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MRF failed to show that Metro had copied the substance, and the kernel of their advertisement

The role of Advertising in attracting consumer’s attention to a product or business is widely accepted. The companies therefore spend millions in creating product advertisement not only to attract consumer attention but also to differentiate their product from that of the competitors. This post discusses case brought by MRF Limited (MRF) against Metro Tyres (Metro) for copying concept of MRF NV, REVZ range of tires.  The key issue before the Court was; whether the infringing copy needs to be an exact replica or a substantial/ material copy is sufficient to hold copyright infringement in case of a cinematographic film?

MRF Limited (MRF) produced an audio visual advertisement titled as ‘MRF NV Series’ to publicize its MRF NV, REVZ range of tyres. The advertisement was first aired on the television on 27th June 2015 and thereafter posted on YouTube and aired on numerous television channels. MRF alleged that Metro’s advertisement of ‘Bazooka Radical Tyres’ aired for the first time in September 2016 infringes their advertisement. The audio visual advertisement is a cinematographic work under Section 2(f) of the Copyright Act, 1957 of which MRF is an author.

MRF case:

  1. In October 2016, MRF came across an advertisement titled ‘Bazooka Radical Tyres’ by Metro which on comparison contained broad similarities between the two advertisements in terms of similar sequencing, form and expression and amounting to infringement of copyright in the MRF’s advertisement. The similarities highlighted by MRF between the two advertisements were not coincidental and differences were minor in nature.
  2. It lodged a complaint with the Advertising Standards Council of India (ASCI) in October 2016 objecting to Metro’s advertisement. No reply was filed by Metro. Instead, Metro proceeded to file a suit against MRF to restrain them from issuing groundless threats and restrain ASCI from proceeding with the MRF’s complaint. Metro’s suit was dismissed in March 2017 and an appeal was filed challenging dismissal of the suit. The appeal is currently pending. It was constrained to file the suit as ASCI failed to act even after Metro’s suit was dismissed.
  3. In cases involving copyright infringement of a cinematographic film, the test is of an overall impression of an average viewer and not microscopic analysis. The infringing copy is not required to be an exact copy. It relied upon the landmark judgement passed by Apex Court in the case of RG Anand v Deluxe Films and Others to explain the legal position under the Indian law.
  4. Cinematographic work needs to be analyzed in the same manner as literary and artistic work.
  5. The rights in a dramatic work in a film could be infringed without actually lifting its frames or images.
  6. The foreign judgements (passed by Courts of United Kingdom and Australia) cited by Metro were not appropriate keeping in view scheme of Copyright Act, 1957 is different.

Metro’s Defense

  1. The action is neither about trademark infringement nor passing off. Therefore, it is not an action based on confusion against them.
  2. To establish copyright infringement in a cinematographic film under the Copyright Act, 1957, it is essential to prove that the impugned work is an actual copy of MRF’s advertisement/ cinematographic film and overall impression is not the correct test. MRF has failed to establish copyright infringement in the advertisement brought by Metro.
  3. The expression ‘to make a copy of the film’ in Section 14(d)(i) refers to physical copy of a cinematographic film. Metro has neither made a physical copy of its advertisement nor photograph of any image which formed a part of its advertisement.
  4. The judgement passed by Apex Court in the RG Anand v Deluxe Films case is not applicable as the judgement was concerned with literary work and not with a cinematographic film. The test for comparison of a literary work and cinematographic film are different under the Copyright Act, and for a film it should be an exact copy of the film or portion, whereas for script, the test is whether the reader forms an unmistakable impression that one work was a copy of other.
  5. MRF selectively picked up isolated concepts to prove infringement which is not the correct approach. Metro relied upon various differences between the two advertisements/ cinematographic films.

After considering the arguments of MRF and Metro, the court held:

  1. The definition and protection of cinematographic film under English law is narrower as compared to the Indian law. Cinematographic film is granted same protection under the Copyright law like other work in India.
  2. Though the ‘original’ word is missing in Section 13(1)(b) of the Copyright Act, the court was of the view that the concept of originality is not applied universally in a uniform manner. The Apex Court in India has held that ‘original’ does not mean that the work must be the expression of original or inventive thought, but the work must not be copied from another work.
  3. The expression ‘to make a copy of the film’ in Section 14(d)(i) has to be construed broadly and not in narrow sense. It is not just limited just to making a physical copy by process of duplication but it also refers to another film which substantially and materially reproduces the original film.
  4. Section 14 of the Copyright Act unequivocally mentions that the case of infringement is made out if there is substantial copying of copyrighted work and exact replica is not the correct test. Blatant copying of essential/ distinctive features of the advertisement would amount to copyright infringement.
  5. The copyright infringement test laid down in the R.G. Anand case was applied in this case and the court concluded that the two advertisements are neither substantially or materially similar as the expressions in both advertisements are different. MRF’s advertisement displayed manufacturing process of a tyre and its radial, whereas advertisement of Metro emphasized on the durability of the tyre by showing that it rides well on all terrains. Further, there was a delay of one year in filing of the suit since the advertisement was first aired by Metro.

In light of the above, the Court dismissed the injunction application of MRF.

Our comments

The decision clears the ambiguity surrounding the test to determine infringement in case of a cinematographic work. The findings of the Court that substantial copying of the work and not exact replica are to be seen to determine copyright infringement brings cinematographic work at par with dramatic, literary and musical works. This would also mean that the threshold to determine whether a copyright exists in a cinematographic work will be higher. This is clearly a departure from what has been the established norm.