In a judgement passed in the case of Bright Lifecare Pvt. Ltd. v. Vini Cosmetics Pvt. Ltd. and Anr. dated 7th July 2022, the Delhi High Court delved into the limits of protection to be granted to intellectual property as claimed in an advertising campaign. The question before the court was: whether elements of an advertising campaign can be protected under intellectual property law, and in what manner?
Introduction
The Plaintiff (Bright Lifecare) is a company dealing in health supplements and sells protein supplement under the name of MuscleBlaze. The Defendant (Vini Cosmetics) is a company involved in selling cosmetics, pharmaceuticals and ayurvedic products. The Defendant is the manufacturer and seller of a deodorant known as Realman. The Plaintiff claimed that their protein supplement is sold under an advertisement campaign consisting of audio-visual advertisements (hereinafter referred to as ‘advertising commercial') titled as ‘ZIDDI HOON MAIN'. Further, the Plaintiff had a number of slogans involving the word ZIDD/ZIDDI registered as trademarks in the name of the Plaintiff, such as ‘ZIDDI HOON MAIN', ‘ZIDDIS DON'T WAIT', ‘NAAM HAI ZIDDI' etc which are used by the Plaintiff in promoting their product. The Plaintiff was aggrieved by the advertisement campaign used to promote the Defendant's deodorant Realman being promoted under the tag-line ‘ZIDDI PERFUME' claiming it to be conceptually and visually similar to that of the Plaintiff's advertising commercial.
Advertisement Campaigns of the Plaintiff and the Defendant
As described in the judgement, the theme of the Plaintiff's advertising commercial is focused on sports persons and fitness enthusiasts who are shown to be determined and rather persistent in achieving their goal in their respective sporting activities. In the process, the protagonists in the advertising commercial are shown to consume the protein supplement MuscleBlaze which helps them reach their goals. The Plaintiff's advertising commercials have a significant usage of the word ‘ZIDDI' meaning persistent which is shown to be a common thread of emotion amongst all the protagonists. Further, various visuals of people working out have been used superimposed by an overall colour theme of black, yellow and white in the advertising commercials.
On the other hand, the Defendant's advertising commercial was built around the idea that their deodorant does not lose its scent on people even if people are indulging in heavy physical activity, and therefore being termed as ‘ZIDDI PERFUME'. Some common elements in the Defendant's advertising commercial as used by the Plaintiff included usage of the word ‘ZIDDI', similar actions of people indulging in physical activity and a dominant black, yellow and white colour scheme.
Contentions of the Parties
Aggrieved by the advertisement campaign used to promote the deodorant Realman by the Defendant, the Plaintiff claimed that the impugned advertising commercial and advertisement campaign was infringing the copyright of the Plaintiff in their advertising commercial and trademark owned by the Plaintiff in the ZIDDI slogans being used by them. It asserted a copyright in the depiction of persistent sport persons exercising to portray resilience and perseverance shot in a dark themed background. Further, the Plaintiff claimed trademark infringement in the usage of the word ‘ZIDDI' by the Defendant in promoting their perfume as ‘ZIDDI PERFUME' that could lead to a deceptive association between the Plaintiff's and the Defendant's products in the minds of the consuming public. The Defendant, on the other hand contended that the Plaintiff cannot claim a monopoly in the usage of the word ‘ZIDDI' and cited a couple of examples ranging from films to advertisements based on the word ‘ZIDDI'. Further, it was contended that there exists no similarity in the theme of the two advertising commercials as the word ZIDDI being used by the Plaintiff is attributed to the protagonists in their advertising commercial whereas it has been attributed to the quality of the product by the Defendant in their advertising commercial.
Judgement of the Hon'ble Court
In analysing the extent of protection to be granted to the Plaintiff's advertising commercial and adjudicating the extent of infringement done by the Defendant in their advertising commercial, the Hon'ble Court sought to identify the elements of the advertising commercial which are protectable under IP law.
The Hon'ble Court delineated the following elements of the advertising commercial as distinctive:
- Usage of the words ‘ZIDD' and ‘ZIDDI' in terms of describing the perseverance and dedication of the protagonists.
- Dark themed visuals comprising of protagonists working out in a gym atmosphere.
- The usage of white and yellow colours in the lettering in the Plaintiff's advertisement campaign against a dark background.
Relying on the landmark case law of RG Anand v. Delux Films1 (“RG Anand”), the Hon'ble Court observed that an actionable claim of copyright infringement should show that a substantial part of the work of the Plaintiff has been copied by the Defendant which a mere observer can make out as an unmistakable impression of that of the Plaintiff's work. Recognising the usage of the words ‘ZIDDI' and ‘ZIDD' it was held that the usage of such laudatory epithets has been chosen to be used by the Plaintiff in a creative manner making the Plaintiff's advertisement as distinctive. However, going by the finding as held in the case of Glaxosmithkline Consumer Healthcare Ltd. v. Abbott Healthcare Pvt. Ltd2 the Hon'ble Court also cautioned that claiming exclusivity in the usage of laudatory epithets as an element of an advertising campaign requires a high threshold of distinctiveness which signifies its source.
Analysing the law in the present case, the Hon'ble Court held that viewing the Defendant's advertising commercial which involves a similar dark theme, usage of the words ‘ZIDDI' and presence of yellow and black colours gives an impression to the ordinary viewer that the two advertising commercials are emanating from the same source. It was further held that no exclusivity can be granted to the Plaintiff in usage of the word ‘ZIDDI' or usage of the visuals of the protagonists working out. However, the Hon'ble Court nevertheless went on to hold that the expression in the advertising commercial of the Defendant is colourable imitation of the that of the Plaintiff's. Particularly, the Hon'ble Court held that the Defendant is not entitled to use the quality indicated by the word ‘ZIDDI' in the manner as used by the Plaintiff which includes being used in conjugation with a dark coloured background depicting muscular people working out using a rope and bag holding it to be evocative of the Plaintiff's advertisement. In light of the above, the Hon'ble Court partially allowed the reliefs sought by the Plaintiff inasmuch holding that the advertising commercials of the Defendant is similar in the theme and expression as compared to Plaintiff's advertising commercial.
Analysis
While the Hon'ble Court has correctly recognised the law in protecting the copyright in an advertising campaign, the finding of the Hon'ble Court seems to be given on a contrasting note as compared to the legal principles applicable here. The same can be observed as follows:
- Distinctive Elements of the Advertisement Commercial
The Hon'ble Court has held that the elements of protagonists working out in a dark background and the overall effect being communicated by the visuals of the Plaintiff's advertisement commercial is distinctive. In the authors' opinion, the only unique expression in the Plaintiff's advertisement campaign is the idea of protagonists being persistent in working out in a ‘ZIDDI' or persistent manner demonstrated by the visuals. The emphasis on the dark themed visuals and usage of props like a rope or a bag cannot be equated to grant a ‘distinctive' effect to the Plaintiff's advertising commercial-something which the Hon'ble Court has heavily relied upon to establish distinctiveness.
- No visible signs of colourable imitation by the Defendant
There are at least four factors in the Hon'ble Court's analysis which have been stated to be seen as similar between the Defendant and the Plaintiff's advertising commercial.
- Similar Colour Combination
- Dark-Setting/Background
- Protagonists working using similar gym implements
- Usage of the word ‘ZIDDI' in a positive connotation
The Hon'ble Court rightly holds that these factors merely itself cannot be monopolised by any one person. It further pertinently holds that it is the overall effect of these factors and their consequent portrayal that needs to be different. Nonetheless, the Hon'ble Court goes on to hold that the Defendant's advertising commercial is a colourable imitation of the Plaintiff's advertising commercial because of the portrayal of these factors in a certain manner.
In the opinion of the authors, such a finding by the Hon'ble Court is erroneous as the Hon'ble Court seems to have failed to appreciate that the premise of both the advertising commercials is different. On a closer look of the Defendant's advertising commercial, it can be seen that the foundational idea/concept of the Defendant is completely different, even if the expression of the concept is somewhat similar as compared to the Plaintiff. The Defendant used some common visuals of protagonists working out to espouse the idea that their product when used on the body does not lose its scent even if a person is in a heavy work out, thereby terming it as a ‘ZIDDI' perfume. Anything remotely evocative of the Plaintiff's advertising commercial in that of the Defendant's advertising commercial can be supported by the fact that such elements of the Plaintiff's advertising commercial are commonly used connotations which cannot be held as exclusive to that of the Plaintiff.
Further, any possible colourable imitation of the Plaintiff's advertising commercial by the Defendant can also be justified by the fact that such expression can be seen as exhibiting fragmented literal similarity with the Plaintiff and therefore, de minimis, as held in the case of India TV Independent New Service Pvt. Ltd. v. Yashraj Films Pvt. Ltd.3
- On Substantial Similarity
Applying the substantial similarity test in assessing infringement between the Plaintiff and the Defendant's advertising commercials, the Hon'ble Court has held that the usage of similar imitative actions performed by the protagonists in the Defendant's advertising commercial is evocative of the Plaintiff.
As per the substantial similarity test used by the Hon'ble Court in this case that has been elucidated in RG Anand, a case of copyright infringement would be made if the subsequent work creates an unmistakable impression of being an imitation of the original. It is evident that a high standard of an ‘unmistakable impression' is not being satisfied in the present case, particularly when commonplace elements such as a dark setting, sports equipment and a laudatory epithet such as ZIDDI has been used by the parties. Further, the word ZIDDI even if used in a positive connotation by both the parties represent two very different ideas as elucidated above.
Conclusion
The ruling by the Hon'ble High Court can be seen to have fallen afoul of the classic copyright doctrine of idea-expression dichotomy. The present case is an example where lines get blurred in whether the expression of the Plaintiff in their advertising commercial has been lifted by the Defendant. In the process, the Hon'ble Court has sought to protect the idea per se of protagonists working out and usage of a laudatory epithet such as ‘ZIDDI' in granting an injunction to the Plaintiff. The law on protection of advertisement campaigns can go in rough waters in cases where copyright infringement is being adjudicated. As demonstrated above, the ruling of the Hon'ble Court seems to be on the wrong side of the legal principle of idea-expression dichotomy. Such cases therefore do become imperative to understand the kind of protection to be granted to manufacturers in promoting their products so as to not stifle creativity and freedom of expression.
Footnotes
1 AIR 1978 SC 1613
2 2009 (40) PTC 437 (Cal)
3 192 (2012) DLT 502
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
