Copyright is one of the main branches of intellectual property rights, together with patents and trademarks. The copyright law was originally conceived to provide protection against unauthorized reproduction of books and publications. But the modern day world of information age, the copyright law provides the framework not only for the protection of traditional beneficiaries like individual owner, artist or composer, but also for the investments required for the creation of works by major cultural industries like film, broadcasting, and computer software industry.
The Delhi High Court in Suneet Varma Design Pvt. Ltd. & Anr. V. Jas Kirat Singh Narula & Anr. 2007 (34) PTC 81 (Del.) addressed the question as to whether, a particular dress in a film was only by way of background or ‘incidental to the principal matters’ represented in the film, ancillary to the key dispute of infringement of copyright of the plaintiffs in a particular dress designed by them.
Facts of the case
Suneet Varma/2nd plaintiff is the managing director of the Suneet Varma Design Pvt. Ltd. and claims to be a renowned designer of international reputation and is engaged in the creation or fabrication of wearing apparels, which are exclusive in shape, configuration and pattern. The product of the plaintiff attaches high demand due to the originality and quality. The plaintiff themselves have various exclusive outlets and due its wide presence have acquired immense reputation and goodwill. The allegation of the plaintiff is that one of the dress for women, a blue poncho and heavily embroidered trousers, an original and distinctive creation of the plaintiff, have been featured in a film ‘Bunty Aur Bubli’ produced by the second defendant, thereby infringing the copyright and hence a suit for permanent injunction along with rendition of accounts has been preferred.
The central female protagonist of the film, Miss Rani Mukherji, is shown wearing this dress. Since the 2nd defendant/ producer had availed the services of another designer, he is arrayed as the first defendant.
In their reply notice, the first defendant/designer for the film, clarified that he did not design the impugned dress but purchased it from a shop in Mumbai, and the second defendant/producer, contented that one of the terms of agreement was that the costumes/designs conceptualized, formulated and exhibited for the film should not be plagiarized or infringing the copyrights of others. The second defendant/producer on the basis of the above defense read together with Section 52 (1) (u) (ii) of the Copyright Act 1957, preferred an application under Order 1 Rule 10 C.P.C. for striking out the name of the second defendant form the array of parties.
The main contention of the second defendant/producer is that as the suit does not disclose any cause of action, his name is liable to be struck down from the array of the parties. Further that, Section 52 (1) (u) (ii) of the Copyright Act, provides that it would not amount to infringement if an artistic work is included in a cinematograph film as by way of background or is otherwise incidental to the principal matters represented in the film. The principal characters in an Indian film, change their attires several times even in a long sequence and hence, can only be incidental to the principal matters represented in a film. More over, it is practically impossible for the producer to take permissions from the designers of every one of the hundreds or sometimes thousands of clothes used in the cinematograph film. The dress in question appears only for a few seconds in the film and hence does not amount to infringement of copyright in any artistic work.
The defendants, for substantiating their stand enumerate the rationale for engrafting the same in to the Indian statute books. The U. K. Copyright Act, on which the Indian Copyright Act is modeled, enshrines three key justifications for Section 52 (1) (u).
- In relation to photographers, film makers and broadcasters, it is justifiable on the grounds that it will often be very difficult to obtain permission from the owners of all the works reproduced in the photograph, film or broadcast;
- The incidental use of a work will in any event not detract from the market of the original and in certain circumstances may even enhance it;
- Such a provision allows filmmakers and broadcasters a degree of artistic freedom by allowing them to set the activities of their characters in a vide variety of settings.
Hence, it is submitted that as the dress is only incidental to the film and the inclusion of the dress only enhances the market of the dress rather than detracting the same.
On the other hand, Suneet Varma contends that the second defendant has employed delay tactics in filing the application and alleged that what the second defendant aims at is the rejection of plaint itself. Further contended that as Suneet Varma being the owner of ‘original artistic work’ has the exclusive rights under Section 14 of the Copyright Act dealing with the reproduction of the said works. On the question of ‘incidental to the principal matters’, it was contended that it could only logically be interpreted to mean incidental to the character if the artistic work in question is in respect of the dress. It was further pointed out that the infringing dress has been used not only as part of the film, but also used in the inlay cards for the audio/videos, CDs, DVDs etc as promotional materials and these are outside the purview of Section 52 (1) (u) (ii).
The Court is very much in consonance with Suneet Varma when it accepts the view that the primary objective of the second defendant in filing application under Order 1 Rule 10 is essentially the rejection of the plaint. The court further observes that styling of the movie now a day has become as important as dialogue, screenplay or music. The costumes are designed in such a way as to bring out the character of that particular actor in the movie. ’Bollywood’ (the Hindi film industry) has become integral to the fashion industry and there are specific awards to the costumes in the film and hence can be inferred as ‘integral to the film’ and not entitled to protection under Section 52 (1) (u) (ii) of the Copyright Act 1957.
But the Court deliberately leaves the determination of the question as to whether a particular dress was only by way of background or incidental to the principal matters, subject to evidence. The Court further observes that as the second defendant was well aware and conscious of the fact that the dress used in the film should not be plagiarized or infringing copyrights of other designers, and as the first defendant has admitted that he had not designed the said dress, the presence of the second defendant becomes inevitable and hence cannot be deleted from the array of the parties and thereby dismissed the application.
This case follows the footsteps of the acclaimed fashion designer Ritu Kumar’s endeavor against reproduction, printing, selling and distribution of her designs. However, each case has certain innate peculiarities therefore, a lot depends on the judicial scrutiny and on the view taken by the court.
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