(Zidd (Urdu/Hindi word) = insistence, persistence or doggedness.)

Judgments, especially of higher courts, are juggernauts capable of jamming future judgments of the lower courts (and sometimes even the similar stature courts). Aren’t they? After all, this is how Stare Decisis works in common law countries – precedents possess legal piety. Once pronounced, laden with the legal load, judgments are interspersed with logico-legal interpretations/deductions tied with facts – and get us to meet the creature of “legal reasoning”, which in turn influences the final decision. Here, we get a new “judgment” aka “precedent”, which fates future judgments on similar issues. This goes on until one judgment day another judgment of a higher court discards the previous precedent/legal reasoning (adopting another) and gives us a new rule to follow. A sorry story? Isn’t it?

Being such a lode of law, it is incumbent upon us to check if there exists a hidden or underlying assumption. Arthur L. Goodhart made an apposite remark “The logic of the argument, the analysis of prior cases, the statement of historical background may all be demonstrably incorrect in a judgment but the case remains a precedent nonetheless.”  (E.g. Read Prashant Reddy’s piece, doubting the decision of DU Photocopy case, which is oft called a good law).

Why all this? – The recent Delhi High Court decision in Bright Lifecare Pvt. Ltd Vs Vini Cosmetics Pvt. Ltd. & Anr, is one such judgment, which I believe, to have adopted an ambiguated view on copyright and trademark protection of campaign frames, but will be followed nonetheless. Essentially, it did two things – 1.) separately protected the frames of an advertising campaign (i.e. cinematography work in copyright langue) and 2.) provided Trade Mark protection to Ziddi (which was not registered separately) against different goods solely on the basis how the creativity of the campaign without querying or clarifying the goodwill of the creative campaign. As a cherry on the (plaintiff’s IP) cake, it even gave passing off remedy without discussing the underlying trinity test and checking if the plaintiff’s a mark/work had goodwill. Those interested to read the case can see Facts (pp 1-10), Arguments (11-15), Analysis & Findings (15 – 35), and remedies to the plaintiff (36).

Simple facts and not-so-simple Issues

MuscleBlaze (plaintiff) sued Realman (defendant) for using the term “Ziddi” with their product and copying their campaign that glorifies the “Ziddi” trait. Notably, the former used the word “Ziddi” (in slogans, not individually/directly) in its protein campaign called “Ziddi Hu Main” and the latter used it for its perfume called “Ziddi Perfume”.  But – neither party used ‘Ziddi’ as a trademark for the product, instead, they used it in a descriptive sense.

While MuscleBlaze showed how “Ziddi” one needs to be for sports and athletics (so, not about the product!), Real Man showed how Ziddi your perfume/deodorant should be if you are doing hard physical work (apparently, about the product!). The Court acknowledged the descriptive and laudatory nature of the term and held that Realman has “substantially copied” the Plaintiff campaign and certain frames therein. Thus, it ordered Realman to pull down its campaign videos, but at the same time allowed it to use Ziddi in different ways. (Those interested in watching and comparing these videos can see them on YouTube on other channels by typing their names in the search bar. MuscleBlaze “Ziddi” videos can be watched here.)

More than an analysis of the case, this is more about my observations of judicial reasoning.

 Observations

Prima facie, while reading the judgment, everything seems fine and up to place. But if one digs deeper one would be able to see some assumptions and uncritical acceptance lying therein.

I. IP protection on the campaign, just that? – The court casually uses the term “IP protection” as if it is a monolithic subject having a singular function and purpose. Untrue and incorrect, that is. To me, whether a campaign is protected by IP law is a vague query that would (in)directly result in a vague/skewed settlement of the issue. Because – it comes with two false assumptions that – (i) IP is one law that provides similar protection to all the subject matters, and (ii) – if not one law, various IPs can provide protection simultaneously to the same subject matter. Here, the query that if a campaign is IP protected suggests that IP would protect the whole campaign similarly and singularly, and various IPs i.e. copyright and trademark would provide simultaneous protection. (read more on what lies beneath “IPR” here and here)

A campaign can have various elements protected by different IPs – the campaign can be copyright protected as a cinematography work and through its underlying works. The mark/word “Ziddi” (and its related slogans) can be proceeded under trademark or through the common law remedy on the protection of goodwill. Hence, the Court’s query is, in the first place, questionable. This casual/uncritical/uncategorized conceptualization of the issue is apparent in the whole judgement which primarily resolves around lay/ordinary observer test and substantially similarity.

II. Carried Confusion – For uninitiated readers, the lay/ordinary observer test can be relevant in both trademark and copyright cases. But here lies the rub – while ordinary/lay observer can be relevant to almost any trademark case, the same is not true for copyright cases. In copyright cases, this test (which ultimately undergirds substantial similarity) depends upon the kind of work involved in a case. If the work is literary, artistic, dramatic, or computer program – it can be directly applied. But if a case involves cinematography work or sound recording, then this a different case because various Courts have taken varied stands in this regard.

Some courts use the “physical/actual copy doctrine” in cinematography works. They require exact copying of the work and make “substantial copying” inapplicable to cinematography works (i.e. infringements happen only when the exact visual recording or a photograph from that is copied). These courts reason that Section 14(d) provides different and limited rights to the authors of cinematography work (i.e., producers) than other authors of other work (e.g., literary, artistic, etc.). Thus, they divide Section 14 into two parts, having different levels of protection and rights – Section 14(a), (b), (c) on one side and 14(d) and (e) on the other.

Whereas the courts who reject “physical/actual copy doctrine” on the ground of narrow interpretation of “copy(ing)”, believe that “copying” is the same for all work, and substantial copying is aptly applicable. Per them, Section 14 provides similar protection to all the works. (See my earlier related post on this issue here and Rajnish Kumar Singh’s short piece explaining the varying stands of Courts here).

The present case seems to fall in the former category which assumes Section 14 to be the same for all the works, hence, rejecting the physical copy doctrine.

The following table presents the current contrary stands of the Courts in India :-

Following this casual conceptualization of IP Protection, the Court nicely captures the feel of the plaintiff as to how creative and unique it was in expressing the idea of Ziddi in its campaign. Using various cases and pasting relevant excerpts (a lot of them!), the Court (essayed to) explain the applicability of the idea-expression distinction and how much importance the principle holds in this case. But in expressing “idea-expression” and its importance, the Court overlooks that mere expression of an idea (though copyrightable) does not result in goodwill!

III. Idea -expressions and their dashing dichotomy – In my opinion, the facts of the case and issue therein did not demand such detailing. In fact, the idea-expression dichotomy is the easiest way to sway the decision of the Court because it can be tilted in any way a judge wants. On the surface, the principle is simple which says only expressions are protected and not ideas. But (emphasized) there is more abstraction that stays underneath the whole narration, and it is the judge who decides what that narration is and how it should be narrated.

While discussing the legal reasoning of English judges in environmental cases, Leonor’s paper raises a ringing question “How do English judges approach environmental cases? Are they treated as a ma of ‘wrongs’ or a matter of rights?”. I find its relevance in IP law cases as well! After all, it is the judge whose understanding of IP and IP laws shapes disputes. I am in no way bringing the binary of pro-IP and  anti-IP, rather, I am emphasizing the understanding of IP as a norm or exception. Ideologies do matter in legal adjudications (read Duncan Kennedy’s two relevant pieces of adjudications here and here). Regarding the idea-expression dichotomy – Sreyoshi Guha has highlighted the nesting nature of this principle in her post, relying on this research paper.

In sum, it should undoubtedly be appreciated that Court has given multiple cautions that there should be a higher threshold while protecting campaigns etc. But this appreciation shouldn’t be on the cost of an(y) overlooking – a direct application of the R. G. Anand case (i.e. checking substantial similarity) without any engagement/explanation of its contentious applicability in cinematography works, raises questions as to whether the issues (both legal and policy) were understood properly.

IV. Ziddi, goodwill, and Protection – The lay observer test, perhaps, make more sense in this issue. The court explains and clarifies that slogans and the goodwill of the campaign are protected. Yes, agreed, they can be! But did Plaintiff prove goodwill and did the court discuss the trinity test while protecting campaign frames? No, at least nowhere, in the text of the Judgment. Trinity test is – 1.) if plaintiff mark or campaign acquired. Goodwill, 2.) whether the defendant misrepresented (and 3.) if there is any likelihood of damage. While all these points have to be proved, goodwill is determining factor.

Firstly, just because an idea is expressed creatively/uniquely … (as the court said) and has 1-2 crore viewers (as the Court says in para 3) – does not automatically turn into an acquirement of goodwill. Although the court did note that “ . . . in law, an advertising campaign, if it signifies the source and has become distinctive of the Plaintiff, can be granted protection. The threshold for establishing distinctiveness would however be quite high” (Para 42), yet, nowhere did it explain how “threshold” is met in the present case, and when/how the plaintiff’s “Ziddi” campaign got that distinctiveness and goodwill. A relevant analogy can be drawn from Madras High Court’s Ashok Leyland case where it was said that “Turnover is only an indication of success and success need not necessarily be an indication of goodwill and reputation.” So, mere 1-2 crores views do not mean it has got goodwill. Moreover, the plaintiff and defendant are not competitors and “Ziddi” is owned by ‘neither’, the burden of proving goodwill should have been even higher. Here’s Allahabad High Court’s obvious observation in Thomas Bear – “if the goods in which the plaintiff deals are different from the goods to which the defendant attaches the mark, the unwary purchaser is not likely to be misled into the belief that the defendant’s goods are the goods of the plaintiff’s manufacture.”

As an aside, it is noteworthy that passing off is not limited to goods or services, but can also be applied to goodwill and reputation. Reliance can be placed on Zee Entertainment and Leo Burnett. A more specific case regarding passing off involving copyrighted work is Samuelson v. Producers’ Distributing Co. Ltd. [1932] which is concerned with the plaintiff in a stage sketch.  On a separate note, please note that there is a difference between goodwill and reputation – read Shreyanshi Guha’s post and the cases she relied on.

Concluding thoughts

While the case is good at giving enough cautions and disclaimers about the protection of campaigns, it could have been clearer on certain points. Although not an extraordinary case, this is a really relevant case for somebody working on or interested in the romanticization of authorship and originality and its impact on the outcome of the case. Regardless of its flaws and strengths, it will shape Indian IP jurisprudence and will likely stop or at least make people think twice before campaigning for their products. Surely, people would not dare to create any campaign on sports activities.

(Is it internal censorship? perhaps!)

This article was first published on IPRMENTLAW