Citation Codes

Equivalent Citations

citation codes

Case Number

First Appeals Nos. 416 and 418 of 1941

Judges

Stone, C.J
Divatia, J.

See more information ...

Smart Summary

Structured Summary of the Opinion by Stone, C.J.

Factual and Procedural Background

The dispute concerns copyright in a picture drawn and coloured by the plaintiff in November 1933 (referred to in the opinion as the "1933 picture"). In 1935 the plaintiff sued defendant 1 for alleged infringement by a picture of defendant 1; that earlier suit was compromised by a consent decree granting a permanent injunction against defendant 1 restraining him from infringing the plaintiff's copyright. Confusion in the trial court over exhibit numbering is noted; for clarity the opinion labels the works as the "1933 picture" (plaintiff's original), the "1935 picture" (the picture involved in the 1935 suit), and the "1939 picture" (the lithograph published in 1939 by defendant 2 and central to the present action).

After the 1935 consent decree, in 1939 defendant 2 published many lithograph prints of a picture (the "1939 picture"). The plaintiff alleged that the 1939 picture infringed the plaintiff's copyright in the 1933 picture. The plaintiff also alleged that although the 1939 picture bore defendant 2's name, it was in reality published by defendant 1 (i.e., defendant 2 was a sham), which would additionally constitute breach of the 1935 consent decree. The District Judge of Kaira made findings on these matters; the present opinion arises from two appeals from that judgment and substitutes a final decree.

Legal Issues Presented

Whether the plaintiff's 1933 picture is an original work protected by copyright (i.e., whether it embodies sufficient originality and artistic skill).
Whether the 1939 picture (and the lithograph reproductions thereof) infringed the plaintiff's copyright in the 1933 picture by substantial copying.
Whether defendant 1 was the real publisher/author of the 1939 picture — that is, whether defendant 2 was a cloak or sham and defendant 1 was colluding with or instigating the publication — such that the 1935 consent decree operated against defendant 2 or defendant 1 breached the consent decree.
What remedies and orders should follow if infringement or breach (or collusion) is established (injunctions, delivery up of copies, costs, and any orders against defendant 1).

Arguments of the Parties

Plaintiff's (and plaintiff's counsel's) contentions

The plaintiff alleged copyright in the 1933 picture and claimed the 1939 picture reproduced his work in a manner that infringed that copyright.
Plaintiff's counsel (Mr. Chundrigar) marshalled facts to support an allegation that defendant 1 was responsible for or colluded in the publication of the 1939 picture despite it bearing defendant 2's name; facts relied on included defendant 1's failure to give evidence, alleged lack of capacity of defendant 2 to undertake the venture, falsities in defendant 2's account of dealings with the artist and printers, and evidence that some lithograph prints were bought in defendant 1's shop.

Defendant 2's arguments

Defendant 2 contended that he employed an artist named Baldevdas to make a painting of the idol from a photograph he had purchased; that Baldevdas produced the 1939 picture; and that defendant 2 sent that picture to Messrs M.A. Joshi for reproduction of lithograph prints (10,000 copies ordered), which he sold.
On that account, defendant 2 asserted he was the publisher and that his lithographs derived from a photograph (and Baldevdas' painting) rather than from the plaintiff's 1933 picture.

Defendant 1's position

Defendant 1 disclaimed knowledge of and interest in the infringing work in this Court and did not give evidence in the trial below.
Through counsel, defendant 1 offered undertakings: (a) not to publish, print, sell, deliver or otherwise deal with the 1939 picture or its reproductions; and (b) to deliver up any offending copies in his possession.

Additional legal submission (by Mr. B.G. Thakor)

Mr. B.G. Thakor argued that there can be no copyright in a reproduction of the idol itself and that any copyright in depictions of the idol and its regalia might vest in the idol's committee or trustees. The Court noted this submission but declined to decide it because there was no evidence that the idol or its committee asserted such a claim; moreover, the plaintiff's picture was shown to be a conception inspired by observation rather than a slavish copy.

Table of Precedents Cited

No precedents were cited in the provided opinion.

Court's Reasoning and Analysis

The court's reasoning proceeds in several discrete steps, each applying factual comparison and legal principle as stated in the opinion:

Construction of the 1935 consent decree: The court examined whether the consent decree could be construed as broadly prohibiting anyone in collusion with defendant 1 from publishing any picture of Shri Ranchhodraiji. The court held that, despite the decree's inartistic drafting, it could not bear so wide an interpretation. Thus the decree did not by itself operate as an absolute bar to publication by others absent proof of collusion or agency.
Originality of the 1933 picture: The court reviewed the plaintiff's uncontroverted cross-examination evidence in which the plaintiff described the 1933 picture as a memory-drawing and a conception arising from seeing the idol rather than a photographic or slavish reproduction. The court compared the 1933 picture to a photograph of the idol (enlarged) and found numerous artistic deviations and licence. On that basis the court concluded the 1933 picture is an original work containing skill and artistic merit and is not the product of mechanical reproduction.
Method of detecting infringement: The court stated the accepted approach — that piracy in an alleged infringing work is best detected by careful comparison to see whether the deviations and distinctive features of the original (which flow from artistic licence) have been reproduced into the alleged copy.
Comparison of the 1933 and 1939 pictures: With the photograph, the 1933 picture, and the 1939 picture's master copy before the court, the judges compared the works. The court observed that the head and headdress of the idol in the 1939 picture are "almost precisely similar in every respect" to those in the 1933 picture, to the extent that the outlines coincide with striking precision. Specific similarities included a identical tillak on the forehead and the presence of long curved Bhamar (eyebrows) in both the 1933 and 1939 pictures despite their absence in the photograph. These congruences led the court to conclude that the 1939 picture was substantially copied from the plaintiff's 1933 picture.
Assessment of defendant 2's account: Defendant 2's explanation that he relied on a photograph and employed Baldevdas was found inadequate because defendant 2 could not explain the close similarities to the plaintiff's original; the court entertained "not the smallest doubt" that Baldevdas or whoever painted the 1939 picture copied substantially from a reproduction of the plaintiff's 1933 picture, amounting to infringement.
Assessment of defendant 1's alleged collusion: The court considered the plaintiff's circumstantial evidence and the facts marshalled by plaintiff's counsel (non-appearance in the witness box, defendant 2's alleged lack of capacity, falsehoods in defendant 2's account, and purchases of prints from defendant 1's shop). The court held that while these facts were suspicious, the burden of proving collusion, instigation or conspiracy by defendant 1 lay on the plaintiff. The court found the plaintiff had not discharged that burden (noting, for example, that the plaintiff could have called a representative of the printers, Messrs M.A. Joshi, to show who financed the venture). Consequently the court would not make a substantive order against defendant 1 beyond accepting his counsel's undertakings.
Conclusion as to the lower court's findings: The court concluded that the learned District Judge was wrong in holding no infringement by defendant 2. While the lower court made a decree against defendant 2 on other grounds, the form of that decree was incorrect; the appellate court therefore set aside the lower court's order and substituted a tailored decree addressing infringement and remedies.

Holding and Implications

Holding (core ruling):

The appellate court set aside the judgment of the Court below and substituted a decree restraining defendant 2 (and his servants and agents) from publishing, printing, selling, delivering or otherwise disposing of the 1939 picture or any part thereof; ordered defendant 2 to deliver up to the plaintiff all unsold copies or copies in his possession; and ordered defendant 2 to pay the plaintiff's costs of the action and appeals. With respect to defendant 1, the court accepted undertakings from his counsel not to deal with the 1939 picture and to deliver up copies in his possession, and therefore made no order against defendant 1 as to costs or otherwise.

Implications (direct effects on the parties):

Defendant 2 is permanently enjoined from publishing or otherwise disposing of the 1939 picture or copies thereof, must deliver up unsold copies in his possession or power, and must pay the plaintiff's costs of the action and the appeals.
Defendant 1 is not ordered to pay costs or otherwise sanctioned so long as the undertaking given by his counsel (not to publish or deal with the 1939 picture and to deliver up any copies he holds) is observed.
The earlier consent decree (1935) was not interpreted as an instrument that automatically barred any publication of pictures of Shri Ranchhodraiji by third parties; the consent decree does not receive the extremely wide construction urged by the plaintiff, absent proof of collusion or agency.
No broader legal principle or new precedent is proclaimed by the court beyond application of the usual copyright principles concerning originality and substantial copying; the decision is directed to the facts and the remedial orders required in this case.

Order: The District Judge's order is set aside and the substituted decree described above is made.

Show full summary ...

Lallubhai Motiram v. Laxmishanhar Ambalal

Stone, C.J:— These are two appeals from the District Judge of Kaira. The action, which gives rise to them, concerns the copyright in a picture drawn and coloured by the plaintiff in November 1933, of Shri Ranchhodraiji's Diwali, Shringar. In 1935 thes plaintiff filed a suit against defendant 1 alleging the infringement of the plaintiff's copyright in the said picture by a picture of defendant 1. Some confusion has occurred in the Court below, the repercussions of which have followed this appeal, with regard to the numbering of the exhibits, there being in fact two exhibits No. 19. In order to avoid any further confusion I propose to refer to the plaintiff's picture made in November 1933, as the “1933 picture,” and defendant 1's picture as the “1935 picture,” and to the other picture with which this suit is concerned, as the “1939 picture.” The original exhibita will be marked accordingly.

2. The former suit was compromised, and by the consent decree a permanent injunction was granted against defendant 1 restraining him, in effect, from infringing the plaintiff's copyright. Thereafter, until 1939, nothing appears to have happened until defendant 2 published a large number of lithograph prints of the picture, which I will refer to as the “1939 picture,” and which has been sometimes referred to as Ex. 21 and sometimes as Ex. 83. Of this picture it is said, not only that it infringes the plaintiff's copyright in the 1933 picture, but also, that, although it has been put forth in the name of defendant 2, as appears from the right-hand bottom comer of the lithograph prints, this device is only a cloak or sham and that in reality it is the work and publication of defendant 1; so that, so far as he is concerned, it is not only a breach of the plaintiff's copyright in the 1933 picture, but is also a violation of the injunction granted by the consent decree in 1935. In that event both defendants would be liable to have an order made against them for an injunction and consequential relief, and in the case of defendant 1, he would also be liable for the consequence of his breach of the consent decree.

3. In the Court below the learned Judge held that the 1939 picture was published in reality by defendant 1 in the name of defendant 2, and he held that the injunction in the 1935 consent decree was operative against defendant 2. Somewhat surprisingly he found in answer to issue (5) that the 1939 picture was not a colourable imitation of the 1933 picture and that the 1939 picture could not be passed off for the 1933 picture. This apparent inconsistency appears to have arisen from the fact that the learned Judge considered that the consent decree was a complete bar to defendant 1 or any one in collusion with him or on his behalf publishing any picture of Shri Ranchhodraiji. Although the consent decree is drawn up in the most inartistic terms, it is not capable, in our judgment, of bearing any such wide construction. The plaintiff's 1933 picture is of the idol of Shri Ranchhodraiji of the Dakor Temple, and the idol is depicted in the dress regalia and ornaments of Diwali. The original of it is before us; it is a painting or coloured drawing and came into existence in this way. I will quote from the plaintiff's evidence given in cross-examination which stands uncontroverted:

“I have drawn Banohhodji's picture, without the basis of any photo or picture of Ranchhodji. Sketch, plan and execution of my picture are the result of my imagination. My picture is neither a model drawing, nor an object drawing, but a memory drawing. I drew the said picture from the Banchhodji's image. I have taken no other basis.

It is not true that the form of the deity is exactly like that of idol, and not drawn from my imagination. The form of the Sinhasan (throne) is not the same as in the temple. A curtain is kept behind the idol in the temple. At the top of the silver throne there is a silver plate representing, the sun in the temple. It is not true that an embroidered figure of the sun is there on the back curtain at the top.”

4. And later in his cross-examination he says this:

“During the time I was drawing the picture I was daily seeing the idol of Banohhodji in the temple. I took three or four days to draw. My idea was to make changes in the image. My picture had a good market from 1933 to 1930–1937. My picture is not of real Banchhodji. I registered my picture in the Old Custom House at Bombay, but afterwards I learnt that there was no necessity for registration. I got the declaration of trade-mark of my picture in the office of the Sub-Begistrar of Bombay.”

5. Mr. B.G Thakor in a very full and able argument took the point that there can be no copyright in a reproduction of the idol itself and its dresses and that the copyright in the idol invested in the regalia of the different festivals, is either in the idol itself or in its committee or trustees. That interesting submission does not fall for decision in this case, because there in no evidence that the idol or its committee or trustees raised any such claim, and in fact the plaintiff's 1933 picture is protected by a declaration of trade-mark. Further as appears from the plaintiff's evidence which I have already quoted, the plaintiff's 1933 picture is no slavish copy of the idol adorned in Diwali Shringar, but is rather the plaintiff's conception of an idea inspired by having seen the idol. We do not decide anything with regard to this point which may arise for decision in some other case.

6. In our judgment, the plaintiff's 1933 picture is an original work containing skill and artistic merit; it in no sense has that degree of precision which can be produced by photographic or other mechanical means. We have had the advantage of comparing the 1933 picture with the photograph of the idol enlarged up to the approximate size of the 1933 picture. There is no doubt, when the two are compared, that the plaintiff, as members of his profession are wont to do, has taken a full degree of artistic licence, so that there are numerous points of difference between the 1933 picture and the idol itself as portrayed by the photograph, though admittedly the idol was then adorned for another festival. A striking example of this can be seen in the exposed portions of the idol. In the photograph the idol has no Bhamar (eye-brows) whereas in the 1933 picture long curved Bhamar are shown. In all cases of this nature, there is no better way of detecting the piracy in an alleged infringing work than by making a careful examination of it to see whether any of the deviations and mistakes which artistic licence permits in the original have been reproduced into the alleged infringing copy.

7. Defendant 2's story is that he employed one Baldevdas to make a painting of the idol from a photograph which he purchased in the bazaar and gave to Baldevdas and which has been produced in this Court. He says that Baldevdas produced the 1939 picture and that this he sent to Messrs M.A Joshi with an order for reproduction of 10,000 lithograph prints of it, many of which he has since sold. Therefore, so far as defendant 2 is concerned, the only question is whether the lithograph prints which he has had made and published infringed the plaintiff's copyright in the 1933 picture. With the photograph, the 1933 picture and Baldevdas' painting, which is the master copy from which the lithograph prints were made, before us a comparison can be made. Although the lithograph reproductions have been reduced in size, when the master copy of the 1939 picture is compared with the 1933 picture, it will be seen that the head and head-dress of the idol are almost precisely similar in every respect and that the one will fit over the other, so that the indentures of the outline coincide with striking precision. Another significant similarity is that whereas in the photograph the forehead of the idol is ornamented by an oval jewel, in the 1939 picture as in the 1933 picture there is a Tillak of precisely similar size and proportions on the fore-head of the idol. Further the Bhamar (eye-brows) which are in the 1933 picture are also in the 1939 picture: though none appears in the photograph. We entertain not the smallest doubt that Baldevdas or whoever painted the 1939 picture copied substantially from a reproduction of the plaintiff's 1933 picture, to an extent which is an infringement of the plaintiff's copyright. Defendant 2 is wholly unable to explain these similarities, and, in our judgment, the learned Judge in the Court below was wrong in holding that there was no infringement; though on other grounds he made a decree against defendant 2. But the decree is in the wrong form, and there will be substituted for it the decree which I will presently state.

8. That leaves outstanding the position of defendant 2 who is a distant connexion by marriage of defendant 1, the allegation against him being that he colluded with, or instigated defendant 1 to infringe the plaintiff's copyright and that this was a device of getting round the injunction in the consent decree of 1935. Mr. Chundrigar has marshalled the facts and evidence against defendant 1 as follows: First, that although in Court, he did not go into the witness-box; secondly, that defendant 2 has neither the capacity nor the money to embark on this venture; thirdly, that in several respects defendant 2's story as to his dealings with the artist Baldevdas and also with Messrs M.A Joshi are proved to be false; and lastly, that there is some evidence that one, and possibly two, of the lithograph prints were purchased in defendant 1's shop. The learned Judge in the Court below ordered defendant 1 to pay the costs of the action on the ground that these facts proved his guilt. Suspicious they, no doubt, are, but the burden of proving that defendant 1 colluded, conspired or instigated the breach of the plaintiff's copyright is on the plaintiff. He could have discharged that burden by calling the representative of Messrs M.A Joshi to show who really financed the venture.

9. In large measure Messrs M.A Joshi were in mercy to the plaintiff, since they had printed and reproduced the offending work, and could have been made defendants to this action. In this Court defendant 1 has disclaimed all knowledge of and interest in the infringing work, and his counsel offers to give an undertaking not to sell or in anywise deal with the 1939 picture and the reproductions thereof, and he further offers an undertaking to deliver up any offending copies which may have come into his possession.

10. In the result, the order which we make is as follows: The order in the Court below will be set aside and for it, will be substituted the following decree: “It is ordered that defendant 2, his servants, and agents, be perpetually restrained from publishing, printing, selling, delivering or otherwise disposing of, or causing or permitting to be published, printed, sold, delivered or otherwise disposed of, any copy or copies of the 1939 picture or any part thereof and the plaintiff by his counsel disclaiming any intention of publishing the infringing work or the copies thereof, it is ordered that the 1939 picture and all copies thereof which remain unsold or are in the possession or power of defendant 2 be delivered up by defendant 2 to the plaintiff and it is ordered that defendant 2 do pay the plaintiff's costs of this action and of these appeals. Defendant 1 by his counsel undertaking not to publish, print, sell, deliver or otherwise dispose of, or cause or permit to be published, printed, sold, delivered or otherwise disposed of, any copy or copies of the 1939 picture or any part thereof, and to deliver up to the plaintiff the 1939 picture and all copies thereof which remain unsold or are in the possession or power of defendant 1, no order is made against defendant 1 as to costs or otherwise.”

11. Order accordingly.

Lallubhai Motiram v. Laxmishanhar Ambalal

Structured Summary of the Opinion by Stone, C.J.

Factual and Procedural Background

Legal Issues Presented

Arguments of the Parties

Plaintiff's (and plaintiff's counsel's) contentions

Defendant 2's arguments

Defendant 1's position

Additional legal submission (by Mr. B.G. Thakor)

Table of Precedents Cited

Court's Reasoning and Analysis

Holding and Implications

Lallubhai Motiram v. Laxmishanhar Ambalal

Comments