Infringement in different works, groundless threats, slander of title and appeals

1. One test, six applications

Every infringement claim asks two questions: did the defendant copy (directly or indirectly), and did he take a substantial part, judged by quality rather than quantity? But section 14 gives each class a different bundle of rights, so what counts as an infringing act depends on the class. A literary work can be infringed by adaptation or translation; a sound recording cannot. A film is infringed by making a “copy”, a word whose reach is disputed. The answer should therefore always name the class first.

2. Literary and dramatic works

• Literal and non-literal copying. Copying the words is easy to see. The harder case is taking the plot, structure and sequence of incidents. In R.G. Anand v. Delux Films, 1978 INSC 138, the Supreme Court held that a common theme is free, but that infringement is shown if a viewer, after seeing both, gets the clear impression that one is a copy of the other. Learned Hand J.’s “abstractions” approach in Nichols v. Universal Pictures (US Court of Appeals, Second Circuit, 1930) makes the same point: as one moves from the text towards the general idea, protection fades.
• Adaptation and translation. Turning a novel into a play, a play into a film script, or a book into another language infringes under section 14(a)(v) and (vi), even if no sentence is copied.
• Compilations. Only the original selection and arrangement is protected, so taking the underlying facts is not infringement; copying the editorial work is (Eastern Book Company v. D.B. Modak, 2007 INSC 1266).
• Computer programmes. Literal copying of code is clear. For non-literal copying, US courts filter out ideas, functional elements and public domain material before comparing (Computer Associates v. Altai, Second Circuit, 1992). The CJEU held in SAS Institute v. World Programming (2012) that the functionality of a program, its programming language and data file formats are not protected expression. Indian courts have not yet settled a test; the US and EU approaches are the reference points.

3. Musical works

The music is compared, not the lyrics (which are a separate literary work). Copying may be unconscious: in Francis Day & Hunter v. Bron (Court of Appeal, 1963), the court accepted that subconscious copying can infringe, though it was not proved on the facts. Recent US cases show how far the protection goes: Williams v. Gaye (Ninth Circuit, 2018) upheld a verdict that “Blurred Lines” infringed, which critics said protected a style or feel; Skidmore v. Led Zeppelin (Ninth Circuit en banc, 2020) took a narrower line, refusing protection to common musical building blocks. An answer can use these to show the risk of protecting a genre.

4. Artistic works and architecture

• Change of dimension. Since 2012 section 14(c)(i) says reproduction includes depicting a two-dimensional work in three dimensions and a three-dimensional work in two. A toy made from a cartoon drawing can therefore infringe.
• Functional objects. Section 52(1)(w) makes it lawful to make a three-dimensional object from a two-dimensional artistic work, such as a technical drawing, for the industrial application of a purely functional part of a useful device. This keeps engineering drawings from giving a back-door monopoly over spare parts.
• Public art. Painting or photographing a sculpture or work of artistic craftsmanship permanently in a public place is permitted (section 52(1)(t)), as is its inclusion in a film (section 52(1)(u)).
• Architecture. Copying a building infringes, but once construction has begun no injunction or demolition order can be obtained (section 59). Reconstructing a building to its original plans is permitted (section 52(1)(x)).

5. Cinematograph films

Section 14(d)(i) gives the right “to make a copy of the film”, including a photograph of any image in it. Straightforward piracy (duplicating discs, uploading the film, recording it in a cinema) plainly infringes. The Cinematograph (Amendment) Act, 2023 added a separate offence of recording a film in a cinema without authorisation. The disputed question is whether a re-shot film that imitates another infringes the film copyright (as distinct from the script). Star India v. Leo Burnett (Bombay High Court, 2003) said no: only an actual copy of the recording infringes. MRF Ltd. v. Metro Tyres Ltd. (Delhi High Court, 2019) said yes, if the second film is substantially similar. The underlying works (story, script, music) remain separately protected under section 13(4) either way.

6. Sound recordings

The right is “to make any other sound recording embodying it” (section 14(e)(i)). Duplicating the recording infringes; a new performance of the same song by other musicians does not infringe the sound recording, though it needs a licence for the underlying music and lyrics or the cover version licence in section 31C. Sampling a few seconds of a track takes part of the recording itself, so the question is substantiality. The CJEU in Pelham v. Hütter (2019) held that even a very short sample reproduces the phonogram, unless it is used in a modified form unrecognisable to the ear.

7. Groundless threats (section 60)

A copyright owner may try to kill a rival’s business by writing to its distributors and customers. Section 60 gives the person aggrieved a remedy. Where a person claiming to be owner threatens another, “by circulars, advertisements or otherwise”, with proceedings for alleged infringement, the aggrieved person may sue for:

• a declaration that the alleged infringement was not in fact an infringement of the threatener’s rights (the section expressly overrides section 34 of the Specific Relief Act, 1963, which would otherwise limit declaratory suits);
• an injunction against continuing the threats; and
• damages for loss caused by the threats.

The proviso is the key: the section does not apply if the threatener, with due diligence, commences and prosecutes an infringement action. The remedy thus forces a party who makes threats to sue or stop. The plaintiff need not prove malice. Similar provisions exist in the Patents Act (section 106), the Trade Marks Act (section 142) and the Geographical Indications Act (section 73). The UK has codified its threats rules for patents, trade marks and designs in the Intellectual Property (Unjustified Threats) Act, 2017, which protects communications to primary infringers and permitted communications; copyright in the UK has no threats provision at all.

8. Slander of title

Slander of title is a species of the common law tort of malicious (or injurious) falsehood. It protects a person’s title to property, including intellectual property, against false statements made to others. The plaintiff must prove:

1. a false statement about the plaintiff’s title or goods (for example, that his books are pirated copies, or that he has no right to publish);
2. publication of it to third parties;
3. malice, meaning knowledge of falsity, recklessness, or an improper motive; and
4. damage. At common law special damage had to be shown; in England section 3 of the Defamation Act, 1952 removed that need where the statement is likely to cause pecuniary damage. Indian courts apply the common law, so actual loss should be pleaded.

The two overlap where an owner falsely tells the trade that a rival infringes. Section 60 is easier to use; slander of title is wider, because it also reaches false statements that are not threats of proceedings, and statements made by someone who does not claim to be the owner.

9. Appeals

• From the Registrar of Copyrights. The substituted section 72 (Tribunals Reforms Act, 2021) gives an appeal to the High Court within three months from any final decision or order of the Registrar, heard by a single Judge, with a further appeal to a Bench within three months. Time taken to get a certified copy is excluded.
• Rectification of the Register of Copyrights now lies to the High Court (section 50).
• From the Commercial Court (licences, assignments, tariffs and infringement suits of the specified value): appeal to the Commercial Appellate Court or Commercial Appellate Division under section 13 of the Commercial Courts Act, 2015, within sixty days. Of the interlocutory orders, only those listed in Order XLIII of the Code of Civil Procedure are appealable.
• Interim injunctions: the appellate court interferes only if the discretion was exercised arbitrarily or on wrong principles (Wander Ltd. v. Antox India, Supreme Court, 1990).
• Criminal cases: ordinary appeals and revisions under the Bharatiya Nagarik Suraksha Sanhita, 2023.

The Delhi High Court framed the Intellectual Property Rights Division Rules, 2022 to handle the work that came to it from the IPAB, and the Madras High Court has a similar division.

How this is examined

For “infringement of copyright in different works”, take each class with its section 14 right, one test and one case. A short note on “groundless threats” needs section 60, its three reliefs and the proviso; on “slander of title”, give the four elements and the contrast table. For “appeals”, write the pre-2021 position in one sentence and then the present routes.