1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.1648 OF 2007 IN SUIT NO.1253 OF 2007 Zee Entertainment Enterprises Ltd. ..Plaintiff V/s. Mr.Gajendra Singh & Ors. ..Defendants Mr.Janak Dwarkadas, Senior Counsel with Mr.Rahul Chitnis with Mr.Ankit Lohia and Mr. Ranjit Shetty i/b. PDS Legal for the Plaintiff. Dr.Veerendra Tulzapurkar, Senior Counse with Mr.Amit Jamsandekar with Mr. Darius Dalal with Ms. Hemlata Marathe with Ms. Rashmi Thakur i/b. Jehangir Gulabbhai & Bilmoria & Daruwalla for Defendant No.1. Mr.Ravi Kadam, Advocate General with Mr.Virag Tulzapurkar, Senior Counsel with Mr. Sanjay V. Kadam with Mr. Vishal Kanade with Ms. Shobha Khavnekar i/b.M/s. Kadam & Co., for Defendant No.3. CORAM : S. J. VAZIFDAR, J. DATE OF RESERVING THE JUDGMENT : 23 rd AUGUST, 2007 DATE OF PRONOUNCEMENT : 8TH OCTOBER, 2007 ORAL JUDGMENT : 1. Defendant No.2 is one Ms.Karuna Raju Samtani and Defendant No.3 is Star (India) Limited. 2 2. The suit is filed for a perpetual injunction restraining the Defendants from infringing the Plaintiff's copyright in the literary work and cinematograph film embodying the television game show “Titan Antakshari” being broadcast on its television channel “Zee” since September, 1993 inter-alia by Defendant No.3 broadcasting the television game show “Antakshari – The Great Challenge”. The Plaintiff has also sought an order restraining the Defendants from making and broadcasting the television game show “Antakshari – The Great Challenge” and/or using the content and/or presentation and/or the word “Antakshari” in relation to any television game show so as to pass off such show as being a television game show associated with and/or authorized by and/or having any connection with the Plaintiff's game show “Titan Antakshari”. Finally the Plaintiff has sought damages and an order for delivery up and destruction of the infringing material. The Plaintiff's case : 3. The Plaintiff claims to be one of India's largest entertainment companies with its operations spread across several 3 countries in the world engaged inter-alia in content and broadcasting including film production and distribution consisting of production, activation and distribution of films and programmes and aggregation of TV software and syndication, MSO Operations, distribution of satellite channels and internet over cable. The Plaintiff claims to be well-known throughout the country and in large parts of the world. Defendant No.2 carries on business of production of programmes and serials for television channels. Defendant No.3 carries on inter-alia similar business as that of the Plaintiff. 4. With effect from 23.7.1992, Defendant No.1 was employed by the Plaintiff under a contract of service on the terms and conditions stipulated in an appointment letter dated 22.6.1994. Though Defendant No.1 is designated therein as a “Consultant”, his engagement with the Plaintiff was under a contract of service and not a contract for service. Thereafter, by a letter dated 1.4.1999, the Plaintiff appointed Defendant No.1 as Programmer Director on the terms and conditions stipulated therein. 5. There is no dispute between the parties that with effect from 1.4.1999, Defendant No.1 was engaged by the Plaintiff under a 4 contract of service. The dispute between the parties is whether between 23.7.1992 and 1.4.1999, Defendant No.1 was engaged by the Plaintiff under a contract of service or whether his engagement constituted a contract for service. According to the Plaintiff, Defendant No.1 was under a contract of service with the Plaintiff since inception. According to the Defendants, the engagement by the Plaintiff of Defendant No.1 constituted a contract for service from inception till 1.4.1999. 6. During the course of his employment with the Plaintiff, Defendant No.1 in consultation with other senior employees and the Plaintiff's programming team originated the format of a television game show titled `Antakshari' and reduced the same to writing in the form of a concept note. The show was to be a departure from the traditional Antakshari game; the concept note is a literary work within the meaning of the Copyright Act, 1957 and the Plaintiff had and has the exclusive right to reproduce the same and to issue copies of the works to the public. 7. The concept note was converted into a game show and filmed on betacam cassettes which were shown to various sponsors . 5 In September, 1993, the programme commenced on the Plaintiff's TV channel “Zee TV” and was known as “Close Up Antakshari” as Hindustan Lever Limited had sponsored the same for its toothpaste Close Up. The sponsorship continued upto 2002 with only a four month break in between. Thereafter the show was known as “Sansui Antakshari” in view of the new sponsor. The telecast of the programme under the sponsorship of Sansui continued till about 17.6.2005 on the Plaintiff's channel. Thereafter with effect from 5.1.2007, the Plaintiff restarted the TV game show as “Titan Antakshari” and the same continues as such to date. 8. The Plaintiff's programme is telecast on Fridays and Saturdays of every week for half an hour. The Limca Book of Records states that the Plaintiff''s game show holds a record of being the longest continuous show of Indian TV, holding the longest sponsor deal of ten years between the Plaintiff and Hindustan Lever Limited, the largest period of direction by a single Director namely Defendant No.1 and for being the only weekly show hosted continuously by a single host, one Annu Kapoor. 9. In January, 2007, the Plaintiff was given to understand 6 that Defendant Nos.1 and 2 were producing an identical TV game- show titled Antakshari and that Defendant No.3 was exploiting the same on its TV channel “Star One”. In February, 2007, Defendant No.3 commenced broadcasting the show titled “Antakshari – The Great Challenge” on Fridays, Saturdays and Sundays every week for one hour on each of the days. 10. According to the Plaintiff, the Defendants have copied the Plaintiff's game show in all material respects except in respect of two rounds. The difference is merely cosmetic. The basic concept and form has been slavishly copied by the Defendants from the Plaintiff's game show. The game show telecast by Defendant No.3 is also directed by Defendant No.1 who is aware of the Plaintiff's rights. 11. The Plaintiff contends that it is the owner of the copyright in the literary work and the cinematograph film embodying the television game show and is entitled to exclusive use thereof and/or to licence the same; the Plaintiff has not in fact licenced or assigned its rights in respect of the game show to any one including the Defendants and that the Defendants have therefore, infringed the Plaintiff's said copyrights. The Plaintiff has also alleged that the 7 Defendants have, by slavishly copying the content and presentation of the Plaintiff's television game show passed off their television show “Antakshari – The Great Challenge” as that of the Plaintiff's game show. 12. The Plaintiff filed the above suit on 18.4.2007 and took out the above Notice of Motion for the usual interim reliefs. The Plaintiff made an ad-interim application in the above Notice of Motion on 19.4.2007. At the request of Defendant No.3, the matter was adjourned to 30.4.2007. By an order dated 6.6.2007, the Notice of Motion was ordered to be heard finally on 22.6.2007. 13. The Defendants have apart from denying the Plaintiff's case, also challenged the maintainability of the suit. I will consider the Defendants' case while dealing each of the submissions raised on behalf of the Plaintiff. 14. The following questions arise for consideration : I). Whether during the period 23.6.1992 to 1.4.1999 Defendant No.1 worked with the Plaintiff under a contract of service ? 8 II). Whether the concept note “Exhibit “G” to the plaint” was prepared, as alleged by the Plaintiff ? III). Assuming the answer to question (II) is in the affirmative, whether the Plaintiff has established that it has a copyright in the Concept Note ? IV). Whether the breach of a copyright in a film can be committed only by duplicating the film itself ? V). Whether the Plaintiff has established that the Defendants are guilty of passing off their game show as that of the Plaintiff's game show ? These questions in turn raise subsidiary questions which I will set out while dealing with each question. Re : I Whether during the period 23.6.1992 to 1.4.1999 Defendant No.1 worked with the Plaintiff under a contract of service ? 15. Assuming that the concept note is established, it would be necessary for the Plaintiff to further establish that the same was prepared by Defendant No.1 under a contract of service with the Plaintiff. This is in view of Section 17(c) of the Copyright Act, 1957, 9 which reads as under :- “17. First owner of copyright - Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein : Provided that ................................................................. (c) in the case of a work made in the course of the authors employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein; Admittedly, the Plaintiff's case falls under Section 17(c) and not under any other part of Sections 17. 16. It is necessary to set out in extenso the Plaintiff's letter of appointment dated 22.6.1994, appointing Defendant No.1 with effect from 23.7.1992. I shall do so while dealing with the submissions on the facts of this case. 10 17. Mr.Dwarkadas submitted that in determining whether Defendant No.1 was engaged under a contract of service or under a contract for service, various factors require to be considered and not merely the contents of the said letter. I agree. 18. It would be convenient to preface a consideration of this question by referring to the law on this subject. The principles for determining whether the relationship is one of a contract of service or a contract for service are clear and well established. 19. The Supreme Court has since inception rejected the control test, the employer's right to control not just what the person is to do, but also the manner of his doing it, as an exclusive test to determine whether the relationship is one of a contract of service or a contract for service. The Supreme Court has further held that the emphasis in the field no longer even rests strongly on the control theory and control is now no more than a factor, although an important one. It has further been held that in its application to skilled and particularly to professional work the control theory has really broken down. 20. The first judgment relied upon by Mr.Dwarkadas is in the 11 case of Dharangadhra Chemical Works Ltd. v. State of Saurashtra & Ors., 1957 SCR, 152. The effect of this judgment was interpreted by the Supreme Court in Silver Jubilee Tailoring House & Ors. v. Chief Inspector of Shops And Establishment And Anr., (1974) 3 Supreme Court 498. In paragraph 11, the Supreme Court held that in Dharangadhara Chemical Works, the Court had held that the test of control is not one of universal application. The Supreme Court further held :- “26. It is in its application to skilled and particularly professional work that control test in its traditional form has really broken down. It has been said that in interpreting “ `Control'” as meaning the power to direct how the servant should do his work, the Court has been applying a concept suited to a past age. “This distinction (viz., between telling a servant what to do and telling him how to do it) was based upon the social conditions of an earlier age; it assumed that the employer of labour was able to direct and instruct the labourer as to the technical methods he should use in performing his work. In a mainly agricultural society and even in the earlier stages of the Industrial Revolution the master could be expected to be superior to the servant in the knowledge, skill and experience 12 which had to be brought to bear upon the choice and handling of the tools. The control test was well suited to govern relationships like those between a farmer and an agricultural labourer (prior to agricultural mechanization) a craftsman and a journeyman, a householder and a domestic servant, and even a factory owner and an unskilled ‘`hand'. It reflects a state of society in which the ownership of the means of production coincided with the profession of technical knowledge and skill in which that knowledge and skill was largely acquired by being handed down from one generation to the next by oral tradition and not by being systematically imparted in institutions of learning from universities down to technical schools. The control test postulates a combination of managerial and technical functions in the person of the employer i.e. what to modern eyes appears as an imperfect division of labour.” See Prof. Kahn – Freund in (1951) 14 Modern Law Review, at p. 505. ” “27. It is, therefore, not surprising that in recent years the control test as traditionally formulated has not been treated as an exclusive test.” “29. During the last two decades the emphasis in the field has shifted and no longer rests so strongly upon the question of control. Control is obviously an important factor and in many cases it may still be the decisive factor. But it is wrong to say that in 13 every case it is decisive. It is now no more than a factor, although an important one.” See Argent v. Minister of Social Security & Anr. (1968) 1 WLR 1749 at 1759. 21. Courts have in the course of time applied other tests, such as the organization test, the economic test and the integration test. With the change in the nature of professions, commerce, business and industry over the decades Courts felt compelled to apply different tests as well as to apply existing tests differently. Even these tests have been held not to be decisive in all cases. There is no absolute, straight jacket formula. A broader, more complicated flexible and multiple or pragmatic approach is to be adopted by a Court while determining the question. A great deal of flexibility in the judicial approach is thus imperative keeping in mind the facts and the nature of each case. 22. Thus, in Workmen of Nilgiri Co-operative Marketing Society Ltd. versus State of Tamil Nadu & Ors., (2004) 2, Supreme Court Cases, 514, the Supreme Court held :- “32. Determination of the vexed questions as to whether a contract is a contract of service or contract for service and whether the employees concerned are employees of the contractors has never been an easy task. No 14 decision of this Court has laid down any hard- and-fast rule nor is it possible to do so. The question in each case has to be answered having regard to the fact involved therein. No single test — be it control test, be it organisation or any other test — has been held to be the determinative factor for determining the jural relationship of employer and employee.” “37. The control test and the organisation test, therefore, are not the only factors which can be said to be decisive. With a view to elicit the answer, the court is required to consider several factors which would have a bearing on the result: (a) who is the appointing authority; (b) who is the paymaster; (c) who can dismiss; (d) how long alternative service lasts; (e) the extent of control and supervision; (f) the nature of the job e.g. whether it is professional or skilled work; (g) nature of establishment; (h) the right to reject.” “38. With a view to find out reasonable solution in a problematic case of this nature, what is needed is an integrated approach meaning thereby integration of the relevant tests wherefor it may be necessary to examine as to whether the workman concerned was fully integrated into the employer’s concern meaning thereby independent of the concern although attached therewith to some extent. 39. I.T. Smith and J.C. Wood in Industrial Law, 3rd Edn., at pp.8-10 stated : 15 “........................................................................ In the search for a substitute test, ideas have been put forward of an ‘integration’ test i.e. whether the person was fully integrated into the employer's concern, or remained apart from and independent of it. Once again, this is not now viewed as a sufficient test in itself, but rather as a potential factor (which may be useful in allowing a court to take a wider and more realistic view). The modern approach has been to abandon the search for a single test, and instead to take a multiple or ‘ pragmatic’ approach, weighing upon all the factors for and against a contract of employment and determining on which side the scales eventually settle. Factors which are usually of importance are as follows — the power to select and dismiss, the direct payment of some form of remuneration, deduction of PAYE and national insurance contributions, the organisation of the workplace, the supply of tools and materials (though there can still be a labour-only sub- contract) and the economic realities (in particular who bears the risk of loss and has the chance of profit and whether the employee could be said to be ‘in business on his own account’). A further development in the recent case-law (particularly concerning atypical employments) has been the idea of mutuality of obligations’ as a possible factor i.e. whether the course of dealings between the parties demonstrates sufficient such mutuality for there to be an overall employment relationship.” (See also Ram Singh v. Union Territory, Chandigarh (2004) 1 SCC, 126) (emphasis 16 supplied) “42. The decisions of this Court lead to one conclusion that law in this behalf is not static. In Punjab National Bank v. Ghulam Dastagir 7 Krishna Iyer, J. observed (at SCC p. 359, para 3): “To crystallise criteria conclusively is baffling but broad indications may be available from decisions.” 23. In Silver Jubilee Tailoring House & Ors. v. Chief Inspector of Shops and Establishment and Anr., (1974) 3 Supreme Court Cases, 498, the Supreme Court held :- “28. It is exceedingly doubtful today whether the search for a formula in the nature of a single test to tell a contract of service from a contract for service will serve any useful purpose. The most that profitably can be done is to examine all the factors that have been referred to in the cases on the topic. Clearly, not all of these factors would be relevant in all these cases or have the same weight in all cases. It is equally clear that no magic formula can be propounded, which factors should in any case be treated as determining ones. The plain fact is that in a large number of cases, the Court can only perform a balancing operation weighing up the factors which point in one direction and balancing them against those pointing in the opposite direction 12 See Atiyah, PS. “Vicarious Liability in the Law of Torts, pp. 37-38.” 24. The judgments refer to various factors which are important 17 and relevant depending upon the facts of a case. It is neither necessary nor possible to enumerate exhaustively the factors. The relevance and importance of a given factor would depend upon the nature of the case. A factor may be relevant in one case but not in the other. A factor may be relevant with different degrees of importance in one case as compared to another. 25. It is thus necessary for the Court in each case to consider the various tests and apply them depending upon their relevance to the case and to give each of them the weightage warranted by the nature of the engagement. In other words, it is necessary while deciding a case not only to apply the appropriate test and the relevant factors but to accord to each test and each factor its due weightage depending upon the nature of the business and the nature of the engagement/employment. 26. For instance, while applying the control test, the factors cannot be applied blindly but, in the context of the business and the nature of the relationship. 18 27. In Workmen of Nilgiri Co-operative Marketing Society Ltd. v. State of T.N. & Ors., (2004) 3 Supreme Court Cases, 514, the Supreme Court held :- “Tests 34. This Court beginning from Shivnandan Sharma v. Punjab National Bank Ltd., AIR 1955 SC 404 and Dharangadhra Chemical Works Ltd. v. State of Saurashtra, 1957 SCR 152, observed that supervision and control test is the prima facie test for determining the relationship of employment. The nature or extent of control required to establish such relationship would vary from business to business and, thus, cannot be given a precise definition. The nature of business for the said purpose is also a relevant factor. Instances are galore there where having regard to conflict in decisions in relation to similar set of facts, Parliament has to intervene as, for example, in the case of workers rolling bidis.” (emphasis supplied) 28. In Silver Jubilee Tailoring House & Ors. v. Chief Inspector of Shops And Establishment And Anr., (1974) 3 Supreme Court Cases, 498, the Supreme Court held :- “13. On these facts, it was held that the workers were workmen under the Factories Act and were not independent contractors. This Court pointed out that the nature and extent of control varied in different industries 19 and could not by its very nature be precisely defined. The Court said that when the operation was of a simple nature and did not require supervision all the time, the control could be exercised at the end of the day by the method of rejecting bidis which did not come upto the proper standard; such supervision by the employer was sufficient to make the workers, employees of the employer and not independent contractors “18. In V.P. Gopala Rao v. Public Prosecutor Andhra Pradesh (1969) 1 SCC 704 the Court said that there is no abstract a priori test of the work control required for establishing a contract of service and after referring to Bridhichand case (1961) 3 SCR 161 - observed that the fact that the workmen have to work in the factory imply ( Sic ) a certain amount of supervision by the management, that the nature and extent of control varied in different industries, and that when the operation was of a simple nature, the control could be exercised at the end of the day by the method of rejecting the bidis which did not come upto the proper standard.” “35. The reputation of a tailoring establishment depends not only on the cutter but also upon the tailors. In a many cases, stitching is a delicate operation when the cloth upon which it is to be carried on is expensive. The defect in stitching might mar the appearance not only of the garment but also of its wearer. So when the tailor returns a garment, the proprietor has got to inspect it 20 to see that it is perfect. He has to keep his customers pleased and he has also to be punctual, which means that the stitching must be done according to the instruction of the employer and within the time specified. The degree of control and supervision would be different in different types of business. If an ultimate authority over the worker in the performance of his work resided in the employer so that he was subject to the latter’s direction, that would be sufficient. In Humberstone v. Norther Timber Mills (1949) 79 CLR 389 - Dixon, J. said : “ The question is not whether in practice the work was in fact done subject to a direction and control exercised by an actual supervision or whether an actual supervision was possible but whether ultimate authority over the man in the performance of his work resided in the employer so that he