Jamia Moot Memo - R

5th Jamia National Moot Court Competition, March, 2015

Team code: JM15-04

BEFORE THE HON’BLE SUPREME COURT OF MORDOR

IN THE MATTERS OF:

MOONSHINE MORDOR PVT LTD. & ANR ... APPELLANT

V.

NEPTUNE MORDOR PVT.LTD …RESPONDENT

SLP(C) NO. 1/2015

CLUBBED WITH

SLP (C) NO. 2/2015

ON SUBMISSION TO THE HON’BLE SUPREME COURT OF MORDOR

UNDER ARTICLE 136 OF THE CONSTITUTION

WRITTEN SUBMISSIONS ON BEHALF OF THE RESPONDENTS

COUNSEL APPEARING ON BEHALF OF THE RESPONDENTS

1


Table of Contents

I. Index of authorities…………….……………………………………………………3-5

II. Statement of Jurisdiction………………………………………………………………6

III. Statement of Fact……………………………………………………………………7-8

IV. Statement of Issues…………………………………………………………………….9

V. Summary of Argument…………………………………………………………….…10

VI. Argument Advanced…………………………………………………………….. 11-31

VII. Prayer…………………………………………………………………………………

32

2


Index of Authorities

STATUTES

1. Indian copyrights act ,19572. Indian trademarks act,19993. Indian Constitution,1950

BOOKS, ARTICLES & TREATISES

Articles:

1. The Death of Copyright: Digital Technology, Private Copying, and the Digital

Millennium Copyright Ac, Virginia law review, Vol. 87,No.5, 2001

2. Applied Art and Industrial Design: A Suggested Approach to Copyright in useful

articles by Robert Denicola, Minnesota Law Review, Vol. 67, No. 4, 1983

3. Origin of the Patent and Copyright Clause of the Constitution, The; Fenning, Karl 11 J.

Pat. Off. Soc'y 438 (1929)

4. s Copyright Abridge the First Amendment Guarantees of Free Speech and Press;

Nimmer, Melville B. 17 UCLA L. Rev. 1180 (1969-1970)

5. Ownership of Copyrightable Works of University Professors: The Interplay between

the Copyright Act and University Copyright Policies; Lape, Laura G. 37 Vill. L.

Rev. 223 (1992)

6. Contracts, Copyright, and Preemption in a Digital World Copyright (c) 1995 T.C.

Williams School of Law University of Richmond

Richmond Journal of Law & Technology,1995

7. First Thoughts on the Copyright Act of 1976; Ringer, Barbara , 22 N. Y. L. Sch. L.

Rev. 477 (1976-1977)

8. "International Copyright Law Survey". Mincov Law Corporation.

9. Howard B. Abrams, Law of Copyright West law next (2003-date)

10. Paul Goldstein, Goldstein on Copyright CCH intelliconnect (3d ed., 2005-date)

11. Melville B. Nimmer & David Nimmer, Nimmer on Copyright: A Treatise on the Law of

Literary, Musical and Artistic property, and the Protection of Ideas Lexis nexis (Rev. ed.,

1978-date)

12. William F. Patry, Patry on Copyright Westlaw next (2006-date).

3


Treaties

1. Paris convention for the protection of industrial property,1883

2. Berne convention for the protection of literary and artistic works,1886

3. Agreement on trade related aspects of international property rights,1994(THE TRIPS

AGGREMENT)

4. Universal copyright convention Geneva Act ,1955

5. WIPO Copyright Treaty, Geneva, 2002

6. Buenos Aires Convention 11 August 1910

7. Geneva Phonograms Convention,1971

8. Marrakesh VIP Treaty 28 June 2013.

9. Trans-Pacific Partnership intellectual property provisions18 July 2005

CASES

1. Harper & Row Publishers, Inc. v. Nation Enterprises 471 U.S. 539, 556 (1985)

2. While-Smith Music Pub. Co. v. Apollo Co 209 U.S. 1 (1908)

3. University of London Press, Ltd. v. University Tutorial Press, Ltd[1916] 2 Ch. 601

4. Emergent Genetics India Pvt. Ltd v. Shailendra Shivam 2011 (47) PTC 494 (Del)

5. Eastern Book Company v Modak 2008 (1) SCC 1

6. Victoria Park Racing and Recreation Grounds Co. Ltd v. Taylor[58 CLR 479(1937)]

7. Moorgate Tobacco Co. v. Philip Morris[156 CLR 414 (1984)]

8. Sports and General Press Agency Ltd v “Our Dogs” Publishing Co Ltd(1916) 2 K.B(880]

9. Cadbury-schweppes Pty Ltd and Others v Pub Squash Co Pty Ltd.[(1981) 1 W.L.R. 193]

10. Hodgekinson Corby Ltd v Wards Mobility Services Ltd. [1994 Ch. 1564]

11. Time Warner Entertainment Co., L.P. & Ors. v. R.P.G. Netcom & etc AIR 2007 Del 226

12. Super Cassettes Industries Ltd. v. Mr. Chintamani Rao & Ors. 2012 (49) PTC 1 (Del)

13. Triangle Publications Inc. v. New England News Paper Publishing Co., 46 F. Supp. 198

(1942)

14. CompcoCorp v. Day Brite Lightning Inc. 376 U.S. 234 (1964),

15. Cadbury-Schweppes Pty. Ltd. & Ors. v. Pub Squash Co. Pty. Ltd., (1981) 1 W.L.R. 193

16. Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd., 156 CLR 414

17. National Basketball Association and NBA Properties Inc. v. Motorola Inc. 105 F. 3d. 841

(1997) (“the NBA-2 Case”).

4

http://en.wikipedia.org/wiki/WIPO_Copyright_Treaty


18. Barclays Capital Inc., Merrill Lynch, Pierce, Fenner & Smith Inc. & Morgan Stanley &

Co. Inc. v. Theflyonthewall.com Inc. 650 F. 3d 876

19. Syndicate Bank v. Prabha D. Naik, (2001) 4 SCC 713

20. Ref Donaldson v Beckett 1 ER 837 (1774)

21. Victoria Park Racing and Recreation Grounds Co. Ltd. vs. Taylor, 58 CLR 479 (“the Victoria Park Case”)

22. Feist Publications, Inc. V Rural Telephone Service Co., 499 U.S. 340 (1991) (“Feist”)

23. Servewell Products Pvt. Ltd. & Anr. v. Dolphin2010 (43) PTC 507 (Del)24. Tata Press Limited vs. Mahanagar Telephone-Nigam Limited & Ors AIR 1995 SC 2438

25. Daimler Benzaktiegesellschaft & Anr. v. Eagle Flask Industries Ltd., ILR (1995) 2 Del

817

26. Ref Larsen & Toubro Limited v. Lachmi Narain Traders, ILR (2008) 2 Del 687,

27. Sunder Parmanand Lalwani and Ors. v. Caltex (India) Ltd., AIR 1969 Bom 24

28. ; Bata India Ltd. v. M/s. Pyare Lal & Co. Meerut City and Ors. AIR 1985 All 242;

29. Kiriloskar Diesel Recon (P) Ltd. v. Kirloskar Proprietary Ltd., AIR 1996 Bom 149

30. Larsen & Toubro Limited v. Lachmi Narain Traders, ILR (2008) 2 Del 687

31. Sunder Parmanand Lalwani and Ors. v. Caltex (India) Ltd., AIR 1969 Bom 24;

32. Bata India Ltd. v. M/s. Pyare Lal & Co. Meerut City and Ors. AIR 1985 All 242;

33. Kiriloskar Diesel Recon (P) Ltd. v. Kirloskar Proprietary Ltd., AIR 1996 Bom 149)

5


Statement of Jurisdiction

The Respondents has approached this Hon’ble Court under Article 136 of the Constitution.

Leave has been accordingly granted.

6


Statement of Facts

MOONSHINE’S BACKGROUND

Moonshine Mordor Pvt. Ltd (Moonshine) is an industrial conglomerate engaged in a variety of manufacturing businesses, including the manufacture of sporting equipment, computer peripherals, telephone instruments, electrical appliances, and textiles. The company wanted to grow and invest into other businesses as well. The Chairman of the Moonshine Group, Mr. Frodo Potter, was very fond of Basketball and had a dream of starting an Annual Basketball Tournament in Mordor, where young talent would be picked up every year from different parts of the country and matches would be held for a period of one month across the country. Moonshine launched such a tournament by the name of “Mordor Moonball Basketball League” (MMBL) and announced huge prize money under the banner of MMBL. A team of sports managers was assembled and after spending a substantial amount of money in advertising and setting up teams, the basketball tournament was started.

CONCEPTION OF MMBL

Moonshine started MMBL in the year 2011, but it was not a big success initially. However, by the time its third edition was announced in 2013, the tournament had started to gain popularity and lot of television channels tried to get the broadcasting rights from Moonshine. On 5th August, 2013, Moonshine entered into an agreement with FreeSports Mordor Pvt Ltd. (FreeSports), a national television channel, and assigned a “bouquet of rights” exclusively to FreeSports which included recording, broadcasting, mobile rights etc. The tournament in 2013 was a big success. By the time 2014 edition was announced, the whole nation wanted to follow the tournament.

CAUSE OF ACTION ARISED

Seeing this potential market, Neptune Mordor Pvt. Ltd (Neptune), a leading telecommunication company, started a mobile application under the name SuperDunk, which would provide minute-by-minute match updates of MMBL. Neptune also started advertising SuperDunk on electronic and print media. Neptune used the name of MMBL in the advertisements for SuperDunk. The advertisements also consisted of pictures of some prominent players of this tournament. SuperDunk became a rage and millions of mobile users started downloading this free Application on their mobile phones to receive free minute-by-minute match updates. Neptune was able to rope in big advertisers like Pepsi, Nike, McDonald’s etc on their SuperDunk App and started making lot of profit.

FILING OF SUIT

On getting to know about SuperDunk, Moonshine and FreeSports filed a suit against Neptune. Moonshine contended that their property rights were being violated. Moonshine considered the IMPL Project as its baby and whatever information (time sensitive information like match scores) that was generated from the project was their property. Moonshine also contended that the match information was a product of its “originality and creativity” and therefore it had a copyright over it. Another issue that was raised by Moonshine was with regards to usage of the name MMBL in the advertisements of Neptune to promote its Mobile application SuperDunk. Further, since Moonshine had assigned the

7


“bouquet of rights” to FreeSports, FreeSports felt aggrieved that Neptune was indulging in unfair competition, commercial misappropriation and unjust commercial enrichment.

TRIAL COURT’S FINDING

The Single Judge heard the contentions of both sides and returned with the following findings:

a) There does not lay any copyright protection in information emanating out of a match.

b) The match scores are in public domain and cannot be protected

c) The tort of unfair competition could not aid FreeSports in its effort to seek equitable relief

d) There is no unjust enrichment as the benefit gained by Neptune is not at the expense of FreeSports.

e) Using the name of MMBL in the advertisements of SuperDunk causes Trademark dilution of a well known trademark “Mordor Moonball Basketball League”.

FINDING - By DIVISION BENCH OF HIGH COURT

Aggrieved by the order of the Single Judge, Moonshine and FreeSports filed an appeal in front of the Division Bench. The Division Bench heard the parties on their grievances and decided the matter partly in favour of Moonshine and FreeSports and partly in favour of Neptune. The Division Bench held as follows:

a) With regards the issue of copyright protection, the Division Bench upheld the view of the Single Judge.

b) The match scores are not in public domain until they are broadcast on the television.

Therefore, Neptune can send match updates only after a 5 minute gap after it has been broadcast on the television.

c) Neptune has to pay 75 crores to Moonshine and FreeSports as damages because of unjust enrichment gained by it.

d) with regards the issue of Trademark dilution, Division Bench upheld the view of the Single Judge.

8


Statement of Issues

1. Whether there lies any copyright protection in information emanating out of a match?

2. Whether any tort of unfair competition is committed by Neptune Mordor Pvt Ltd against

FreeSports Mordor Pvt Ltd and Moonshine and whether there arise any liability to pay

damages to FreeSports Mordor Pvt Ltd. for unjust enrichment gained by it?

3. Whether using the name of MMBL in the advertisements of SuperDunk causes

Trademark dilution of a well known trademark “Mordor Moonball Basketball League”?

9


Summary of Arguments

1. THAT THERE DOES NOT LAY ANY COPYRIGHT PROTECTION IN INFORMATION EMANATING OUT OF A MATCH.

1.1. Match Information was not a product of Originality or creativity

1.2. Time sensitive information is not copyrightable (as it is publici juris)

1.3. No statute provision supports the claim of appellant.

1.4. Claims of the appellants hit by Article 19(2) of the Constitution of the India, 1950

2. THAT NO TORT OF UNFAIR COMPETITION IS COMMITTED BY NEPTUNE MORDOR PVT LTD AGAINST FREESPORTS MORDOR PVT LTD. & THEREBY IS NOT LIABLE TO PAY ANY DAMAGES FOR UNJUST ENRICHMENT .

2.1. Interpretation of phrase ‘bouquet of rights’ with respect to ‘mobile rights’

2.2. No Tort of Unfair Competition Recognized In India

2.3. No similarity in the services of Neptune and FreeSports Pvt Ltd thereby no Existence

of Direct Competition Between Neptune Pvt Ltd & FreeSports Pvt Ltd

2.4. No “free-riding” or commercial misappropriation by Neptune Pvt Ltd

3. THAT USING THE NAME OF MMBL IN THE ADVERTISEMENTS OF ‘SUPERDUNK’ DOES NOT CAUSES TRADEMARK DILUTION OF A WELL KNOWN TRADEMARK “MORDOR MOONBALL BASKETBALL LEAGUE”

3.1. No Deception Caused:

3.1.1. Products/services of the two companies are different

3.2. Mobile Application made was a free application thus no “Free riding” committed on

the part of Neptune:

3.3. The Class of ‘SuperDunk’ application users were not the targeted audience of

Moonshine Pvt Ltd:

3.4. Trade Mark was not used on a “STAND ALONE” basis:

10


Arguments Advanced

1. Whether there lies any copyright protection in information emanating out of a match?

1.1. Match Information was not a product of Originality or creativity:

The first principle of copyright law (for any copyright inhering in works, i.e. literary,

dramatic, musical or artistic work, sound recordings or cinematographic films) is that it

is in respect of expression of ideas, not the underlying facts or the ideas themselves. This

was put neatly in Feist by the US Supreme Court as follows: “This case concerns the

interaction of two well-established propositions. The first is that facts are not

copyrightable; the other, that compilations of facts generally are. Each of these

propositions possesses an impeccable pedigree. That there can be no valid copyright in

facts is universally understood. The most fundamental axiom of copyright law is that “no

author may copyright his ideas or the facts he narrates.” Harper & Row Publishers, Inc.

v. Nation Enterprises1”

The idea was expressed succinctly by Justice Holmes, when he described copyrights, in

While-Smith Music Pub. Co. v. Apollo Co.2 as restraining “the spontaneity of men

where but for it there would be nothing of any kind to hinder their doing as they saw fit.”

He went on to describe the right as follows: “It is a prohibition of conduct remote from

the persons or tangibles of the party having the right. It may be infringed a thousand

miles from the owner and without his ever becoming aware of the wrong. It is a right

which could not be recognized or endured for more than a limited time, and therefore, I

may remark in passing, it is one which hardly can be conceived except as a product of

statute, as the authorities now agree .The ground of this extraordinary right is that the

person to whom it is given has invented some new collocation of visible or audible

points, – of lines, colors, sounds, or words. The restraint is directed against reproducing

this collocation, although but for the invention and the statute any one would be free to

combine the contents of the dictionary, the elements of the spectrum, or the notes of the

gamut in any way that he had the wit to devise. The restriction is confined to the specific

form, to the collocation devised.”

The Feist requirement of some creativity has been accepted as the standard governing

copyright ability of works in India, in Eastern Book Co (supra) by the Supreme Court.

1 471 U.S. 539, 556 (1985)2 209 U.S. 1 (1908)

11


There, the court there held that mere copy -edited portions of judgments (which

contained the basic facts) did not entitle the publisher copyright protection as they did

not amount to “minimum requirement of creativity”. That the appellant expended some

skill, labour and money did not entitle them the protection: “The exercise of the skill and

judgment required to produce the work is trivial and is on account of the labour and the

capital invested and could be characterized as purely a work which has been brought

about by putting some amount of labour.” This ruling, in the Court’s opinion, is an

important mile stone in the development of law in India, because the Court veered away

from the previous copyright protection standard indicated in University of London

Press, Ltd. v. University Tutorial Press, Ltd.3, i.e. the claimed work being “the product of

the labour, skill and capital of one man which must not be appropriated by another, not

the elements, the raw material, upon which the labour and skill and capital of the first

have been expended. To secure copyright for this product, it is necessary that the

labour, skill and capital expended should be sufficient to impart to the product some

quality or character which the raw material did not possess and which differentiates the

product from the raw material.” (Extract from Eastern Book Co, supra).

Copyright protection is thus not afforded to a work, merely because it is the “product of

the labour, skill and capital”.

1.2. Time sensitive information is not copyrightable (as it is publici juris): The counsel

for the respondents argue that concededly no statute creates a property right in “scores”

and other happenings on the field; consequently there can no protection over match

information. It is argued that facts cannot be “owned” by anybody either under statute or

common law. In this context, it is stated, that the appellants aver in the suit that they

assert “exclusive rights over Match Information generated during a cricket match, which

is purely factual information, incapable of copyright protection” which cannot transform

into wider, ill-defined rights of indefinite duration. Therefore, it cannot ask that “match

information” of the kind which is subject matter of the suit, should be protectable as a

property right. It is further submitted, in this context that there are several unresolved

policy issues which constrain the court from holding that cricket scores or match

information is property. These concerns include - the scope of such right, difference

between protected facts and those which are not protected, the term/period of such hot

news protection, question of who is the first owner of the property i.e. organizer or the

players, manner of licensing of the rights, applicability of provisions relating to such

3 [1916] 2 Ch. 601

12


incidents, how can proprietors of such rights relinquish them to bring them into the

public domain, compulsory licensing of such rights, exercise of jurisdiction by a

regulatory body to grant such rights, collective licensing of events, protection accorded

to foreign events, principles of fair dealings applicable to such events. “Then the

creation or recognition by courts of a new private right may work serious injury to the

general public, unless the boundaries of the right are definitely established and wisely

guarded. In order to reconcile the new private right with the public interest, it may be

necessary to prescribe limitations and rules for its enjoyment; and also to provide

administrative machinery for enforcing the rules. It is largely for this reason that, in the

effort to meet the many new demands for justice incident to a rapidly changing

civilization, resort to legislation has latterly been had with increasing frequency4.” Thus

courts are not capable of generally creating a property right, since that is a legislative

prerogative; barring few instances where such so-called rights were recognized through

judicial decisions, there is more or less unanimity of judicial opinion in courts around the

world, i.e. such claims cannot be allowed without a statutory framework. Relying on the

judgement in Emergent Genetics India Pvt. Ltd v. Shailendra Shivam5, “in the

absence of a statutory regime (as is urged by the Appellant) is that the Courts of law

would be at one fell stroke, not only make policy choices which would impact

livelihoods of millions, but would be ordaining, unwittingly, legislation, which cannot be

tested for its reasonableness. An inventor or innovator undoubtedly should be provided

a fair regime which protects his creative efforts, and rewards him. But in the absence of

thought out policies, which weigh the advantages as well as the drawbacks, that may

manifest in the unhindered enforcement of such impulses, there is a danger of

imperiling the right to occupation, guaranteed by Article 19 (1) (g) and the right to

livelihood, so emphatically held to be an intrinsic part of Article 21 of the Constitution of

India, by our Courts.” Counsel argues that it is hard to conceive that someone or some

entity can “own” an event; one may be an organizer. Certain aspects or features of an

event may be capable of ownership. In support of this contention, i.e. inability to own

facts, reliance is placed on the judgment in Eastern Book Company v Modak6. The

sporting event as a whole is incapable of ownership. The mere expending of money or

effort would not render the underlying facts relating to sporting events property, capable

4 In INS had voiced concerns; the opinion of Justice Brandeis,5 2011 (47) PTC 494 (Del)6 2008 (1) SCC 1

13


of protection. What is conceivable, counsel submitted, is that the organizer of an event

can have certain rights which flow from (a)his ownership/control over the venue i.e.

land; and/or (b)statute.

In Victoria Park Racing and Recreation Grounds Co. Ltd v. Taylor7 “Further, he does no

wrong to the appellant by describing to other persons, to as wide an audience as he can

obtain, what takes place on the appellant’s ground. The court has not been referred to

any principle of law which prevents any man from describing anything which he sees

anywhere…” It is stated that not only the respondents, but also others had the right to

“monetize” the facts and information, over which there could be no monopoly. It is also

argued that the appellant’s contentions are inconsistent, because their rights self

professedly are not asserted against the world at large, which is contrary to the principle

underlying the property rights, which exist, in rem. It is admitted that there is no

exclusive property right against persons who carry on the same activities gratuitously. In

this context, it is stated that FreeSports admits that it cannot have any cause against one

using a satellite positioned above a stadium and broadcasts an on-going match free of

cost. It is also conceded that no cause of action would lie against the present respondents

if they were to continue operating without charging a premium.

1.3. No statute provision supports the claim of appellant with special emphasis on

section 16 of the Indian Copyright Act: The proprietary rights claimed in the suit are

not recognized under any law or statute, Moonshine’s claim was barred by Section168

which precluded it from claiming copyright or other similar un-enumerated, rights.

Dissemination of match information, after it entered the public domain; thus it was

purely factual and amounted to news cannot be subject to copyright protection. Counsel

also relies on Sports and General Press Agency Ltd v “Our Dogs” Publishing Co Ltd 9 to

state that the organizer of an event cannot grant a license or an exclusive license to a

right (here the right to exclusive dissemination of match information) that does not exist.

The organizer of an event, by virtue of being in control of premises, can impose any

restrictions he wishes by contract. But there is no such proprietary right in common law

so as to proceed against third parties. Equally, the rationale behind federal law pre-

emption in the United States that claims falling (in substance, though parties may choose

7 [58 CLR 479(1937)] and Moorgate Tobacco Co. v. Philip Morris[156 CLR 414 (1984)]8 The Copyright Act, 19579 1916) 2 K.B(880] Cadbury-schweppes Pty Ltd and Others v Pub Squash Co Pty Ltd. [(1981) 1 W.L.R. 193] and Hodgekinson Corby Ltd v Wards Mobility Services Ltd [1994 Ch. 1564]. Sports and General Press Agency Ltd.

14


to address them under various heads) under federal copyright law pre-empt similar

claims arising under state law is akin to the pre-emption under Section 16 of the Indian

Copyright Act. This is that the purely statutory monopolies created by the Copyright Act

exclude all other claims that “invoke the same rights … (as) under a cause of action for

copyright infringement” (Tavormina, supra). Relying on Time Warner Entertainment

Co., L.P. & Ors. v. R.P.G. Netcom & etc10. Where the court had held that “claim for

enforcement of rights beyond the Act can only be in terms of a law which was in force at

the time when the Act was enacted. Common law rights under copyright law were held to

be abrogated by Section 31 of the previous Copyright Act, 1911”11. The counsel for

respondent also contended that torts such as defamation and breach of confidentiality are

the only ones recognized by the law in India and that the, unfair competition is not a

recognized tort12.

Apart from the reasons discussed above, i.e. that to claim an established statutory right,

some enacted standards are to be fulfilled, in the form of the work having to consist of

limited or minimum creativity, to qualify for copyright protection, the fact remains that

the appellant’s stated premise for protection here is the mere expending of resources and

skill – a preconditions which existed to fulfill the copyright protection standard prior to

Eastern Book Co. But that standard no longer holds good. The appellant’s argument

about the inapplicability of Section 16, by reason of the languageof Section 39A has

facial appeal. A deeper analysis, however, would reveal that by Section 39A those

provisions of the Copyright Act which effectuate the rights created by Parliament for

copyright protection, i.e. enabling, assignment and mode of assignment of rights

(Sections 18 and 19); licensing and mode of licensing (Section 30); customs authorities‟

right to seize imported copies (Section 53); remedies for infringement (Section 55) and

coercive powers of law enforcement authorities (Section 64, 65 and 66) have been

extended to broadcasting rights. That cannot exclude applicability of other provisions,

(that do not find express mention under Section 39A). The wording of Section 16 – and

very importantly, Section 63 (which create offences) refer to “other rights”. By Section 10 AIR 2007 Del 226 and Super Cassettes Industries Ltd. v. Mr. Chintamani Rao & Ors. 2012 (49) PTC 1 (Del)11 Triangle Publications Inc. v. New England News Paper Publishing Co., 46 F. Supp. 198 (1942) and CompcoCorp v. Day Brite Lightning Inc. 376 U.S. 234 (1964), given by the US courts. They also relied on Cadbury-Schweppes Pty. Ltd. & Ors. v. Pub Squash Co. Pty. Ltd., (1981) 1 W.L.R. 193 and Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd., 156 CLR 41412 Strong reliance is placed on the United States Court of Appeals, Second Circuit ruling in National Basketball Association and NBA Properties Inc. v. Motorola Inc. 105 F. 3d. 841 (1997) (“the NBA-2 Case”). Reliance on Barclays Capital Inc., Merrill Lynch, Pierce, Fenner & Smith Inc. & Morgan Stanley & Co. Inc. v. Theflyonthewall.com Inc. 650 F. 3d 876 (“The flyonthewall Case) is also placed

15


16, “copyright or any similar right” (in a work) apart from what is created by the Act is

precluded. No doubt, the expression “work” limits the exclusion. However, equally,

while the text of the Copyright Act does not prescribe what t he rights referred to in the

words “other similar rights” – other than copyright – are, this must necessarily allude

to, inter alia, broadcasting rights. This is clear from the following reasons: Section 63 –

which creates offences (and yet is not included in Section 39A as applicable to

broadcasting rights) states that infringement of (a) copyright in a work, or (b) “any other

right created by this Act” would be punishable with imprisonment. Similarly,

expressions which are not defined by Chapter VIII are used; their meaning (i.e. words

such as sound recording, visual recording, fair dealing, etc.) can be only construed with

reference to other provisions of the Copyright Act. In other words, though there is no

express reference to Section 16 in Section 39A, its underlying premise, i.e. preclusion of

rights other than those spelt out in Chapter VIII, by common law, would apply. In ESPN,

the Division Bench even while holding that the express omission of Section 61 in

Section 39A did not render that suit fatal, held that broadcasting rights are “akin” to

copyrights. The decision consequently cannot be said to conclude the issue as to whether

such non-statutory and common law rights related, or arising from subject matter of

broadcasting rights (which are statutory) exist, and are enforceable.

A settled canon of statutory construction is that Parliament or the concerned legislature is

deemed to be aware of existing laws when it enacts a new legislative measures

(Syndicate Bank v. Prabha D. Naik, (2001) 4 SCC 713). Chapter VIII was introduced

due to a felt need to give limited protections to broadcast rights akin to copyright (since

its absence meant that those rights were precluded by Section 16). The nature of

copyright protection available to performers in addition to performers‟ rights was

consciously preserved by Proviso to Section 39A:“Provided that where copyright or

performer’s right subsists in respect of any work or performance that has been broadcast,

no license to reproduce such broadcast shall tak e effect without the consent of the owner

of rights or performer, as the case may be, or both of them.”

Thus, all those limitations that apply to copyrights (such as no protection to ideas or facts

or underlying information, the idea expression merger doctrine, etc.) would apply in the

case of copyrighted works which are also the subject of broadcast rights. If Parliament

had intended to give protection to facts, “time sensitive information” or events (such as

match information), there would have been conscious protection of those rights by

express provision. Therefore, the exhaustive nature of the regime in Chapter VIII

16


precludes, by its very nature, any claim for protection over and above what is expressly

granted by its provisions. It is worth noticing that broadcasting of the event, for which

broadcasting rights have been created have a restricted term of 25 years, i.e. half of the

term of copyrights. What the appellants seek is the protection of the widest amplitude (in

respect of not preventing reproduction of content of the broadcast), but the facts

underlying the broadcast, is facially untenable. Such rights have long been held to be

barred as they are “similar” to copyright protection (Ref Donaldson v Beckett13 ; Section

31 of the Copyright and Designs Act, as well as Section 46 (5) of the UK Copyright Act,

1956 (repealed) and Section 171 (2) of the UK Copyright Designs and Patents Act,

1988). As a result of the above discussion, it is held that the rights claimed by the

appellants, over and above the broadcasting rights, i.e. to prevent others from publishing

or sharing match information or facts, for irrespective of commercial or non-commercial

use, is precluded by Section 16 of the Copyrights Act; it is also precluded because of the

provisions of Chapter VIII of the said Act. If Parliament had intended such rights to

exist, they would have been enacted, with suitable mechanisms for their enforcement and

effectuation.

1.4. Claims of the appellants hit by Article 19(2) of the Constitution of the India, 1950:

Moreover dissemination of information through instant messaging was in exercise of

their free speech right under Article 19(1) (a) of the Constitution. Their right also

extended to freedom to carry on business in dissemination of information to the public;

both these rights could be restricted through reasonable restrictions enacted through law,

which fell under Article 19(2) and not by common law. Match scores updates are usually

covered under proprietary rights that are not recognized under any law or statute.

Reliance is placed upon Sec.16 of the copyright act 1957 which says that No person shall

be entitled to copyright or any similar right in any work, whether published or

unpublished, otherwise than under and in accordance with the provisions of this Act or

any other law for the time being in force, but nothing in this section shall be constructed

as abrogating any right or jurisdiction to restrain a breach of trust or confidence.

The appellants relied on Time Warner Entertainment Co., L.P. & Ors. v. R.P.G. Netcom

& etc14and Super Cassettes Industries Ltd. v. Mr. Chintamani Rao & Ors15where the

court had held that claim for enforcement of rights beyond the Act can only be in terms

13 ER 837 (1774)114 AIR 2007 Del 22615 2012 (49) PTC 1 (Del)

17


of a law which was in force at the time when the Act was enacted. Common law rights

under copyright law were held to be abrogated by Section 31 of the previous Copyright

Act, 1911.

2. Whether any tort of unfair competition is committed by Neptune Mordor Pvt Ltd against

FreeSports Mordor Pvt Ltd and Moonshine and whether there arise any liability to pay

damages to FreeSports Mordor Pvt Ltd. for unjust enrichment gained by it?

2.1. Interpretation of phrase ‘bouquet of rights’ with respect to ‘mobile rights’: The

Media Rights Agreement defines-Mobile Activation Rights means the right to make

available any form of BCCI-branded schedule; match and score alert and application

exploited via SMS, MMS or any other form of Mobile Communications Technology or

Mobile Wireless Technology; It is clarified that no other form of exploitation would be

permitted such as competition, game, fantasy event, predictor game, application or other

activation which are expressly prohibited. Mobile Rights means the Mobile Activation

Rights and the right to deliver or provide access to the Feed or Footage, the Audio Feed,

any Unilateral Commentary and Unilateral Coverage in the Territory during the Rights

Period, for reception and viewing in an intelligible form on a Mobile Device where the

communication link(s) used in such delivery comprises, at least in part, Mobile

Communications Technology and/or Mobile Broadcast Technology but excluding

Television Delivery and Internet Delivery.

Creating property (or quasi-property) rights in information – which is what the

appellants (Moonshine & FreeSports) request the Court to do in this case –stands to

upset the statutory balance carefully created by the legislature through the Copyright Act.

In a domain where Parliament has stepped in to create a statutory regime, an exercise of

creating „supplementary‟ rights in common law would well result in obstructing the

legislative scheme, as would be the case here. The argument of Moonshine that it is

under a duty (by relying on the Supreme Court judgment in Secretary, Ministry of

Information and Broadcasting)to monetize broadcasting and other rights, and is doing

exactly that, by permitting Star to monetize hot-news by licensing mobile rights is

misconceived, to put it mildly. One can “monetize” or license only that over which one

has property rights. Neither Moonshine nor FreeSports can be permitted to say that

mentioning “mobile” rights and auctioning them, would ipso facto legitimize the

18


parceling away of right to disseminate information, without first establishing that the

right or exclusive domain over such rights existed in the first instance. Similarly, the

appellant’s reliance on New Delhi Television (supra) is of no avail. The Division Bench,

in that case, had to deal with broadcast of sporting events by a news channel. The Court

had to deal with whether the respondent’s conduct amounted to fair use.

In this context, the Court recollects that the Supreme Court has held, when “in our

constitutional scheme … statute monopoly is not encouraged (and) knowledge must be

allowed to be disseminated”, (Entertainment Network India Ltd. v. Super Cassettes

Industries Ltd16.,) it is inapt that the courts create a monopoly over facts which the

Parliament, has deemed fit to exclude from protection under the Copyright Act. The

appellant has not been able to show, in the opinion of the court, how it has proprietary

rights over the facts and information it seeks to protect – even for a limited duration. A

telling aspect of the present case is that the appellant is willing to state that the moment

the event occurs, i.e. any ball is bowled or a wicket falls, the fact or information passes

into the public domain, as far as viewers and subscribers (i.e. both the spectators at the

venue, as well as the tens of millions of television viewers) are concerned. However, it

does not somehow become part of the public domain, if any one or some of them chose

to relay the underlying facts, in the course of commerce. This aspect completely

undermines the appellant’s case about it possessing proprietary rights for very limited

duration, in respect of such facts. For the reasons discussed above, it is held that the

appellant cannot claim any exclusive property or other such rights to injunct the

publication of match information, or hot-news, as claimed by it, irrespective of whether

the object of such third party is to publish such information for commercial gain or

without any such motive.

2.2. No Tort of Unfair Competition Recognized in India: It is submitted that the concept

of unjust enrichment is embodied only in Section 72 of the Contract Act, which extends

to pre-existing contractual or quasi contractual relationships. But in the present case there

is no pre-existing contractual or quasi contractual relationship. Particularly, this

conclusion is supported by a clear rationale: that the doctrine of free acceptance under

the law of unjust enrichment – that an individual who freely accepts the benefits of the

services of another must – on account of such unjust enrichment – restitute the other –

runs into difficulty in copyright claims . This is because a copyright infringer “always

“accepts” the benefit of a copyrighted work” (Nimmer, p. 1-52, emphasis supplied), and

16 2008 (13) SCC 30

19


thus, a claim for copyright infringement would in no way differ qualitatively from an

unjust infringement claim over copyright subject matter that is not covered under the

Copyright Act. Indeed, a contrary conclusion would mean that for all copyright

infringement claims that fail for want of copyright ability, the appellant would also have

– as a means to bypass the exhaustive statutory scheme – a claim for unjust enrichment.

If allowed, this would run counter to the Section 16 pre-emption, which would exclude

the claim of unjust enrichment as well to ensure no protection is granted for facts, ideas

and expressions de hors the Copyright Act.

The second reason why the appellant’s argument on unjust enrichment cannot prevail

here is because even if the claim of unjust enrichment is to be seen on merits, (assuming

that it is not pre-empted by Section 16), such a claim cannot – by definition (with limited

exceptions as noted below) –injunct or prohibit the respondents from disseminating

match information, but rather, only be the basis for a restitutionary award. Importantly,

the property interest claimed by the appellant under the hot news doctrine/doctrine of

unfair competition is conceptually distinct from the claim of unjust enrichment. Whereas

the former (if considered to be a valid claim) provides an interest that injunct the

respondents from disseminating match information (thereby classifying the respondent

actions as wrongful), the latter does not contain any finding of wrongdoing, but rather, is

a purely restitutionary remedy that requires the respondent to return the profit (the

principle being to “disgorge” the respondent of its profits, rather than compensate the

appellant for any right violated).

Most recently, this was accepted by the Supreme Court in Indian Council for Enviro-

Legal Action v. Union of India17, (as the Supreme Court notes, “a person is enriched if

he has received a benefit, and he is unjustly enriched if retention of the benefit would be

unjust”). Equally, the decision relied on by the appellant/respondents, i.e. Mahabir

Kishore, is one example of the restitutionary nature of the unjust enrichment principle

recognized in India, where it is invariably used to recover money. The appellant had paid

over Rs. 54,000/- as “mahua” over and above the auction money to the State

government. This was despite such extraction or recovery having been declared illegal;

the appellant filed a writ petition for its recovery. The Supreme Court upheld the claim,

stating that: “The principle of unjust enrichment requires; first, that the respondent has

been enriched by the receipt of a “benefit”; secondly, that this enrichment is “at the

expense of the appellant and thirdly, that the retention of the enrichment be unjust. This

17 2011 (7) SCALE 768

20


justified restitution. Enrichment may take the form of direct advantage to the recipient

wealth such as by the receipt of money or indirect one for instance where inevitable

expense has been saved…”In all these cases, however, the Court did not have the

opportunity to delve into the question of the precise boundaries of what such „unjust

factors could be. Here, the observations of Lord Goff in Lipkin Gorman v. Karpnale

Limited18, are crucial: “But it does not, in my opinion, follow that the court has carte

blanche to reject the solicitors' claim simply because it thinks it unfair or unjust in the

circumstances to grant recovery. The recovery of money in restitution is not, as a general

rule, a matter of discretion for the court. A claim to recover money at common law is

made as a matter of right; and even though the underlying principle of recovery is the

principle of unjust enrichment, nevertheless, where recovery is denied, it is denied on the

basis of legal principle. It is therefore necessary to consider whether Mr. Lightman’s

submission can be upheld on the basis of legal principle …” In failing to provide any

clear unjust factor, as also in not addressing whether the benefit gained by the

respondents was ,at the appellant’s expense, (both crucial legal requirements for a claim

of unjust enrichment, as opposed to a broad reference to the fairness and justness of the

appellant’s claim), the approach of the Learned Single errs in its findings on this issue.

Thus in the present case too as there is no enrichment at the expense of the appellant

there cannot arise any claim for unjust enrichment.

Sahakari Khand Udyog Mandal Ltd. v. CCE & Customs19, reported at, this Court

elaborated upon the aspect of unjust enrichment thus: Stated simply, “unjust enrichment”

means retention of a benefit by a person that is unjust or inequitable. “Unjust

enrichment” occurs when a person retains money or benefits which in justice, equity and

good conscience, belong to someone else. The doctrine of “unjust enrichment”,

therefore, is that no person can be allowed to enrich inequitably at the expense of

another. A right of recovery under the doctrine of “unjust enrichment” arises where

retention of a benefit is considered contrary to justice or against equity….

In the leading case of Fibrosa v. Fairbairn20, Lord Wright stated the principle thus: “Any

civilised system of law is bound to provide remedies for cases of what has been called

unjust enrichment or unjust benefit, that is, to prevent a man from retaining the money

of, or some benefit derived from, another which it is against conscience that he should

18 [1991] 2 AC 54819 reported at (2005) 3 SCC 73820 (All ER p.135 H)

21


keep. Such remedies in English law are generically different from remedies in contract or

in tort, and are now recognized to fall within a third category of the common law which

has been called quasi-contract or restitution.” The above principle has been accepted in

India. This Court in several cases has applied the doctrine of unjust enrichment.

In Orient Paper Mills Ltd. v. State of Orissa & Ors21. this Court did not grant refund to a

dealer since he had already passed on the burden to the purchaser. It was observed that it

was open to the legislature to make a provision that an amount of illegal tax paid by the

persons could be claimed only by them and not by the dealer and such restriction on the

right of the dealer to obtain refund could lawfully be imposed in the interests of general

public. The law laid down in Orient Paper Mills Ltd. (supra) was quoted with approval

by this Court in Mafatlal Industries Ltd. (supra), and the relevant portion of the said

judgment has been quoted hereinabove.

A reference may also be made to a decision of the Constitution Bench in Godfrey

Phillips India Ltd. & Anr. v. State of U.P & Ors.22 In that case, the constitutional validity

of the Uttar Pradesh Tax on Luxuries Act, 1995 as also other State Acts has challenged

inter alia on the ground of legislative competence of the State Legislatures. The Court

allowed the petition and held that the State Legislatures were not competent to impose

luxury tax on tobacco and tobacco products and the Acts were declared ultra vires and

unconstitutional. In the intervening period, however, tax was collected by the appellants

from consumers and also paid to the State Governments. In certain cases, interim relief

was obtained by the appellants from this Court against recovery of tax and as alleged by

the State Governments, the appellants continued to charge tax from

consumers/customers. The Court held:

It was stated on behalf of the State Governments that after obtaining interim orders from

this Court against recovery of luxury tax, the appellants continued to charge such tax

from consumers/customers. It is alleged that they did not pay such tax to respective State

Governments. It was, therefore, submitted that if the appellants are allowed to retain the

amounts collected by them towards luxury tax from consumers, it would amount to

‘unjust enrichment’ by them. In our opinion, the submission is well founded and

deserves to be upheld. If the appellants have collected any amount towards luxury tax

from consumers/customers after obtaining interim orders from this Court, they will pay

21 reported at AIR 1961 SC 143822 reported at (2005) 2 SCC 515

22


the said amounts to the respective State Governments.” The learned counsel appearing

for the appellants would not dispute the position that the payment made to them by

DFSC also included the element of purchase tax. That being the position and they having

collected the purchase tax on paddy from the buyer, the same has to go to the

government exchequer. If however, such tax was found to be legally not payable after its

collection from the purchaser, it either has to go back to the purchaser from whom it was

collected or has to be surrendered to the State exchequer and a dealer cannot retain it as

otherwise the same will amount to unjust enrichment which is legally impermissible. In

the present case, since the aforesaid purchase tax was collected by the appellants, the

same is now required to be paid back to the State exchequer in terms of the orders.

2.3. No similarity in the services of Neptune and FreeSports Pvt Ltd. thereby no

Existence of Direct Competition Between Neptune Pvt Ltd & FreeSports Pvt Ltd:

The counsel for the respondent contends that they have adopted a particular name for

their application i.e. SUPERDUNK, the trademark MMBL has been used in the

advertisement only to convey that their product/application is suitable for MMBL

matches only. Thus there is no chance of passing off or infringement of the trademark of

the appellant since Neptune Mordor Pvt Ltd is itself a prominently established leading

telecommunication giant in the market and customers recognize its products. There do

not arise any requirement of unjustly riding free on the goodwill or reputation of the

appellant as Neptune Mordor Pvt Ltd already has its reputation established in the market,

Moreover with regard to the contention of the appellant that unfair competition subsist as

Neptune without seeking permission from Moonshine disseminates match information

and causes unfair competition by using the trademark MMBL, the counsel for respondent

would further contend that by virtue of non-similarity between the services of Neptune

Pvt Ltd and FreeSports Ltd there does not exist any direct competition between the two.

Neptune only disseminates match alerts and information through SUPERDUNK mobile

application and does not provide any sort of broadcast through their application.

Moreover mobile application was Neptune’s product based on its original and creative

efforts while on the other hand FreeSports was disseminating the information by

broadcasting the match audio/video through mobiles or other form of communication

modes. Competition would have existed if both the companies had been indulging in

dissemination of information through the same mode. The appellant by raising baseless

allegations only want to monopolize the market and encash upon the unconditional

support/interest of the sport lovers.

23


2.4. No “free-riding” or commercial misappropriation by Neptune Pvt Ltd : Further to

these contentions, Moonshine and FreeSports could legitimately claim broadcasting

rights and copyright over the cinematograph film of the cricket match or audio recording

of the commentary to the extent it is recognized under the Act. Their (the respondent’s)

activity was not the result of “free-riding” because they did not copy the broadcast

content; the actions did not amount to free-riding on the efforts of the appellant as

Neptune’s mobile application did not copy the content of the broadcast or provide access

to audio or visual footage of the broadcast. The appellants contended that they were

legally entitled to disseminate the score updates/match alerts to the public and

consequently generate income. Such information, emanating from the cricket matches

i.e. score updates/match alerts, were, facts over which there cannot be copyright

monopoly23.

The score update had entered the public domain and therefore, could be freely used by

anyone. Finally, the Constitution under Article 19(1)(a) confers upon them the freedom to

disseminate information to the public. It was submitted that for any kind of copyright

protection, or protection akin to those rights, the claimant should show originality

(Servewell Products Pvt. Ltd. & Anr. v. Dolphin24, and Eastern Book Company v. DB

Modak25 which has approved the, modicum of creativity‟ test). The latter judgment was

also used to say that the cricket scores and updates had entered the public. To support the

right to free speech argument, the counsel relies upon Tata Press Limited vs. Mahanagar

Telephone-Nigam Limited & Ors26. where the Court held that “Article 19(1)(a) not only

guarantees freedom of speech and expression, it also protects the rights of an individual to

listen, read and receive the said speech.”

3. Whether using the name of MMBL in the advertisements of SuperDunk causes

Trademark dilution of a well known trademark “Mordor Moonball Basketball League”?

SUIT FOR PASSING OFF: The substantive law of passing off is entirely based on common

law i.e. case law. In an action for infringement of a trade mark, title of the appellant is

established by evidence of registration whereas in a passing off action, title is established by

the evidence of reputation and goodwill of the business acquired by the use of a mark, 23 Victoria Park Racing and Recreation Grounds Co. Ltd. vs. Taylor, 58 CLR 479 (“the Victoria Park Case”) and Feist Publications, Inc. V Rural Telephone Service Co., 499 U.S. 340 (1991) (“Feist”)24 2010 (43) PTC 507 (Del)25 2008 (1) SCC 126 AIR 1995 SC 2438

24


symbol or other badge. The concept of passing off has undergone considerable changes in the

course of time. It is applied to many forms of unfair trading and unfair competition where the

activities of one person cause damage or injury to the goodwill associated with the activities

of another person or group of persons. A classic decision on "passing off" is the case of

Singer Manufacturing Company v. Loog27, when it was held as under: "No man is entitled to

represent his goods as the goods of another man; and no man is permitted to use any mark,

sign or symbols, device or other means, whereby, without making a direct false

representation himself to a purchaser who purchases from him he enables such purchaser to

tell a lie or to make a false representation to somebody else who is the ultimate consumer28."

Thus it is clearly indicated from the above observations that the action in passing off is an

actionable wrong where a person passes off his goods as the goods of another.

DETERMINATION OF PASSING OFF: As per Kerly’s Law of Trade mark & Trade

names, the appellant in an action for passing off has to prove three elements in order to

succeed: First; he must establish a goodwill or reputation attached to the goods or services

which he supplies, in the minds of the purchasing public an association with the identifying

‘get up’ (whether it contains simply a brand name or a trade description, or the individual

features of labeling or packaging) under which his particular goods or services are offered to

the public, such that get up is recognized by the public as distinctive specifically of the

appellant’s goods or services. Secondly; he must demonstrate a misrepresentation by the

respondent to the public (whether or not intentional) leading, or likely to lead the public to

the belief that the goods or services offered by him are the goods or services of the appellant.

The misrepresentation by the respondent, by which he passes off his goods or business as

those of the appellant may be made in any manner whatsoever, whether by using in relation

to his goods a mark which is identical with or a colorable imitation of the trade mark of the

appellant or by using some of the features by which the goods of the appellant are known to

be his or any features color-ably resembling them, in connection with his goods, not being

goods of the appellant or by direct statement or in any other way, in such a manner as

calculated to cause the goods to be taken by ordinary purchaser to be the goods of the

appellant. Thirdly; he must demonstrate that he suffers or, in a ‘Quia timet’ action, that he is

likely to suffer damage, by reason of the erroneous belief engendered by the respondent’s

misrepresentation that the source the respondent’s goods or services is the same as the

27 (1880) 18 Ch.D. 395,28 Followed in the case of Thomas Bear & Sons (India) Ltd. v. Prayag Narain. Yet in an earlier case in Perry v. Truefitt, (1842) 6 Beav 66, Lord Langdale

25


source of those offered by the appellant. The principles granting relief is the quia timet

action with regard to passing off have been laid down: A. Whether it is likely to cause

confusion or to deceive the purchasers as to source or origin of the trade mark or the goods to

be sold in future under the said mark irrespective of the fact whether goods intended to be

sold are competitive goods or not29; B. Whether the intention to use of infringed trade mark

is to trade or cash upon the reputation and goodwill of the appellant earned over the years

through extensive advertisement and huge expenses; C. Whether there is likelihood of real or

tangible damage or injury to the appellant or reasonable probability if the same would take

place. In other words whether use of the trade mark by the respondent is likely to be

associated with the appellant’s trade mark or business; D. Whether the hardship sufficient

suffered by the appellant would be greater than that of the respondents if injunction is not

granted against the respondents30.

In passing off the appellant has to prove that the features of the offending trade mark are such

that the customers would be confused into buying the goods/services of the respondent

believing that they are the goods/services of the appellant. Here the onus is on the owner to

prove that the offending mark is causing confusion in the market as to the origin of

goods/services bearing the trade mark or that there is a likelihood of deception 31. In Erven

Warnink B.V. v. J. Townend & Sons (Hull) Ltd32., Lord Diplock stated the essential

characteristics of a passing off action as under:

"(1) misrepresentation, (2) made by a person in the course of trade, (3) to prospective

customers of his or ultimate consumers of goods or services supplied by him (4) which is

calculated to injure the business or goodwill of another trader (in the sense that this is a

reasonably forseable consequence and (5) which causes actual damage to a business or

goodwill of the trader by whom the action is brought or (in a quia timet action) will probably

do so."

29 Lego System Aktieselskab and Anr. v. Lego M. Lemelstrich Ltd., Fleet Sheet Reports (1983); The Dunlop Pneumatic Tyre Co. Ltd. v. The Dunlop Lubricant Co., 1899 (16) RPC 12; Surjit Singh v. Almbic Glass Industries Ltd., ; Essel Packaging Ltd. and Ors. v. Essel Tea Exports Ltd., 1999 PTC (19) 521 ; Banga Watch Company v. N.V. Philips and Anr., Bata India Ltd. v. Pyare Lal & Co. and Ors., ; C.A. Shimer (M.) SDN BHD, 2000 RPC30 Tube Investments of India ltd v. BSA-regal group ltd 2010(42) PTC 493 (Mad-DB); Mars Incorporated v. Kumar Krishna Mukherjee, 2003 (26) PTC 60 (Del) 31 Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors 2003(26)PTC1(Del)32 1980 RPC 31

26


The essentials of passing off action as stated in Halsbury's Laws of England Vol. 38 (3rd

Edition) para 998 as reproduced below are worth noting: "Essentials of the cause of action.

The appellant must prove that the disputed name, mark, sign or get up has become distinctive

of his goods in the sense that by the use of his name or mark, etc in relation to goods they are

regarded, by a substantial number of members of the public or in the trade, as coming from a

particular source, known or unknown; it is not necessary that the name of the appellant's firm

should be known.....The appellant must further prove that the respondent's use of name or

mark was likely or calculated to deceive, and thus cause confusion and injury, actual or

probable, to the goodwill and the appellant's business, as for example, by depriving him of

the profit that he might have had by selling the goods which ex hypothesis, the purchaser

intended to buy. Thus, the cause of action involves a combination of distinctiveness of the

appellant's name or mark and an injurious use by the respondent of the name or mark or a

similar name or mark, sign, picture or get-up does or does not amount to passing off is in

substance a question of evidence; the question whether the matter complained of is likely to

deceive is a question for the Court."

RECENT TEST LAID BY SUPREME COURT: In Heinz Italia v. Dabur India33, the

Supreme Court has reiterated the tests which courts should adopt while determining whether

the respondent has “passed off” his goods or products as the appellant’s as were laid down in

Cadila Health vs. Cadila Pharma 34 B.N KIRPAL J. broadly stated 7 factors to be

considered for deciding the question of deceptive similarity in an action of passing off of

unregistered trade mark on the basis of:

(a) The nature of the marks i.e. whether the marks are word marks or label marks or

composite marks, i.e. both words and label words.

(b) The degree of resemblances between the marks, phonetically similar and hence similar in

idea.

(c) The nature of the goods in respect of which they are used as trademarks.

(d) The similarity in the nature, character and performance of the goods of the rival traders.

(e) The class of purchasers who are likely to buy the goods bearing the marks they require,

their education and intelligence and a degree of care which they are likely to exercise in

purchasing or using the goods.

(f) The mode of purchasing the goods or placing orders for the goods and

33 (2007) 6 SCC 134 2001 PTC 300(SC)

27


(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity

between the competing marks. The weight-age to be given to each of the aforesaid factors

depends upon facts depends upon facts of each case and the same weight-age cannot be

given to each factor in every case.

3.1. No Deception Caused: The Act, as existing is not explicit about dilution- it does not

refer to that term. Yet, the entire structure of Section 29(4) is different from the earlier

part, and in effect expresses Parliamentary intent about the standards required for a

appellant to establish dilution of its trademark, in relation to dissimilar goods or

products. This is because: (1) The “likelihood of Confusion” test which is the essential

basis of Trademark law, is not incorporated in relation to infringement of the kind

Section 29(4) envisions. Section 29(1) – which talks of trademark infringement,

generally, prescribes that the impugned mark should be “identical with, or

deceptively similar to the registered trademark. Section 29 (2), (which deals with

trademark infringement) enacts that the impugned mark should be similar or identical

with the registered mark, as to cause confusion in relation to similar goods.

The emphasis on similar goods is the recurring theme in each of the sub clauses ((a), (b)

and (c)) and the identity/ similarity requirement along with the similarity of goods are

twin, conditions (established by the use of the conjunctive “and”). However, Section 29

(4) posits identity or similarity of the mark alone but, in relation to dissimilar goods.(2)

The object of the “dilution” form of infringement (under Section 29(4)) in effect, is a

wider trademark protection without the concomitant likelihood of confusion

requirement, as it is in respect of dissimilar or unrelated products and services.(3) The

confusion requirements under Section 28 are different from those under Section 29 (4).

Section 29 (4) does not refer to the need for proving confusion anywhere in the relevant

portions. Obviously the emphasis here is different.(4) The appellant has to establish,

under Section 29 (4) apart from the similarity of the two marks (or their identity) that his

(or its) mark –(i) has a reputation in India;(ii) the use of the mark without due

cause(iii) the use (amounts to) taking unfair advantage of or is detrimental to,

the distinctive character or repute of the registered trade mark.(5) Importantly, there is

no presumption about trademark infringement, even if identity of the two marks is

established, under Section 29 (4). In contrast, Section 29 (3) read with Section 29 (2) (c)

enact that if it is established that the impugned mark’s identity with the registered trade

mark and the identity of the goods on services covered by such registered trade mark is

likely to cause confusion on the part of the public, or which is likely to have an

28


association with the registered trade mark, ―the court shall presume that it is likely to

cause confusion on the part of the public."Thus, in Daimler Benzaktiegesellschaft & Anr.

v. Eagle Flask Industries Ltd., ILR (1995) 2 Del 817 this court held that:There are marks

which are different from other marks. There are names and marks which have become

household words. Mercedes as name of a Car would be known to every family that has

ever used a quality car. The name 'Mercedes' as applied to a car, has a unique place is the

world. There is hardly one who is conscious of existence of the cars/ automobiles, who

would not recognize the name 'Mercedes' used in connection with cars. Nobody can

plead in India, where 'Mercedes' cars are seen on roads, where 'Mercedes' have

collaborated with TATAs, where there are Mercedes Benz—Tata trucks have been on

roads in very large number, (known as Mercedes Benz Trucks, so long as the

collaboration was there), who can plead that he is unaware of the word 'Mercedes' as

used with reference to car or trucks. In my view, the Trade Mark law is not intended to

protect a person who deliberately, sets out to take the benefit of somebody else‘s

reputation with reference to goods, especially so when the reputation extends worldwide.

By no stretch of imagination can it be said that use for any length of time of the name

'Mercedes' should be not, objected to. We must keep in mind that the appellant company

exists in Germany. An insignificant use by too small a product may not justify spending

large amounts needed in litigation. It may not be worthwhile. However, if despite legal

notice, any one big or small, continues to carry the illegitimate use of a significant

worldwide renowned name/mark as is being done in this case despite notice dated 04-07-

1990, there cannot be any reason for not stopping the use of a world reputed name.

None should be continued to be allowed to use a world famed name to goods which have

no connection with the type of goods which have generated the worldwide reputation.In

the instant case, 'Mercedes' is a name given to a very high priced and extremely well

engineered product. In my view, the respondent cannot dilute that by user of the name

Mercedes with respect to a product like a thermos or a casserole. The observations have

been assimilated in case law, by the courts in India, and applied, wherever trademark

dilution was alleged35.

3.2. Mobile Application made was a free application thus no “Free riding” committed

on the part of Neptune: Neptune’s mobile application was a free downloadable

application and it was not charging its targeted audience any price to pay for the 35 Ref Larsen & Toubro Limited v. Lachmi Narain Traders, ILR (2008) 2 Del 687, Sunder Parmanand Lalwani and Ors. v. Caltex (India) Ltd., AIR 1969 Bom 24; Bata India Ltd. v. M/s. Pyare Lal & Co. Meerut City and Ors. AIR 1985 All 242; Kiriloskar Diesel Recon (P) Ltd. v. Kirloskar Proprietary Ltd., AIR 1996 Bom 149

29


application thus it is itself evident that had Neptune had the intention to free-ride on the

goodwill of Moonshine they would have definitely charged a price for downloading their

application but this was not the case. Instead, they relied on the quality of their own

product which subsequently became a rage. Thus whatever profits are earned by Neptune

trademark MMBL had no role to play. In New Delhi Television Ltd. v. ICC

Development (International) Ltd. & Anr36., “Therefore, it is amply clear that the

dissemination of the ball-by-ball or minute-by-minute updates at a premium cannot be

exonerated under the freedom of speech and expression as guaranteed under Article

19(1)(a). Meanwhile, all noteworthy information arising from a cricket match constitute,

news, and the, reporting of such noteworthy information would be protected under

Article 19(1)(a).”

3.3. The Class of ‘SuperDunk’ application users were not the targeted audience of

Moonshine Pvt Ltd: The targeted audience of FreeSports and the targeted audience of

Neptune Pvt ltd were different, FreeSports targeted the audience who were mainly the

match viewers who wanted to see the broadcast of the live feed of the match whereas

Neptune’s targeted audience were those who by virtue of their routine/schedule/work or

other reasons were unable to see the feed but still wanted to keep themselves updated

about the match information. Thus those who had the direct feed of the match by

watching the broadcast and would not have used the “SuperDunk” application as the

application only provided alerts and similarly ONLY those who did not had the time to

watch the live feed would have used the SuperDunk mobile application. Hence

FreeSports and Moonshine’s claim that Neptune has unjustly enriched itself is baseless

as EVEN If there wouldn’t have existed such application, Both Moonshine and

FreeSports would have failed to cater the needs of those who did not had the time to

watch the live feed as both Moonshine and FreeSports were only indulged in

Broadcasting of the match feed.

3.4. Trade Mark was not used on a “STAND ALONE” basis: Neptune did not used the

trademark MMBL as the name on its product but it used the Trademark only on the

advertisement posters which was used only to convey that their product was suitable for

MMBL matches, moreover the trademark was not used on a ‘standalone’ basis so as to

hijack the market or goodwill of Moonshine Pvt Ltd but the application was riding on its

36 FAO (OS) 460/2012

30


own company’s reputation in the market as Neptune Pvt Ltd was itself a giant

telecommunication company.

Prayer

Wherefore in the light of the issues raised, arguments advanced and authorities cited, it is

humbly requested that this Honourable Court may be pleased to adjudge and declare:

THAT, there does not lay any copyright protection in information emanating out of a match.

THAT, no tort of unfair competition is committed by Neptune Mordor Pvt ltd against FreeSports Mordor Pvt ltd. & thereby is not liable to pay any damages for unjust enrichment.

31


THAT, using the name of MMBL in the advertisements of ‘SuperDunk’ does not causes

trademark dilution of a well known trademark “Mordor Moonball basketball league”

And pass any such order, writ or direction as the Honourable Court deems fit and

proper, for this the Respondents shall duty bound pray.

ALL OF WHICH IS RESPECTFULLY SUBMITTED

COUNSEL FOR THE RESPONDENTS

32

Jamia Moot Memo - R

Documents

Transcript of Jamia Moot Memo - R