CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 1 of 46 * IN THE HIGH COURT OF DELHI AT NEW DELHI % Reserved on: 10th August, 2017 Decided on: 8th January, 2019 + CS(OS) 205/2009 RODERICK JOHN ANDREW MACKENZIE..... Plaintiff Represented by: Mr.Kirti S. Javali and Ms.Nikita C. Jain, Advocates. Versus HIMALAYAN HELI SERVICES PVT. LTD. ..... Defendant Represented by: Mr. Vivek Malik and Mr.Mukul Thakur, Advocates. + Crl. M.A. No. 5011/2009 in CS(OS) 210/2009 HIMACHAL HELICOPTER SKIING PTY LTD...... Plaintiff Represented by: Mr. Kirti S. Javali, Advocate. versus HIMALAYAN HELI SERVICES PVT. LTD...... Defendant Represented by: Mr.Vivek Malik and Mr.Mukul Thakur, Advocates. CORAM: HON'BLE MS. JUSTICE MUKTA GUPTA 1. Roderick John Andrew Mackenzie, the plaintiff in CS(OS) No. 205/2009 filed the suit inter alia seeking permanent injunction restraining the defendants their employees, servants, agents etc. from using or otherwise copying, selling, offering for sale, counterfeit/unlicensed versions of the plaintiff’s copyright in his artistic work “HIMLAYAN HELI SERVICES” in any shape, form or manner amounting to infringement of the plaintiff’s copyright, damages, rendition of accounts and delivery up of all impugned materials. CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 2 of 46 2. In the plaint which was filed through the duly appointed special power of attorney of the plaintiff namely Vikrant Singh Jafa, it is stated that the plaintiff is the original author/creator, lawful owner and proprietor of the copyright in the artistic work titled “HIMLAYAN HELI SERVICES” in Australia, India and worldwide. The said copyright has been registered in favour of the plaintiff in India on 28th Jan 2008. It is stated that the defendant is wrongly and illegally using the plaintiff’s copyright in the artistic work titled “HIMLAYAN HELI SERVICES” on its websites, letter heads, stationery, business cards etc. It is further claimed that the defendant’s logo has an identical get up, layout and features as that of the plaintiff’s. Plaintiff has been a mountaineer who has climbed Mount Everest twice in 1984 and 1989 and has extensive experience of numerous expeditions in the Himalayas in India, Nepal, New Zealand, Europe, USA etc. The plaintiff has developed patented technology for the analysis of snow and avalanche prediction and has been involved in research and development for the Defence Research and Development Organization (DRDO) and the Snow and Avalanche Studies Establishment (SASE) in Manali. Besides being the owner of the copyright in the artistic work, plaintiff is also the first user of the aforesaid artistic work within the meaning of the Section 17 of the Copyright Act and entitled to all exclusive rights flowing from such ownership as per Section 15 of the Copyright Act. 3. Defendant is a private limited company claiming to be engaged in the business of conducting helicopter operations. Plaintiff noticed on the internet and elsewhere that the defendant has been infringing the plaintiff’s copyright and has titled it as “HIMLAYAN HELI SERVICES” and is using the artistic work of the plaintiff consisting of pictorial representations CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 3 of 46 of the said artistic work with identical shades, lay-out, features, get-up etc. on its websites, letter heads, stationery, business cards etc. Plaintiff also stated that he was the director of Himachal Helicopter Skiing Private Limited which has other matters in issue with the defendant, however, the present suit relates only to the copyright infringement arising out of the international right of the plaintiff. It is claimed that the defendant is infringing the artistic work of the plaintiff by means of posting the insignia in the various exhibitions, galleries, newspaper etc both in Delhi and Trans border. 4. Pursuant to summons being issued, written statement was filed on behalf of the defendant through its Director T. Wangchuk Shamshu. In the written statement preliminary objections were taken particularly in respect of suppression of material facts. It was stated that the defendant company i.e. Himlayan Heli Services Private Limited was incorporated in July, 1998 as a 100% subsidiary of the World Expeditions (India) Private Limited, established in August, 1987. The said company was owned and promoted by Harsh Vardhan Sharma and Wangchuk Shamshu, both citizens of India and pioneers in India in the field of adventure tourism like skiing, trekking and rafting. In 1989 Harsh Vardhan and Wangchuk decided to get together and do business jointly and formed the company in the name and style of World Expeditions Private Limited. In and around 1989-90 plaintiff expressed his keenness to do business in India in the area of heli skiing which at that point of time was only being conducted in Kashmir through M/s Himalayan Heli Ski, a company belonging to Mr. Soudan. A working arrangement was entered into between M/s World Expeditions Private limited and the plaintiff to organize tours for heli skiing in Manali, CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 4 of 46 Himachal Pradesh as a part of the business which activity could be conducted only for a period of 12 weeks in a year in the months of January to March. 5. As per the written statement plaintiff wanted to conduct the said activity under the name and style of Himalayan Heli Skiing, which was deceptively similar to Mr. Soudan’s outfit, and on the defendant’s objection to the same, plaintiff changed the name of his operations to Himachal Helicopter Skiing with a logo being a triangular mountain with a ski trail surrounded by clouds. Later, since the defendant company was providing helicopters to pilgrims as well as adventure tourists, the nomenclature was changed from M/s World Expedition Private Limited to “HIMLAYAN HELI SERVICES” Private Limited. On the formation of the defendant in the year 1998, the defendant designed/ caused to be designed a logo/ artistic work depicting a helicopter in a triangle with clouds around it, the triangle reflecting the mountains. The clouds were put on the suggestion of the plaintiff with whom Harsh Vardhan and Wangchuk were having regular dealings. It is stated that the plaintiff had nothing to do with the trade name or trade mark “HIMLAYAN HELI SERVICES” which was not the business of the plaintiff who was doing only skiing. Thus there was no comparison between the plaintiff and the defendant. The plaintiff was a skiing instructor, bringing groups for skiing holidays, whereas the defendant is an Air Taxi Operator operating helicopters. In fact plaintiff does not and cannot provide heli services as permission to provide the said service is with the defendant only. In the written statement defendant stated about the goodwill and the quantum of its business. CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 5 of 46 6. In the written statement it is also stated that providing of helicopter services in the remote mountaineers regions was not free from danger and risk. Mr. Wangchuk who is a practicing Buddhist, incorporated in the logo of the defendant the symbol of ‘Dorje”. In Buddhism, the ‘Dorje”, also known as ‘Vajra’, is considered to be very auspicious and a powerful symbol and mythological weapon that destroys ignorance and is itself indestructible. It is stated that M/s Mahavir Printers was engaged to design a suitable logo for the defendant with a ‘Dorje’ and out of the various designs given defendant selected the present logo/insignia. Thus the original artistic work in this logo containing the dorje/vajra is of the defendant and not the plaintiff. 7. It is further stated that in 2006 defendant had a serious dispute with the plaintiff and his organization M/s Himachal Helicopter Skiing as the plaintiff used defendant’s helicopter to lift load which was impermissible under the terms of license and realizing his mistake the plaintiff tendered a written apology. The relation between the parties strained and despite repeated reminders the plaintiff failed to pay to the defendant a sum of approximately USD 36,000 which is due towards plaintiff. Defendant in the written statement further claims that the plaintiff all through this period was associated with the defendant and was fully aware of the logos being used by the defendant and the plaintiff only used a ski trail in a triangular mountain surrounded by clouds. The defendant was surprised to know as to how the plaintiff clandestinely registered logos and trade mark in his name in January 2008. Further, even after 2008 the plaintiff never issued any notice to the answering defendant complaining of infringement and filed the present suit. Thus, the suit is liable to be dismissed not only on the CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 6 of 46 account that the plaintiff had not made out any case but also on the ground of concealment of material facts as noted above and that the defendant has been using its own logo with a helicopter in a triangular mountain clouds and dorge/vajra in “HIMLAYAN HELI SERVICES”. 8. On the pleadings of the parties the following issues were settled: i. Whether the Plaintiff is entitled to permanent injunction to restrain the Defendant from using the artistic work ‘HIMALAYAN HELI SERVICES’? (OPP) ii. Whether the Plaintiff has any right, title or interest or copyright in the artistic work ‘HIMALAYAN HELI SERVICES’? (OPP) iii. Whether the Defendant is the owner of the copyright in the artistic work ‘HIMALAYAN HELI SERVICES’? (OPD) iv. Whether the Plaintiff has acquiesced in the Defendant’s use of the said artistic work? (OPD) v. Whether the suit is barred by limitation and laches? (OPD) vi. Whether the Plaintiff has suppressed material facts and the effect thereof? (OPP) vii. Relief. 9. Plaintiff filed his own evidence by way of affidavit and examined himself as the sole witness PW-1. In the evidence by way of affidavit, plaintiff deposed the facts as stated in the plaint claiming himself to be the first user of the copyright in the artistic work and also that he was the registered owner thereof. CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 7 of 46 10. On behalf of the defendant its Director Harsh Vardhan Sharma examined himself as a witness being DW-1 and deposed on the lines of the averments in the written statement as noted above. 11. Before dealing with issues No. (i), (iv), (v) and (vi) it would be appropriate to deal with issues No.(ii) and (iii). 12. Issue No.(ii): Whether the Plaintiff has any right, title or interest or copyright in the artistic work ‘HIMALAYAN HELI SERVICES’? (OPP) and Issue No. (iii): Whether the Defendant is the owner of the copyright in the artistic work ‘HIMALAYAN HELI SERVICES’?(OPD) 12.1. Contention of the learned counsel for the plaintiff is that the defendant themselves admitted that the plaintiff had been using the logo of a triangular mountain with the skiing trail surrounded by clouds, thus the subsequent adoption of the defendants of the logo with a helicopter in a mountain and the clouds not only infringes the plaintiff’s artistic work but also amounts to passing off. Defendant has also admitted that the clouds in the purported logo of the defendant i.e. a helicopter in a triangle, were put at the suggestion of the plaintiff. Further, defendant’s witness admitted that the plaintiff has been using the artistic work in his communication since 1990. It is further stated that the defendant is not the owner of the copyright work and it is the plaintiff who has been using the logo of the mountain in the clouds since 1988. The defendant company came into existence with the co-operation of the plaintiff. Plaintiff shared his logo which the defendant company who would have never imagined or visualized the artistic work which originally belonged to the plaintiff. Defendant has never taken steps to register their so called artistic work and after the relationship between the parties terminated the plaintiff took steps to get registered his artistic work CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 8 of 46 in the year 2008 which protection was granted to him. Thus, plaintiff is entitled to the decree as prayed for. 12.2. Learned counsel for the defendant contends that the logo has been designed in view of the nature of the business of the defendant that is of private helicopter services in the Himalayas. Further, the helicopter mountain and clouds and the artistic work of using of “Vajra” in the capital (H) has been used by the defendants since its incorporation in 1998. Defendant has acquired goodwill and reputation in its name/mark over this period. As noted above in the documents used by the plaintiff even prior to the year 1998-99 when he associated with the defendant, the plaintiff had only been using mountain in the clouds with a ski trail. 12.3. It is trite law that copyright inheres in the author or the creator of the artistic work the moment the work is created and registration of the copyright is merely a prima facie evidence that the artist is the owner of the copyright. However, if the person is not the author or the creator of the artistic work registration of the artistic work cannot vest copyright in the person. 12.4. The three judge bench of the Hon’ble Supreme Court in the decision reported as 1978 (4) SCC 118 R.G. Anand vs. M/s Delux Films & Ors. laying down the law to determine the infringement of the copyright held that where a charge of violation of the copyright is made by the plaintiff against the defendant the fundamental fact which has to be determined is whether or not the defendant not only adopted the idea of the copyrighted work but has also adopted the manner, arrangement, situation to situation, scene to scene with minor changes or super additions or embellishment here and there. Indeed, if on a perusal of the copyrighted work the CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 9 of 46 defendant's work appears to be a transparent rephrasing or a copy of a substantial and material part of the original, the charge of plagiarism must stand proved. Care however must be taken to see whether the defendant has merely disguised piracy or has actually reproduced the original in different form, different tone, different tenor so as to infuse a new life into the idea of the copyrighted work adapted by him. In the latter case there is no violation of the copyright. 12.5. Considering the various authorities and the case law on the subject Supreme Court laid down the following principles: “1. There can be no copyright in an idea, subject-matter, themes, plots or historical or legendary facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyrighted work. 2. Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. In such a case the courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. If the defendant's work is nothing but a literal imitation of the copyrighted work with some variations here and there it would amount to violation of the copyright. In other words, in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy. 3. One of the surest and the safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original. 4. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 10 of 46 completely new work, no question of violation of copyright arises. 5. Where however apart from the similarities appearing in the two works there are also material and broad dissimilarities which negative the intention to copy the original and the coincidences appearing in the two works are clearly incidental no infringement of the copyright comes into existence. 6. As a violation of copyright amounts to an act of piracy it must be proved by clear and cogent evidence after applying the various tests laid down by the case-law discussed above. 7. Where however the question is of the violation of the copyright of stage play by a film producer or a director the task of the plaintiff becomes more difficult to prove piracy. It is manifest that unlike a stage play a film has a much broader prospective, wider field and a bigger background where the defendants can by introducing a variety of incidents give a colour and complexion different from the manner in which the copyrighted work has expressed the idea. Even so, if the viewer after seeing the film gets atotality of impression that the film is by and large a copy of the original play, violation of the copyright may be said to be proved. 12.6. The two mark Nos. A81931/2008 and A81932/2008 noted below have been registered in favour of the plaintiff. CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 11 of 46 12.7. In the plaint and the evidence, claim of the plaintiff is that he was using mountain in the triangular form with the cloud and when the Himalayan Heli Services, defendant No.1 was incorporated even as per the admission of the defendant it was the idea of the plaintiff that the triangle which depicted a mountain should be surrounded by the clouds, however plaintiff has placed no documents on record to show that prior to 1998 the plaintiff was using the mark “HIMLAYAN HELI SERVICES” whereas defendant has placed on record documents to show that before plaintiff joined the joint venture i.e. Himlayan Heli Services Private Limited as noted above, his organization was called as M/s.Himachal Helicopter Skiing and M/s.Himachal Helicopter Skiing was using the logo being a triangular mountain with a ski trail surrounded by clouds. Thus even if the plaintiff can be held to be the creator of the artistic work of a triangular mountain in the clouds depicted in a particular manner, the same was being used with a ski trail as the major work of the plaintiff was skiing expedition. Further the copyright is claimed in the composite mark including Himalayan Heli Services with the logo of mountain with clouds and a helicopter and not merely in the mountain depicted as a triangle with clouds around. He nowhere used the Helicopter in the triangle depicting CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 12 of 46 the mountain. DW-1 in his evidence has admitted that the plaintiff had been using the mountain with the clouds and a ski trail therein as a logo qua his services rendered as Himachal Helicopter Skiing. Thus neither the plaintiff nor the defendant can claim any copyright in the artistic work for which registration has been granted to the plaintiff vide registration No.A- 81931/2008 i.e. triangular mountain with the clouds and a helicopter therein even though the same was being used as a logo for the joint venture of the defendant No.1. 12.8. As regards the second copyright of the plaintiff wherein Himalayan Heli Services is depicted with a Dorje/Vajra neither in the plaint nor in the evidence the plaintiff claims that he was the creator or author of the said artistic work. Merely because the copyright has been granted in favour of the plaintiff the same would not inure a right to the plaintiff. None of the documents of the plaintiff show that before joining the joint venture of the defendant, the plaintiff was using Dorje/Vajra in the words Himalayan Heli Services. In fact the plaintiff was not even using the trade mark “HIMLAYAN HELI SERVICES”. Since qua copyright in registration No. A-81932/2008 plaintiff has not led any evidence to show that plaintiff is the creator of the copyright with ‘Vajra’ in between the Himalayan Heli Services, it cannot be held that the plaintiff is the owner of the copyright granted to him vide registration No.A-81932/2008. 12.9. In respect of the copyright granted to the plaintiff vide registration No.A-81932/2008 the defendant claims that this Vajra was added as it is very auspicious and powerful symbol besides being a mythological weapon that destroys ignorance and is itself indestructible. Defendant claims that this design was given to the printer, however except the bald assertion, no CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 13 of 46 further evidence has been led that the defendant is the creator of the artistic work qua registration No. A-81932/2008. 12.10. Thus in respect of issue No. (ii) and (iii) neither the plaintiff nor the defendant can claim copyright in the two registration marks. 13. Issue No. (vi): Whether the Plaintiff has suppressed material facts and the effect thereof? (OPP) 13.1. Though as per the issue settled the onus to prove this issue was on the plaintiff, however, as noted from the written statement and the language of the issue the onus to prove this issue has to be on the defendant. 13.2. Contention of learned counsel for the defendant is that from the facts proved by the evidence of defendant the claim of the plaintiff that it had been solely using the logos in question for a very long period and came to know only on 28th January, 2009 about the use of logos by the defendant on the internet is incorrect and suppresses the facts that both the parties were in relation with each other, since 1998 the plaintiff has not used the logos and plaintiff has not placed on record any material that he was conducting the business of heli skiing, hence, his entire case stands falsified. 13.3. Contention of learned counsel for the plaintiff is that the plaintiff in para 24(b) of the plaint has stated that in respect of the other matters with the defendant separate suits were being filed and the plaintiff in two other suits has given his entire relationship with the defendant which complies with the requirement of law. The fact of relationship between the two parties was clearly spelt out and known to the court and since the present suit only related to copyright infringement unnecessary facts were not pleaded. The same would not amount to suppression of material facts. CS(OS) 205/2009 & Crl.M.A.5011/2009 in CS(OS) 210/2009 Page 14 of 46 13.4. In the present suit claim of the plaintiff is for injunction restraining the defendants from using its copyright in the artistic work “HIMLAYAN HELI SERVICES” damages, rendition of accounts and delivery up of the impugned material. 13.5. In para 14B of the plaint, plaintiff has stated that the plaintiff, Director of Himachal Helicopter Skiing Private Limited had other matters in issue with the defendant, however, the present suit is being laid in strict compass of copyright infringement arising out of the individual rights of the plaintiff. 13.6. No doubt, the plaintiff was not required to elaborate its relationship with the defendant, however, it was required on the part of the plaintiff to have pleaded that the plaintiff had been working with the defendant from 1989 to 2006 when disputes arose between the parties. As a joint venture both the plaintiff and the defendant were using logos falsifying the claim of the plaintiff as an exclusive user. Further the claim of the plaintiff that he came to know about defendant’s user before filing of the suit is also falsified by the documents placed on record by the defendant. 13.7. In the decision reported as M/s Continental Foundation (supra) relating to Section 11(a) of the Central Excise Act, 1944, Supreme Court explained the meaning of “suppression” as failure to disclose full information with the intention to evade payment of duty. 13.8. Supreme Court in the decision reported as (2012) 11 SCC 574 Badami v. Bhali while dealing with concealment