequate flow of information about price and potential performance of rival goods and services. Secondly the persuasive purpose that is advertisements by various means such as attractive captions, slogans, characters, repetition etc influence consumers to buy their products.
The advertising industry has gained a mega-status over the years due to its multifarious benefits. As a result of which the nature of advertising whether print or audio-visuals is undergoing a revolution and has opened new avenues for creativity, constructive inputs and artistic skills. Given the enormous creative talent, staggering figure of investments made and the fierce competitiveness in the advertising field, issues of copyright protection are of utmost significance for every player involved in the business.
Intellectual property confers on individuals, enterprises or other entities the right to exclude others from the use of specific intangible creations. The peculiar feature of such rights is that they relate to pieces of information that can be incorporated in tangible objects. Protection is given to ideas, technical solutions or other information that have been expressed in a legally admissible form and that are, in some cases, subject to registration procedures.
Though the content of intellectual property is the information as such, intellectual property rights are exercised -- generally as exclusive rights -- with respect to the products that carry the protected information. For example, the owner of a patent can prevent the manufacture, use or sale of the protected product in the countries where the patent has been registered. Those who create a certain intangible may, through the enforcement of such rights, regulate the use of the creation (e.g. a musical work) and the commercialization of the product (e.g. compact disk) that contains it. The control over an intangible asset therefore connotes the control over products and markets.
`Intellectual property law' relates to the acquisition and use of a range of rights covering different types of creations, including creations of an aesthetic character (e.g. artistic works and industrial designs), technologies (e.g. patents) as well as information and signs of a purely commercial value (e.g. trademarks). Intellectual property rights include copyright and related rights,
Copyright law protects the expression of an idea, not the idea itself. This means that, in principle, protection is only extended to the form in which an idea is expressed (e.g. the particular writing of instructions in a computer programme), but not to the concepts, methods and ideas that are expressed. Copyright protection is provided to the authors of original works of authorship, including literary, artistic and scientific works. Copyright has also been extended to protect computer software and databases. "Neighbouring rights", that is, rights which are related to copyright, are accorded to phonogram producers, performers and broadcasting organizations. The owners of copyright can generally prevent the unauthorized reproduction, distribution (including rental), sale and adaptation of an original work. Protection generally lasts for the life of the author plus fifty years or for fifty years or more in the case of works belonging to corporate bodies.
The last one or two decades witnessed phenomenal growth in the national and international advertising because of globalization. Fierce but intelligent competition has been the result. Unfortunately unethical ways of advertising are fast growing sometimes resulting in great economic loss to those who put in genuine effort and skill. The copyright law is thus of tremendous relevance not only to the advertisers and advertising agencies but to the creative persons such as visualizers, art directors, copy script and slogan writers, performers and so on, who are engaged in creating valuable advertising property.
Are advertisements copyrightable?
To be protected under the Act advertisements like all other creative work must satisfy the following four conditions2:
1) Original-it must not be copied from another.
2) The work must not have been commonplace that is, in the public domain.
3) The work must be a form expression and not a mere idea-there is no copyright in ideas.
4) The work must involve labor, skill and capital.
As per section 13 of the copyright act, 1957 copyright subsists in certain classes of work. They are
a) Original literary, dramatic, musical and artistic works;
b) Cinematographic films and
c) Sound recording.
An advertisement has various components involving literary, artistic, dramatic, musical skills each of which may be protected under the classes of work mentioned in section 13 of the Copyright Act, 1957. The protection however is given upon satisfaction of the four above-mentioned conditions.
a) Literary work-"literary" refers to the nature of work as distinct from a painting and not as being work of literature. Thus catalogues, brochures etc fall under this head of literary works and copyright subsists in them.
Courts have on a number of occasions held that copyright subsists in trade advertisements and catalogues. In Collis vs. Carter3 it was held that a trader would be entitled to copyright in his catalogue of detailed items sold by him. Also in Maple and Co. vs. Junior Army and Navy Stores4 an illustrated catalogue for advertisement and not for sale was held to be a book and subject matter of copyright.
Written matter in advertisements for instance in newspapers or magazine may be literary work but Courts have not given protection to titles of woks or to common phrases or expressions as is used in advertisements because to do so would be an appropriation of the language. Furthermore, there was not found to be sufficient skill and effort and originality for such kind of work to have copyright. There is no copyright in a mere a collection of words, which are not a compilation and the collection of which has not involved any literary skill or in a single word. A literary work is generally intended to afford information, instruction or pleasure. So even when a word was invented "Exxon" to establish corporate identity for the furtherance of the company’s trade and goodwill, the Court did not concede copyright to it. It was held that it was not sufficient that it could separately be described as ‘original’ ‘literary’ and ‘work’ and although the term "Exxon" could be thus separately described it was not an original literary work because conveyed no information instruction and gave no pleasure.5 In a more recent case of Prestige House Wares vs. Prestige Estates the respondents had copied the artistic work of ‘Prestige’ and obtained registration under copyright law for a script, which is almost identical to the script of the petitioner. It was held that there can be no artistic work in merely the words ’Prestige’ and there must be some artistic character in the work.6 Courts have also held that copyright does not subsist in an advertisement slogan.7 In Harold Drabble Ltd.vs. Hycolite Manufacturing Co.8 it was observed that no copyright should subsist in an advertisement made up of words taken from other advertisements. Similarly in the case of Kirk vs. Fleming9 copyright was held not to subsist in an advertisement made by stringing together four commonplace sentences.
Literary work in section 2(o) has been defined to include computer programmes, tables and compilations including computer databases. Thus advertisements placed on websites also form subject matter of copyright.
b) Artistic work-means a painting, sculpture, drawing (including a diagram, map, chart or plan) an engraving or a photograph, whether or not any such work possess artistic craftsmanship.10 Thus a poster or a photograph used in an advertisement is an artistic work and can be copyrighted. In the case of Associated Electronics vs. M/S Sharp Tools11 the appellants, an electrical goods manufacturing company brought a restraint action against the respondents firm by name ‘Sharp’ Tools. The appellants had the trademark of ‘Sharp’ and they claimed a copyright interest in all their advertisement with the artistic work of Sharp registered as a trademark under the act. The Court held that copyright does not give a monopoly to any particular form of words and so there can be no copyright in the word ‘Sharp’ but the right can only be given the artistic manner in which the name is written. 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 the works would be clearly of the opinion and get an unmistakable impression that the subsequent work appears to be a coy of the first. The Court looked at the two works the appellant’s artistic work ‘Sharp’ and the respondent’s work ‘Sharp Tools’ and found that there is least resemblance between the two. It therefore held that there was no copyright infringement by the respondent.
c) Dramatic work-includes any piece of recitation, choreographic work or entertainment in dumb show the scenic arrangement or acting form, which is fixed in writing or otherwise. A cinematograph film is not a dramatic work although the script or scenario for a cinematograph film is a dramatic work. In Norowzian vs. Arks Ltd12 The plaintiff made an advertising film titled ‘Joy’. The subject matter of the film consisted of a single person dancing to music. The editing made extensive use of jump cutting technique that produced sudden changes of positions of the actor, which could not have been, performed as successive movements in reality. The plaintiff was entitled to the copyright in the film which he claimed was a dramatic work; a work of dance or mime which was recorded on to a film.
The defendants produced a Guinness advertisement entitled ‘Anticipation’ which was alleged to be an infringement of the plaintiff’s film ‘Joy’. Anticipation consisted of a man served with a pint of Guinness who danced about while waiting for the froth to settle. A jump cutting technique similar to that used by the plaintiff was used to edit the film ‘Anticipation’. It was admitted that the defendant produced an atmosphere broadly similar to that portrayed in Joy. It was held that the film was not a recording of anything that could be performed or danced by anyone and therefore it was not a dramatic work. However this decision was partially reversed in appeal13 where it was held that the expression "dramatic work" should be given its ordinary and natural meaning, which was a work of action, with or without music, which was capable of being performed before an audience and that Joy was a work of action capable of being performed before an audience. But it further held that although there was a striking similarity between the filming and editing styles and techniques used by the respective directors of the two films, no copyright subsisted in mere style or technique. It was thus held that Anticipation was not a substantial copy of Joy.
d) Cinematograph film- means any work of visual recording on any medium produced through a process from which a moving image may be produced by any means and includes a sound recording accompanying such visual recording and "cinematograph" shall be construed as including any work produced by any process analogous to cinematography including video films.14 Thus TV commercials or advertisements may be included under this head and copyright shall subsist in them. In the case of R C Products Ltd vs. S C Johnson Ltd15. Where there was an adaptation of the elements of advertisement or get up by the respondent and there was material on record clearly suggesting that the subsequent TV commercial was a copy of the earlier one, the court passed an injunction order against the respondent in a suit for infringement of copyright.
e) Sound –recording –means a recording of sounds from which sounds may be produced regardless of the medium on which such recording is done.16 Such a definition may be extended to include advertisements by way of radio jingles.
f) Musical work-refers to any combination of melody and harmony or either of them printed, reduced to writing or otherwise graphically produced or reproduced. In the case of William Music vs. Pearson Partnership17 an advertising agency produced television advertisement for a bus company, which set out to parody the lyrics and music of "there’s nothing like a dame" from Rodgers and Hammerstein’s musical "South Pacific". The plaintiffs as owners of the copyright in the latter sued the respondent agency. Examining the facts it was held by the judge that there was an issue regarding the infringement of copyright held by the plaintiffs in the music.
Therefore while advertisements per se may not the subject matter of copyright protection various aspects that go into the making of an advertisement are recognized as literary or artistic work or as cinematograph films or sound recording and copyright subsists in them.
Who is the Copyright holder?
Ordinarily the author is the first and true owner of the copyright. But in cases where an employee in the course of his employment makes the work, in the absence of any agreement to the contrary, the employer will be the first owner of the copyright in the work. The general principle is that if a person is employed to do a job and paid for his services the product of his labor, subject to any agreement to the contrary, belongs to the employer. A distinction must be drawn between a contract of service and contract for service. In the case of contract of service the relationship is that of employer –employee, whereas in a contract for services the relationship is that of an independent contractor and the person who engages the contractor for specified work. Where there is a relationship of employer-employee the copyright shall subsist with the employer and not the employee.
In the case of Grace vs. Newman18 while the case ended in a victory for the advertiser, a warning was given to the advertiser to protect artwork, which may develop into a valuable advertising property. The lack of any written agreement between the agency and the artist was probably19 the real genesis of the litigation. A person employing another to compile a book of designs has himself the copyright in the work. A warning to advertisers was also given in the case of Grant vs. Kellogs20.
In Harold Drabble vs. Hycolite Manufacturing Co.21 copyright in an advertisement prepared by the agent on materials supplied by the advertiser belonged to the advertiser himself. In the more recent case of Hutchinson Personal Communications Ltd. Vs. Hook Advertising Ltd.22 it was observed that implicit representation by an advertising agency at a pitch that the client would own all rights in a logo design if the agency was appointed would result in the copyright subsisting with the client.
However in cases of contract for service there is no employer –employee relationship and the copyright subsist with the author itself. Where a company or any other organization is claiming copyright in the work, proof of assignment of the copyright from the author/artist should be produced. The owner of a copyright has the exclusive right to exploit the work. He may exploit the work himself or license others to exploit the work any one or more of the rights for a consideration in the form of royalty or a lump sum payment. The owner may even assign any one or more of his rights to others.
The need for Inter-linking Copyright and Trademark:
Trademark is the basic tool in advertising. The advertisement of products or services may not be possible without trademarks. It serves as a crucial link in the chain of product differentiation activities. Advertising effort is chiefly concentrated on the promotion of a particular trademark. This is done by way of packaging and labeling. Logos, color combinations, shapes, names, numerals etc that appear on wrappers, carry bags, cartons and other advertising devices are all subject matter of trademark protection. Trademark or brand names enable the consumer to identify the goods as distinct from others. Advertising popularizes these trademarks or products as being superior to others and thus persuades or influences the consumer to purchase products of that particular trademark or brand.
The labels, wrappers or stylized marks used as trademark, may posses some artistic features and if some skill and labor has been bestowed in their production, then such labels qualify for copyright protection, besides trademark protection under the Copyright Act, 1957 along with protection as trademark. Such labels and wrappers would be covered in the category of original artistic work under Section13 of the Act. The practice therefore is to seek relief for violation of trademark under copyright law, simultaneously with infringement and passing off action under trademark law. Protection of trademark used in advertising by copyright law is thus of importance.
In Glaxo Operations vs. Ramam Bhaktha Hanuman Camphor Works23, the plaintiff claimed copyright in the printed matter of Glaxo cartons. The court found that the defendant Ramam Bhaktha’s cartons were a reproduction of the material features of the Glaxo’s carton and the differences were too immaterial. The courts hence granted injunction for trademark as well as the copyright.
In Hindustan Machines vs. Royal Electrical Appliances,24 the plaintiff had been using a distinctive logo script Maharaja, constituting an original artistic work within the meaning of section 2(c) of the Copyright Act. The defendant adopted the trademark Royal Maharaja for mixer grinders together with the logo script, which is an exact reproduction of the plaintiff’s mark. The court injuncted the defendants from using the trademark Maharaja and also the logo script identical to that of the plaintiff.
Burroughs Wellcome (India) vs. Unisole Pvt. Ltd.,25 the plaintiff was the owner of trademark Septran for anti biotic tablets and had a copyright in the photographs of carton, various labels and artistic work used on the cartons. The scheme layout and get-up of the label was copied with slight variations, i.e. the logo in the two is differing. The court granted injunction restraining the defendant from infringing the copyright in original artistic work in the carton or any colorable imitation or a substantial reproduction of the original artistic work.
In Hindustan Pencil (Pvt.) Ltd. Vs. Universal Trading Co.,26 it was held that the device of Natraj or the word Natraj has been used from time immemorial but when it is presented in a particular design, get-up, color combination and specific pattern it can be called the artistic work. The court in the circumstances held that there can vest copyright in the impugned artistic work.
In Hi Tech Foods vs. Khanna Enterprises,27 the defendant was restrained from dealings in Chetak or any other mark which bears resemblance to plaintiff’s work of art, which has been used and depicted as Catch; the use of mark amounts to infringement of copyright.
Trademark protection is available (most of the time) only when another person uses a mark as trademark, which is identical or deceptively similar to the registered trademark in relation to similar goods or services in respect of which it is registered, without the consent of the proprietor. In case of infringement of copyright, there is no requirement that the reproduced or copied trademark label should be used in relation to any particular goods. They may be same, similar or different goods or services; substantial reproduction of the label would constitute infringement of copyright .For instance in the case of Relaxo Rubber vs. Aman Cable,28 the trademark "Relaxo" was used by the plaintiffs in relation to footwear. The defendants manufactured and sold cables and PVC pipes using "Relaxo" in the same style of writing in which the plaintiffs had copyright registration. On the facts of the case, passing off was held not to be made out. However as the word "Relaxo" written artistically was also enjoying copyright protection, the infringement of exclusive right to artistic work was restrained by injunction. This shows the importance of copyright law in the protection of label trademarks.
Conclusion: copyright as a comprehensive cover
The advertising industry, today is highly competitive. There are about 1000 advertising agencies, big, small, and medium, operating in India. With business growing and the market going global, creativity and innovation are at a premium. However along with it, there has been a trend to resort to unethical ways of advertising that often results in unfair and unprofitable competition. The need to protect advertising innovations and artistic skills is thus urgent. It is important to put in place a strong advertising property protection regime that protects the artwork and creative skill that is involved in the trade of advertising.
At present advertising property is protected primarily under trademark law and to some extent copyright laws. Courts have been more willing to protect logos, brand names, color combinations etc under the law of trademark but the same willingness has not been found to grant protection under the Copyright Act. Courts still continue to rely on the old principles, which do not allow for copyright in invented words and advertisement slogans. However the protection under trademark is restricted and needs to be complemented with the protection under copyright to provide complete and full-proof security to advertising property.
Although protection under copyright, unlike trademark is for a limited period of time, it extends not only to marks but also to all kinds of creative work. All forms of ‘original literary, dramatic, artistic and musical works’ that go into the making of advertisements come under the protection of copyright law. So firstly the scope for protection is greater.
Secondly while trademark, provides protection to the advertiser i.e. companies and producers alone; copyright ensures the protection of interests of the advertising agencies and artists who labor to produce the advertisement, at least in cases of contract for employment.
Thirdly, copyright has the capacity to protect trademark labels on all types of goods or services, whether same, similar or different, without the mark being well-known mark in the market. Copyright law gives impetus to every trademark becoming absolute for all goods and services when used on any one of them.
Fourthly, in a combined suit for infringement of trademark and copyright the proprietor can shift the territorial jurisdiction of a court from the defendant’s place to his own place. So even though there is no infringement of trademark by the defendant within that jurisdiction, the court having jurisdiction under section 62 of the Copyright Act will have jurisdiction to entertain the suit.29 In the light of these advantages it is suggested that copyright laws should be extended to all forms of advertising innovations and creations, which involve sufficient labor, skill and effort. Advertising has become increasingly a specialized job. Modern advertising agencies have a research department, a media department, a creative department, a production department and a good fund of expertise and experience to handle competently advertising programmes and campaigns. The work of advertising agencies involves analyzing existing marketing trends, identifying target clients, analyzing their social, economic and cultural background their buying habits deficiencies and quantities of products of rival companies and on that basis design an effective advertising strategy or advertisement. It cannot therefore be doubted that sufficient labor is bestowed in creating an advertisement or even a single invented word or slogan for purposes of advertising. Thus it fulfils the test of "sweat of the brow" and qualifies for copyright protection. In the changing scenario, one can no longer adhere to the strict interpretation of the age-old norms of ‘information, instruction or pleasure’. Instead these principles should be relaxed so as to encompass new forms of artistic and literary work and the laws should be adapted to meet the growing needs of the advertising industry. Some new trends in the direction have been found in terms of allowing copyright claims along with trademark infringement and passing off actions but cases where courts have granted copyright protection independent of trademark protection are rare. The courts are yet to expand the scope of protection under copyright laws to include advertising artistic and literary works and more so in India. It may be hoped that releasing the advantages of protection under the copyright laws there would be a definite move towards the inclusion of advertising devices under copyright law in the near future.
*IV Year Student of Law, NALSAR, Hyderabad.
**V Year Student of Law, NALSAR, Hyderabad.
1 The term "advertise" refers to the act or practice of attracting public notice and attention. It includes all forms of public announcement that are intended to aid directly or indirectly in the furtherance or promulgation of an idea, to aid direct or indirect attention to a business, commodity, service or entertainment. However the Advertising Standards Council of India (ASCI) defines an advertisement as paid for communication, addressed to the public or section of it, the purpose of which is to influence the opinions or behavior of those to whom it is addressed.
2 University London Press vs. University of Tutorial Press:  2ch 601 at 608;Engineering vs. Sykes Boxmall,  72 RPC 89 at 98-99; GACramp and Sons Ltd. Vs. Frank Smythson,  AC329; Fritco-Lay India vs. Uncle Chips Pvt. Ltd, (2000) 341 Del (D.B); R G Anand vs. Delux Films and others, (1978) 4 SCC118; British Northrop Ltd vs. Texteam Blackburn,  RPC 57 at 68; Walker vs. British Picker,  RPC57; Exxon Corpn. Vs. Exxon Insurance Consultants International Ltd.,  3 All E R241 CA.
3  78 LT613
4  21 Ch D 369
5 Supra note 8.
6 1999 PTC (19) 585
7 Sinaniade vs. La maison Koomeo  139 LT 365 CA
8  44 TLR 264 at 266.
9  MacG cop case (1928-30) 44
10 Section 2(c) of the Copyright Act, 1957
11 AIR 1991 Kant 406 at 412
12 (1999) FSR 79
13 (2000) 27 FSR 363
14 Section 2(f) of the Copyright Act, 1957
15 26 IPR 98 (Federal Court of Australia)
16 Section 2(xx) of the Copyright Act, 1957
17 FSR 97.
18 (1875) 19 E of 623
19 1Hand M 603
20 58 F Supp 48
21 (1928) 44 TLR 264 at 266
22 FSR 549
23 1990 IPLR 45
24 1999 PTC (19) 685
25 1999 PTC (19) 188
26 1995 PTC (19) 379
27 1998 PTC 689
28 1998 PTC 759
29 Glaxo Operations U.K. Ltd. vs. Samrat Pharmacueticals, AIR 1994 Del 26
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.