India: Artistic Work Under Copyright Law: Roderick John Andrew Mackenzie v. Himalayan Heli Services Pvt. Ltd

Last Updated: 26 March 2019
Article by S.S. Rana & Co. Advocates

In the present case, the Delhi High Court noted that Roderick John Andrew Mackenzie (hereinafter referred to as "the Plaintiff") had merely contributed to an aspect of the artistic work whereas the copyright in a work would exist only for the composite mark. Accordingly, the Court observed that none of the parties had copyright in the artistic work.

Facts

  • The suit was filed by the Plaintiff against Himalayan Heli Services Pvt. Ltd (hereinafter referred to as "the Defendant") for the purpose seeking permanent injunction restraining the Defendant their employees, servants, agents etc. from using or otherwise copying, selling, offering for sale, counterfeit/unlicensed versions of the Plaintiff's copyright in his artistic work 'HIMLAYAN HELI SERVICES' in any shape, form or manner which amounted to infringement of the Plaintiff's copyright.
  • Plaintiff was a mountaineer who had far-reaching experience of expeditions in the Himalayas and was involved in the business of sking, trekking and rafting.
  • Defendant was a private limited company incorporated in July, 1998 as a 100% subsidiary of the M/s World Expeditions (India) Pvt. Ltd., who was engaged in the business of conducting helicopter operations.
  • It was alleged by Plaintiff that it noticed on the internet and elsewhere that the Defendant was infringing Plaintiff's copyright and had titled it as "HIMLAYAN HELI SERVICES" and was using the artistic work of the Plaintiff consisting of pictorial representations of the said artistic work with identical shades, lay-out, features, get-up etc. on its websites, letter heads, stationery, business cards etc.
  • It is claimed that the Defendant was infringing the artistic work of the Plaintiff by means of posting the insignia in the various exhibitions, galleries, newspaper etc both in Delhi and Trans border.

Plaintiff's Contentions

  • It was alleged that the Plaintiff was the original creator, lawful owner and proprietor of the copyright in the artistic work titled "HIMALAYAN HELI SERVICES' and the same was registered in Plaintiff's favor on January 28, 2008.
  • It was contended that that the Defendant was wrongly and illegally using the Plaintiff's copyright in the artistic work titled "HIMLAYAN HELI SERVICES" on its websites, letter heads, stationery, business cards etc.
  • It was claimed that the Defendant's logo has an identical get up, layout and features as that of the Plaintiff's.
  • It was contended that the Plaintiff was also the first user of the artistic work as per Section 17 of the Copyright Act (hereinafter referred to as 'the Act') and was entitled to all exclusive rights as provided under Section 15 of the Act.
  • It was contended that Defendant themselves had admitted that that the Plaintiff had been using the logo of a triangular mountain with the skiing trail surrounded by clouds, thus the subsequent adoption of the Defendant of the logo with a helicopter in a mountain and the clouds not only infringed the Plaintiff's artistic work but also amounted to passing off.

Defendant's Contentions

  • It claimed to be engaged in the business of conducting helicopter operations.
  • It was contended by the Defendant that around the year 1989-90, the Plaintiff had showed interest in doing business in India in the area of Heli Skiing and thereafter, a working arrangement was entered into between M/s World Expeditions Pvt. Ltd and the Plaintiff to organize tours for Heli Skiing.
  • It was alleged that the Plaintiff wanted to conduct the business under the name and style of Himalayan Heli Skiing, but on the objection by the Defendant on the same, the Plaintiff changed the name of its operation to Himachal Helicopter Skiing with a logo being a triangular mountain with a ski trail surrounded by clouds.
  • Later, the Defendant changed the nomenclature from M/s World Expeditions (India) Pvt. Ltd to 'HIMALAYAN HELI SERVICES' Private limited.
  • It was stated that in the year 1998 during the formation of the Defendant, a logo was designed depicting a helicopter in a triangle with clouds around it, the triangle depicted the mountains. The clouds were claimed to be put on the suggestion of the Plaintiff.
  • It was submitted that the symbol of 'Dorje' was incorporated in the logo of the Defendant by one Mr. Wangchuk, who was a practicing Buddhist. Further, It is stated that M/s Mahavir Printers was engaged to design a suitable logo for the Defendant with a 'Dorje' and out of the various designs given Defendant selected the present logo/insignia. Thus the original artistic work in this logo containing the dorje/vajra is of the Defendant and not the Plaintiff and it was claimed that the logo containing the Dojre was an original artistic work of the Defendant.
  • It was submitted by the Defendant that the dispute between the parties arose in the year 2006 and also, that the Plaintiff was fully aware about the logos being used by the Defendant and the Plaintiff used the logo containing ski trail in a triangular mountain surrounded by clouds.
  • It was contended that the Plaintiff's suit was liable to be dismissed as there was material concealment of facts and the Defendant had been using its logo with a helicopter in a triangular mountain clouds and dorge in 'HIMALAYAN HELI SERVICES'.

Court's Analysis

After hearing the respective parties to the suit, the Court framed various issues and held as under:-

  • "Whether the Plaintiff has any right, title or interest or copyright in the artistic work 'HIMALAYAN HELI SERVICES'? and Whether the Defendant is the owner of the copyright in the artistic work 'HIMALAYAN HELI SERVICES'?"
  • The Court relied on the case of R.G. Anand vs. M/s Delux Films & Ors. and after perusal of the contentions raised by either parties held that neither the Plaintiff nor the Defendant could claim any copyright in the artistic work for which registration had been granted to the Plaintiff vide registration No.A81931/2008 i.e. triangular mountain with the clouds and a helicopter even though the same was being used as a logo for the joint venture. It was observed by the Court that Plaintiff had placed no documents on record to show that prior to 1998 the Plaintiff was using the mark "HIMLAYAN HELI SERVICES" whereas the Defendant had placed on record documents to show that before Plaintiff joined the joint venture i.e. Himalayan Heli Services Private Limited, his organization was called as M/s. Himachal Helicopter Skiing bearing the logo being a triangular mountain with a ski trail surrounded by clouds.
  • With regard to the logo Himalayan Heli Services depicted with a Dojre, the Court observed that neither in the plaint nor in the evidence the Plaintiff claimed that he was the creator or author of the said artistic work and mere grant of copyright in favour of the Plaintiff would not inure a right to the Plaintiff.
  • "Whether the Plaintiff has suppressed material facts and the effect thereof?"
  • The Court stated that in the suit in hand the Plaintiff had claimed for injunction restraining the Defendant from using its copyright in the artistic work but it was required by the Plaintiff to plead that that the Plaintiff had been working with the Defendant from 1989 to 2006 till the time disputes arose between the parties. As a joint venture both the Plaintiff and the Defendant were using logos which falsified the claim of the Plaintiff as an exclusive user. Further, the claim of the Plaintiff that he came to know about Defendant's user before filing of the suit was also falsified by the documents placed on record by the Defendant. The Court had placed on the cases Badami v. Bhali reported in (2012) 11 SCC 574, Meghmala v. G. Narasimha Reddy reported in (2010) 8 SCC 383. The said issue was decided in favour of the Defendant as it was held that the Plaintiff concealed material facts in the plaint.
  • "Whether the Plaintiff has acquiesced in the Defendant's use of the said artistic work?"
  • The Court observed that the claim of the Plaintiff came to know about the infringement in January 2009 was falsified as the certificate of registration, in respect of the logo triangular with a helicopter in between along with the clouds and Himalayan Heli Services with the 'Dojre', exhibited by the Plaintiff was of the year 2008 when the Plaintiff parted from the Defendant's Company. While, the Defendant had placed on record documents relating back to year 1993,1995 and 1996, which showed that the Defendant had been using the said mark since then. Defendant had also placed on record documents of the Himachal Heli Skiing wherein the triangle used by the Plaintiff was with a ski trail and not a helicopter.
  • The reliance was placed by the Court on the case of Power Control Appliances v. Sumeet Machines Pvt. Ltd reported in (1994)2 SCC 448, Khoday Distilleries Ltd. v. Scotch Whisky Assn reported in (2008) 10 SCC 723. The Court held that the Plaintiff was not entitled to the relief of injunction due to the acquiescence by the Plaintiff when he ignored the use of Trademark by the Defendant. It was observed that the Plaintiff used the artistic work along with the Defendant, that is, triangle depicting the mountain with the clouds.
  • "Whether the Plaintiff is entitled to permanent injunction to restrain the Defendant from using the artistic work 'HIMALAYAN HELI SERVICES'?"
  • The Court observed the contention raised by the Defendant that both the logos were designed by the Defendant and Plaintiff had never used the same and it had been using the logo of a mountain with triangle with the ski trail and the clouds. It was held that despite there being registration in favour of the Plaintiff, the Defendant had acquired goodwill in the same. It was decided by the Court that the Plaintiff was not entitled to seek an injunction. The Court relied on Jai Narain Parasrampuria v. Pushpa Devi Saraf reported in (2006) 7 SCC 756, Citadel Fine Pharmaceuticals vs. Ramaniyam Real Estate (P) Ltd reported in 2011 (9) SCC 147.
  • In view of the above explanations rendered by the Court, it was of the view that the Plaintiff was not entitled to relief of injunction.

For further information please contact at S.S Rana & Co. email: info@ssrana.in or call at (+91- 11 4012 3000). Our website can be accessed at www.ssrana.in

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