SP-07 Memorial For The Petitioner

SP SATHE NATIONAL MOOT COURT COMPETITION 2016-17 | MEMORIAL FOR THE PETITIONER
MEMORIAL FOR SP SATHE MOOT COURT COMPETITION
IN THE HON‘BLE HIGH COURT OF BOMBAY
AT BOMBAY
Jack Samuelson and Brightwalker Studio Ltd …..Plaintiffs
Versus
Earl Grey and Edified Comics Ltd …..Defendants
Written Submissions on behalf of the Plaintiffs
Counsels for Plaintiffs
MEMORIAL FOR SP-07

CONTENTS
.................................................................................................................................................... 2
LIST OF ABBREVIATIONS ................................................................................................. 4
TABLE OF AUTHORITIES .................................................................................................. 5
1. CASES CITED .............................................................................................................. 5
2. STATUTES REFERRED ................................................................................................ 7
3. BOOKS REFERRED. ..................................................................................................... 7
4. TREATIES AND CONVENTIONS ............................................................................... 8
STATEMENT OF JURISDICTION ...................................................................................... 9
STATEMENT OF FACTS .................................................................................................... 10
STATEMENT OF ISSUES ................................................................................................... 12
SUMMARY OF ARGUMENTS ........................................................................................... 13
ARGUMENTS ADVANCED ................................................................................................ 14
1. THE WORKS OF JACK SAMUELSON AND BRIGHTWALKER STUDIOS LTD.
ARE PROTECTED IN INDIA BY THE COPYRIGHT ACT, 1957. ................................. 14
2. EARL GREY AND EDIFIED COMICS LTD. HAVE INFRINGED THE
COPYRIGHTS OF JACK SAMUELSON AND BRIGHTWALKER STUDIOS LTD. ... 14
A. THE WORK OF THE PLAINTIFFS WITH RESPECT TO THE CHARACTER
BOROMIR BOHEMIA AND THE LAND OF VENGURSA IS COPYRIGHTABLE. 14
B. DEFENDANTS’ WORK IS A SPECIMEN OF INDIRECT COPYING OF THE
PLAINTIFFS’ WORK ..................................................................................................... 16
C. THE ACTS OF THE DEFENDANTS ARE NOT PERMITTED BY THE
COPYRIGHT ACT, 1957. ............................................................................................... 18
2
3. THERE HAS BEEN NO INFRINGEMENT OF TRADE MARK BY VIRTUE OF
SEC 29(4) OF THE TRADE MARKS ACT 1999. ............................................................. 20
A. USE OF MARK IN DISSIMILAR GOODS ......................................................... 20
B. USE OF MARK DOES NOT TAKE UNFAIR ADVANTAGE .......................... 21
C. USE OF MARK NOT DETRIMENTAL TO THE DISTINCTIVE CHARACTER
21
D. USE OF MARK NOT DETRIMENTAL TO THE REPUTE OF THE
REGISTERED TRADE MARK ...................................................................................... 23
4. THE USE OF THE MARK BY THE PLAINTIFF IS PROTECTED UNDER
SECTION 34 (A) AS A VESTED RIGHT OF A PRIOR USER........................................ 23
5. THE PLAINTIFFS ARE ENTITLED TO PREVENTIVE RELIEF ............................ 24
6. THE PLAINTIFFS ARE ENTITLED TO DAMAGES ............................................... 25
PRAYER ................................................................................................................................. 27
3
LIST OF ABBREVIATIONS
1. AIR - All India Reporter

2. Art - Article
3. s - Section
4. HC - High Court
5. SC -Supreme Court
6. SCC - Supreme Court Cases
7. SCR - Supreme Court Reports
8. P- Page
9. Para - Paragraph
10. TM Act - Trade Marks Act
11. CPC - Civil Procedure Code
12. BSL - Brightwalker Studio Ltd.
13. ECL - Edified Comics Limited
14. C.D.Cal - Central District of California
15. S.D.N.Y - Southern District of New York
16. F.S.R - Fleet Street Cases
17. Cir. - Circuit
18. PTC - Patents & Trade Marks Cases
19. USPQ - United States Patent Quarterly
20. All ER - All England Law Report
21. Del – Delhi
22. Mad - Madras
23. F2d - Federal Reporter 2nd Series
4
TABLE OF AUTHORITIES
1. CASES CITED
1. Adobe Systems Inc. v. Sachin Naik. ............................................................................... 10
2. Ashdown v. Telegraph Group Ltd ................................................................................ 15
3. Associated Electronic & Electrical Industries v. Sharp Tools .................................... 14
4. Bajaj Auto Ltd. v. TVS Motor Company ...................................................................... 23
5. British Sugar plc. v. James Robertson & Sons Ltd ...................................................... 18
6. British Sugar plc. v. James Robertson & Sons Ltd. ..................................................... 18
7. Dav Dayal v. State of Uttar Pradesh ........................................................................... 18
8. Donoghue v. Allied Newspaper.................................................................................... 11
9. F.L.Berawalla & Ors v. R.K.Jain & Ors ..................................................................... 14
10. Gopalnath v. Jagannath Prasad .................................................................................. 17
11. Gramophone Company of India Ltd. v. Shanti Films Corporation ............................. 22
12. Johnslone v. Bernard Jones Publications Ltd. Beausehamp ....................................... 14
13. Ladbroke v. William Hill.............................................................................................. 13
14. M/S. Hindustan Pencils Pvt. Ltd. vs M/S. India Stationery Products .......................... 23
15. Masters and Scholars of the University of Oxford v. Narendra Publishing House and
ors. ............................................................................................................................... 15
16. Microsoft Corporation & K.Mayuri & Ors ................................................................. 10
17. Microsoft Corporation v. S.K.Das ............................................................................... 10
5
18. Music Broadcast Pvt. Ltd. v. Phonographic Performance Ltd .................................... 22
19. N.T Raghunathan v. All India Reporter ltd., Bombay. ................................................. 11
20. Performing Rights Society Ltd. v. Indian Morning Post Restaurant ........................... 22
21. R.K.Malik & Anr v. Kiran Pal & Ors .......................................................................... 23
22. R.M.Subbiah v. Shankaran Nair .................................................................................. 22
23. Raja Pocket Books v. Radha Pocket books .................................................................. 12
24. Ram Rakhpal v. Amrit Dhara Pharmacy ..................................................................... 19
25. Raman Hosiery Factory v. J.K. Synthetics Ltd ............................................................ 22
26. Salinger v. Colting ....................................................................................................... 14
27. Shipman v. Radio pictures Inc ..................................................................................... 11
28. Sholay Media and Entertainment Private Limited and another v. Parag Sanghavi and
others............................................................................................................................ 20
29. Super Cassettes Industries Ltd. v. Hamar Television Network Pvt. Ltd ...................... 14
30. The Himalayan Drug Company v. Sumit ..................................................................... 22
31. Tri-Star Pictures, Inc. v. Unger ................................................................................... 20
32. United Iron and Steel Works v. Government of India .................................................. 19
33. Universal City Studios v. Kamar Industries ................................................................ 12
34. Warner Brothers Pictures v. Columbia Broadcasting System ..................................... 12
6
2. STATUTES REFERRED
1. 1. Copyright Act, 1957 .................................................................................................. 13
2. 2. The Trade Marks Act 1999 ....................................................................................... 16
3. BOOKS REFERRED.
1. Dr. B.L. Wadehra, Law Relating To Intellectual Property (5th edn, Universal Law of
publishing 2016)
2. N.S.Gopalakrishnan And T.G. Agitha, Principles Of Intellectual Property (2nd edn
Eastern Book Company 2014)
3. Melville B. Nimmer And David Nimmer, Nimmer On Copyright (Indian Reprint
LexisNexis 2010)
4. Elizabeth Verkey, Intellectual Property (Eastern Book Company 2015)
5. V.K. Ahuja, Intellectual Property Rights in India (2nd edn LexisNexis 2015)
6. V K Ahuja, Law relating to Intellectual Property Rights (2nd edn LexisNexis 2015)
7. Sumit Malik, Intellectual Property Rights Maunal (1st edn Eastern Book Company
2013)
8. Martin Senftleben, Copyright,Limitations and Three Step Test :An analysis of the three
step test in International and EC copyright Law (Kluwer Law International)
9. V K Ahuja, Law of Copyright and Neighbouring Rights: National and International
perspectives (LexisNexis)
10. Anantha Padhmanabhan, Intellectual Property Rights: Infringement and Remedies
(LexisNexis Butterworth’s Wadhwa, Nagpur)
11. Edward Elgar, New Directions and Copyright law, vol 2 (edited by Fiona Macmillan)
12. Margaret C.Jasper, Esq, The Law of Copyright (2nd edn Oceana Publications Inc.2000)
13. The encyclopaedia forms and precedence, vol 21(2) (5th edn Intellectual Property
Lexis Nexis 2010)
14. Anne Gilson, Lalonde Gilson on Trademarks, vol 3 (Lexis Nexis 2010)
15. Arthur Wineburg Editor, Intellectual Property Protection in Asia (2nd edn Lexis Nexis
2010)
7
16. Dr. Raghbir Singh, Law Relating to Intellectual property, vol 1 (2nd edn Universal Law
Publishing.co.pvt.ltd)
19. Gregory J Battersby and Charles W Grimes, Trademark and Copyright Disputes:
Litigation forms and analysis (Aspen Publishers 2010)
4. TREATIES AND CONVENTIONS
1. Paris Convention For The Protection Of Industrial Property 1883

2. Berne Convention For The Protection Of Literary And Artistic Works 1886
8
STATEMENT OF JURISDICTION
The Plaintiff humbly submits this memorandum for the petition filed before this Honourable
Court. The petition invokes its jurisdiction under Section 62 of the Copyrights Act, 1957 read
along with Section 2(4) of The Code of Civil Procedure. It sets forth the facts and the laws on
which the claims are based.
9
STATEMENT OF FACTS
1. The book series "Ballad of Malice and Power”, a fantasy fiction is written by Jack
Samuelson in which, he had conceived an entire fantasy land of kings, dragons and
mystical creatures intertwined in a complex and addictive political drama and quest for
ultimate power.
2. The series comprised of seven books. Printed and digitized versions of each were
available for sale in the US, members of the European Union, Canada, China and the
Indian Sub-Continent.
3. Brightwalker Studios Ltd. (BSL), a US based network and production company, in 2005
acquired an exclusive license to adapt the 'Ballad of Malice and Power' into a full-fledged
television show called "Valar Dohaeris: The Beginning" (the Show). The first season
released in 2009 and became the most watched show in television history. The show was
released in India through an exclusive online paid portal named ZoomIn.
4. BSL produced and developed a spin-off series (a prelude to the show) called "Boromir
the Conqueror" based on the life and conquests of Boromir Bohemia, a pivotal character
in the plotline. BSL also commenced marketing and released a teaser-trailer in June 2015.
The show was globally released on 9th February 2016.
5. Ms.Earl Grey published a comic strip with Boromir Bohemia as the protagonist in her
blog The Pickwick Papers without prior authorization by Samuelson. She also assigned
her IP rights to Edified Comics Ltd. (ECL), a commercial comic book publication
company registered and based out of Mumbai (India).
6. ECL obtained in January 2015 a trademark in the word BOROMIR and in a pictorial
representation of Boromir from the comic. ECL released goods with its logo and a
pictorial representation of Boromir in February 2105.
7. BSL decided to produce a spin-off series with Boromir as the protagonist in February
2105 and went ahead to release the trailer in June 2015 and the series in February 2016.
8. ECL released the comic book “The Bohemian Rhapsody” on 16th August 2016 following
which Jack Samuelson and BSL filed a suit in the High Court of Bombay against Earl
Grey and ECL for misappropriation of the character Boromir.
10
9. The defendants retorted with against BSL for unlawful use of its trademark on the
“Boromir the Conqueror.”
11
STATEMENT OF ISSUES
1. Whether the works of Jack Samuelson and Brightwalker Studios Ltd. are protected
under the Indian Copyright Act, 1957?
2. Whether Earl Grey and Edified Comics Ltd. (defendants) have infringed the
copyrights of Jack Samuelson and Brightwalker Studios Ltd.?
i. Whether the defendants’ comic strip, ‘The Bohemian Rhapsody’ is based on
the character Boromir Bohemia from ‘Ballad of Malice and Power’ by Jack
Samuelson?
ii. Whether the work of Jack Samuelson with respect to the character Boromir
Bohemia and the Land of Vengursa is copyrightable?
iii. Whether the acts of the defendants are permitted by the Copyright Act, 1957?
3. Whether there has been an infringement of trademark by BSL on usage of the word
“BOROMIR” in its TV series title.
i. Whether there has been an infringement of the trade mark under Sec 29(4) of
The Trade Marks Act 1999?
ii. Whether by virtue of Section 34 BSL can claim vested interest in the use of
the word “BOROMIR” as a prior user?
4. Whether the plaintiffs are entitled to any remedy. If so, the nature and quantum of the
remedy.
i. Whether permanent injunction order be decreed against the defendants.
ii. Whether the plaintiffs are entitled to receive damages.
12
SUMMARY OF ARGUMENTS
1. The works of Jack Samuelson and Brightwalker Studios Ltd. are protected in
India by the Copyright Act, 1957.
In accordance with Section 40 of the Copyright Act and the International Copyright
Order 1999 and with consideration to the fact that both India and USA are signatories
to the Berne Convention and the Universal Copyright Convention, the works of Jack
Samuelson and BSL, with its principal place of business in USA, are protected by the
Copyright Act, 1957.
2. Earl Grey and Edified Comics Ltd. have infringed the copyrights of Jack
Samuelson and Brightwalker Studios Ltd.
- The work of the Plaintiffs with respect to the character Boromir Bohemia and the
Land of Vengursa is copyrightable.
- Defendants’ comic strip, ‘The Bohemian Rhapsody’ is based on the character
Boromir Bohemia from ‘Ballad of Malice and Power’ by Jack Samuelson.
- The acts of the Defendants are not permitted by the copyright act, 1957.
3. There has been no infringement of trade mark by virtue of sec 29(4) of The
Trade Marks Act 1999.
Since, the mark is used in dissimilar goods, use of mark by the plaintiff does not
confer any unfair advantage, it is not detrimental to the distinctiveness or reputation of
the mark of the defendants.
4. The use of the mark by the plaintiff is protected under section 34 (a) as a vested
right of a prior user.
The plaintiff’s right to use the word Boromir is protected under Section 34 and
common law principles by virtue of being the prior user.
5. The plaintiffs are entitled to preventive relief.
The plaintiffs are entitled to obtain a decree of permanent injunction against the
defendants under Section 38 of Specific Relief Act, 1963.
6. The plaintiffs are entitled to receive damages.
Under Section 40 of the Specific Relief Act and Section 55 of the Copyright Act, the
Plaintiffs are entitled to receive damages along with the preventive relief.
13
ARGUMENTS ADVANCED
1. THE WORKS OF JACK SAMUELSON AND BRIGHTWALKER STUDIOS

LTD. ARE PROTECTED IN INDIA BY THE COPYRIGHT ACT, 1957.
¶ (1) In accordance with Section 40(i) of the Copyright Act and the International Copyright
Order, 1999 published in the Gazette of India dated 6th April 1999, the Copyright Act shall
apply to the present case. As the Plaintiffs are based in USA, a signatory to the Berne
Convention and the Universal Copyright Convention, the Copyright Act protects the rights of
authors of USA. This view was established by the Courts in Microsoft Corporation &
K.Mayuri & Ors. 1 , Microsoft Corporation v. S.K.Das 2 and Adobe Systems Inc. v. Sachin
Naik.3
2. EARL GREY AND EDIFIED COMICS LTD. HAVE INFRINGED THE

COPYRIGHTS OF JACK SAMUELSON AND BRIGHTWALKER STUDIOS
LTD.
A. THE WORK OF THE PLAINTIFFS WITH RESPECT TO THE CHARACTER

BOROMIR BOHEMIA AND THE LAND OF VENGURSA IS COPYRIGHTABLE.
1) SUBJECT MATTER OF COPYRIGHT ACT
¶ (2) According to Section 13(a) and (b) the works of the Plaintiffs warrant copyrights under
the Copyright Act, 1957. The works are original and the ideas are expressed in the form of
writing and cinematography.
2) THE LAND OF VENGURSA AND BOROMIR BOHEMIA ARE WELL

EXPRESSED AND COPYRIGHTABLE
¶ (3) The defendant author has based his work on the Land of Vengursa, the character
Boromir Bohemia along with the bits and pieces of the parts containing Boromir’s
characterization4, all of them borrowed from the Plaintiff author’s work.
1
[2007] PTC 415 (Del)
2
[2013] PTC 335 (Del)
3
[2013] PTC 443 (Del)
4
P.2 para.VII Moot problem
14
¶ (4) The fantasy novel by the Plaintiff comprises of an imaginary Land of Vengursa with its
own history and legends, an addictive political drama, a character Boromir Bohemia who is
pivotal in the shaping of the present political landscape in the novel 5 , all of them well-
expressed.
¶ (5) The Plaintiff’s books are a word portrait of the Land of Vengursa and the character
Boromir. Boromir’s characterization is such as to make him an essential back-drop to the
plotline. Both in the books and the Show, the character of Boromir Bohemia was noticeably
expressed by methods employed by the Plaintiffs, which were fitting to the plotline.
¶ (6) Therefore, the expression of the Land of Vengursa and the character Boromir by the
Plaintiffs warrant copyright protection as per the principles held in Donoghue v. Allied
Newspaper, 6 Shipman v. Radio pictures Inc,7 N.T Raghunathan v. All India Reporter ltd.,
Bombay.8
3) THE CHARACTER OF BOROMIR WAS WELL DELINEATED AND

HENCE COPYRIGHTABLE
¶ (7) The character Boromir is well-delineated by the various attributes and feats attached to
him like: ‘Boromir was the greatest conqueror in the land of Vengursa, the last man to ride
(fly) a full-grown dragon and most importantly played a pivotal role in shaping what is the
present political landscape.’ 9 Therefore Boromir is identified with the political plotline of
the books. The fictional land’s political situation along with Boromir’s contributions to it is
so substantial so as to form the kernel of the Plaintiff’s work.
¶ (8) Moreover, the character of Boromir though not alive in the Series, is sufficiently well
attributed with his own feats, accomplishments and greatness so as to remind the reader of the
Plaintiff author’s work with respect to those traits like ‘greatest conqueror”, ‘last man to fly
a dragon’, etc., which satisfy the Nichols Test 10 . All of these traits have been borrowed
unauthorized by the defendants.
5
ibid
6
[1937] 3 All. 503 (E.R.)
7
[1937] 100 F.2d 533 (S.D.N.Y.)
8
[1971] AIR 48 (Bom)
9
P.2 para. V Moot problem
10
Nichols v. Universal Pictures Corporation, [1930] 45 F.2d 119 (Cir)
15
¶ (9) In Raja Pocket Books v. Radha Pocket books11, it has been held that the character can be
copyrighted. In Anderson v. Stallone 12 , the appellant had written the story based on the
character of ‘Rocky’, which appeared in the earlier ‘Rocky’ movie series. The appellant
denied the allegation of infringement and claimed that ‘Rocky’ as not copyrightable. The
court ruled in favour of the defendant saying that the physical and emotional characteristics
of ‘Rocky’ are set forth in tremendous detail and hence character was highly delineated.
¶ (10) Since the above discussed portions constitute ‘the story being told’ in the Plaintiff’s
work, they warrant copyright protection as per the interpretation of law in Warner Brothers
13
Pictures v. Columbia Broadcasting System and Universal City Studios v. Kamar
Industries 14 . The above mentioned portions are substantial to both the authors’ work but
original to the Plaintiff author.
B. DEFENDANTS’ WORK IS A SPECIMEN OF INDIRECT COPYING OF THE

PLAINTIFFS’ WORK
¶ (11) There are three types of copying: 1) Direct copying, 2) Indirect copying and 3)
Subconscious copying. The case at hand is a case of indirect copying which means copying
the work of a person by changing its form. In the defendants’ work, the author started out her
twist on Boromir Bohemia standing on Samuelson's shoulders in the form of comics. She
collated all the scattered bits and pieces on Boromir's story from the seven books and defined
him as the protagonist in her version of the conquests Boromir had in the land of Vengursa.15
¶ (12) The fictional Land of Vengursa, character of Boromir, political landscape and the
overall plotline constitute a substantial part of the Plaintiffs’ work and have been borrowed
by the defendant author without authorization.
¶ (13) An instance of copying can be concluded if the defendants’ work has qualitative
borrowed parts from the Plaintiffs’ work16. It is submitted that if there are striking similarities
between the two works, and one work was published before the other then the presumption
11
[1997] 17 PTC 573 (Del)
12
[1989] 11 USPQ 2D 1161 (Cal.)
13
[1954] 106 USPQ 103
14
[1982] 217 USPQ 1162
15
P.2 para VII, Moot problem
16
V.K. Ahuja, Intellectual Property Rights in India, (2nd edn. Lexis Nexis 2015)
P.2 para. VI Moot problem
16
shall be that the defendant has copied from the plaintiff’s work unless it is rebutted.17 In the
case at hand, the defendants have copied substantial ideas from the Plaintiffs’ work. The fact
that the defendant author has employed her creativity and labour18 does not exonerate her
from the guilt of copyright infringement19, as the doctrine of ‘sweat of the brow’ was rejected
by the Supreme Court of India.20
¶ (14) As per the judgement in Ladbroke v. William Hill21, even a short extract which is vital
shall be an instance of copying. Therefore, although the defendant author has developed her
own comic strip with a different storyline, it shall be considered as a copyright infringement
as per law laid down by Johnslone v. Bernard Jones Publications Ltd. Beausehamp22 and
Super Cassettes Industries Ltd. v. Hamar Television Network Pvt. Ltd.23 and F.L.Berawalla
& Ors v. R.K.Jain & Ors.24 irrespective of the quantity of work copied.
¶ (15) With reference to the case Salinger v. Colting,25in which it was held that “Aging the
character and playing him in present day does not add something new particularly, since the
character’s personality remains intact as derived from the original work”, it should be
inferred that the work of the defendant is an infringement of copyright under Section 51of the
Copyright Act, 1957
¶ (16) In Associated Electronic & Electrical Industries v. Sharp Tools26, it is observed that,
“One of the surest 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 would be clearly of the opinion and get an unmistakable impression
that the subsequent work appears to be a copy of the first. In other words, dealing
with the question of infringement of copyright of the applicant’s work by the
defendant’s work, the court is to test on the visual appearance of the object and
drawing, design, or artistic work in question, and by applying the test, viz., ‘LAY
17
P.2 para. VI Moot problem
18
Singh R, “Understanding The Concept Of Originality Under Copy Right Law In India” II(9) Law Mantra
Think Beyond Others
19
[2008] 36 PTC 1 (SC)
20
[1964] 1 WLR. 273
21
[1938] 1 Ch. 599
22
[2011] 45 PTC All 3 (Del)
23
[1984] 7 DRJ 6
24
[2009] 641 F SU2PP 2d 50 (S.D.N.Y.)
25
[2009] 641 F SU2PP 2d 50(S.D.N.Y.)
26
[1991] AIR 406 (Kar)
17
OBSERVER TEST’ whether to persons who are not experts in relation to objects of
that description, the object appears to be a reproduction.”
If a normal person is made to read the comic book and the book series, then it can be shown
through the test that he will automatically assume that the comic book as a prequel to the
book and TV show. So basically, the defendants are making money by infringing the
copyright of the plaintiff and also the market by fooling the public.
C. THE ACTS OF THE DEFENDANTS ARE NOT PERMITTED BY THE COPYRIGHT

ACT, 1957.
¶ (17) Section 52 of the Copyright Act provides for exceptions to copyright according to
which some unauthorized work of copyright work for specific reasons are allowed by law.
Such unauthorized use is termed as fair use or fair dealing.27 This doctrine of fair use or fair
dealing has not been defined.
¶ (18) However, in the case Ashdown v. Telegraph Group Ltd.28, the Court laid down a test to
determine fair use. The following three factors were laid down to determine fair use:
i. Whether the alleged fair dealing is in commercial competition with the owner’s
exploitation of work.
ii. Whether the work has already been published or otherwise exposed to the public.
iii. The amount and importance of the work which has been taken.
I. The works of ECL is not a fair dealing as it is in commercial competition

with the owner’s exploitation of work.
¶ (19) As held in Chancellor Masters and Scholars of the University of Oxford v. Narendra
Publishing House and ors.29:
(1) Fan fiction published for personal, non-commercial and even educational uses are more
likely to be considered as fair use. It cannot be emphasized enough that the reason why
fan fiction is tolerated throughout the world is its non-commercial nature. The moment a
fan fiction writer decides to exploit the popularity his stories have garnered and attempts
27
‘Fair dealing’ or ‘fair use’ have is a doctrine that allows for some copying of a copyright work without
deeming the copier an infringer, even though the copyright holder has not authorized the copying.
28
[2001] 4 All ER 666
29
[2008] 38 PTC 385 (Del)
18
to compete and profit out of what was granted as a privilege by the actual content creator,
the infringement might be caused.
(2) The nature of the copyrighted work
(3) The amount and substantiality of the portion used in relation to the copyrighted work as a
whole; and
(4) The effect of the use upon the potential market for or value of the copyrighted work.
Earl Grey’s fan-fiction was a fair use as long as it was non-commercial. However, upon the
commercial gratification by the defendant through advertisements and IP assignments, the
fair use came to a cessation.
¶ (20) It is so with respect to the particular market of the Plaintiffs’ works. The market for the
Plaintiffs’ works for the past twenty six years has been associated with the fantasy genre. The
Plaintiffs have competed in the market using their works Ballad of Malice and Power and
Valar Dohaeris: The Beginning. The Plaintiffs had long been using their original works and
their adaptations for commercial gratification including other works based on their original
works such as the series Boromir the Conqueror. The market for the defendants’ work is also
the same as that of the Plaintiffs. Permitting the defendants work will lead to competition
between the Plaintiffs and the defendants; along with copyrights to the defendants’ work.
This in turn would result in a situation which would render the Plaintiffs incapable of
appropriating their works to any future use.
II. The work has been published and exposed to the public
¶ (21) The defendants’ work has been published and has gained popularity both in the blog
‘The Pickwick Papers’ and the comic by ECL. However, the Plaintiffs’ works enjoy greater
reputation and popularity as the books by Samuelson have been globally popular since 1994
and the TV Shows of the Plaintiff had been a hit and became the most watched show in
television history. The moment a fan fiction writer decides to exploit the popularity his
stories have garnered and attempts to compete and profit out of what was granted as a
privilege by the actual content creator, the infringement might be caused.
III. The work taken is substantial and of importance
19
¶ (22) As discussed earlier, the work taken from the Plaintiff’s work is substantial and forms
the kernel of his books. As held in Gopalnath v. Jagannath Prasad,30 no one is entitle to avail
himself of the previous labor of another for the purpose of conveying to the public the same
information, although he may append additional information to that already published.
Therefore, the doctrine of fair play cannot be applied to the case at hand and it should be
inferred that the acts of the defendants are not permitted by Section 52 and hence necessarily
amount to copyright infringement under Section of the Copyright Act, 1957.
3. THERE HAS BEEN NO INFRINGEMENT OF TRADE MARK BY VIRTUE

OF SEC 29(4) OF THE TRADE MARKS ACT 1999.
¶ (23) Section 29(4) is as follows: A registered trademark is infringed by a person who not
being a registered Proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which-
(a) Is identical with or similar to the registered trade mark and
(b) Is used in relation to goods or services which are not similar to those for which the trade
mark is registered: and
(c) The registered trade mark has a reputation in India and the use of the mark without due
cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the
registered trade mark.31
¶ (24) There are three components to this:
a. Using of an identical and deceptively similar mark.
b. It is used in relation to dissimilar goods or service
c. The use of the trade mark takes unfair advantage of or is detrimental to the distinctive
character or repute of the registered trade mark.
A. USE OF MARK IN DISSIMILAR GOODS
30
[1938] AIR AII 266
31
The Trade Marks Act 1999
20
¶ (25) In assessing product similarity, the Court should consider the nature of the product
themselves and the structure of the relevant markets. The use of the said mark BOROMIR in
the TV series “Boromir the conqueror” is a use of the mark in an entirely dissimilar service as
a comic strip is a different service from that of a TV show. A comic strip is an inanimate
portrayal of a series of events whereas a TV show is one that involves the motion of pictures.
The two of them are marketed in an entirely different nature and available to customers
through different broadcasters and sellers. In its essentiality the two products are dissimilar
and there can be no confusion with regard to the difference between the goods.
B. USE OF MARK DOES NOT TAKE UNFAIR ADVANTAGE
¶ (26) There is no evidence of actual or probative confusion. The franchise of BSL enjoys
worldwide reputation which is independent of the defendants’ reputation. Moreover, the
association of the plaintiffs with the character Boromir is longer than the defendants.
Therefore, the plaintiffs do not take unfair advantage of the reputation or goodwill of the
defendants.
¶ (27) When deciding on the element of association, the overall pattern of trade is to be
considered in terms of the factors identified by JACOB J. in British Sugar plc. v. James
Robertson & Sons Ltd.32, namely, uses, users and physical nature of the relevant goods and
services; channels of distribution, positioning in retail outlets, competitive leanings and
market segmentation.
¶ (28) Since the uses, users, nature of the products in question, channels of distribution,
competitive leanings and specific markets for the products are different, it cannot be held that
the plaintiffs are dishonestly benefitting from the goodwill and reputation of the defendants.
C. USE OF MARK NOT DETRIMENTAL TO THE DISTINCTIVE CHARACTER
¶ (29) It is submitted that the Trade Mark registered by ECL does not have any distinct
feature of its own. In the case Dav Dayal v. State of Uttar Pradesh33 the court held that the
object of the trade mark is to protect the manufacturer and seller with a distinct trade mark
against invasion. In the case Ram Rakhpal v. Amrit Dhara Pharmacy34 the court held that to
decide whether a mark is distinct the tribunal may take into consideration whether it is
32
[1996] R.P.C. 281 (CD) (UK)
33
[1959] AIR 33 SC
34
[1957] AIR All 683
21
inherently so adopted to distinguish. Inherently adapted means that it has an innate quality of
distinctiveness, in the present case there is no element of distinctiveness in the trade mark
registered by ECL. There is no distinctiveness so as to distinguish the good or service of the
defendants and hence there can be no detrimental effect on the distinctiveness.
¶ (30) According to the facts, the book series and the TV series, Balled of Malice and Power,
and Valar Dohaeris are an unparalleled work in fan fiction and have been in existence since
the year 1994 and 2009 respectively. In each of the book and the TV show there has been a
mention of ‘Boromir’ who has played a pivotal role in the series and the book. It is also given
in the facts that the last episode of the TV series which was released before the registration of
the said trade mark had about 20 million viewers and the show was broadcasted in India as
well through an online portal known as ZoomIn. In the last episode as well the name Boromir
finds mention. In such a case the use of the word Boromir, would be associated with the TV
series and the book authored by Jack Samuelson due to its worldwide reach and it being a
creation of the author of the book. Hence the innately distinct characteristic of a trademark
needed to distinguish the proprietor’s good or service is not present here
¶ (31) In the case United Iron and Steel Works v. Government of India35 it was held that there
was no time period to find out the acquisition of distinctiveness. Sec 32 of the Trade Marks
Act says that if there is no distinctiveness during registration and if, after registration and
before filing the suit there is an acquisition of distinction then it would be deemed distinct
enough to be differentiated.
¶ (32) In the present case there is no acquisition of distinction as well as ECL had not used
the word BOROMIR in the merchandise that was sold36 and neither did the said comic series
was titled BOROMIR but in the comic series the character was named BOROMIR just
similar to how the word has been used by Jack Samuelson and BSL in the book and the TV
series respectively.
¶ (33) And even after the release of the comic series it was only an expectation that the
comics would break the bestselling comic series. But it is a well-established fact that the there
was no unparalleled fiction to the book Ballad of Malice and Power and the TV series37.
Hence it can be said that there is no acquisition of secondary meaning as the association of
the people with the word Boromir would still be with the books and the TV series and not the
comic series.
35
[1967]AIR Punj 64
36
P.4 para XI Moot Problem
37
P.1 para I Moot Problem
22
D. USE OF MARK NOT DETRIMENTAL TO THE REPUTE OF THE REGISTERED

TRADE MARK
¶ (34) While the plaintiff speculates as to the inferiority of the defendants’ Boromir the
Conqueror, there is no evidence of record that that defendants’ product is inferior to that of
the plaintiffs. There is no evidence that the plaintiffs acted in bad faith.
¶ (35) In the case, Tri-Star Pictures, Inc. v. Unger,38 the court awarded injunctive relief based
on the poor critical reviews and extensive evidence of actual confusion viewing the
defendant’s work as an authorized sequel to the plaintiff’s film.
¶ (36) In the case Sholay Media and Entertainment Private Limited and another v. Parag
Sanghavi and others, the court held that there was a loss of reputation to the trademark
owners only on evidence that the infringing movie was a failure.
¶ (37) The TV Show by the plaintiff had not received any poor reviews or depicted any
obscene content that may result in a loss of reputation to the defendants.
4. THE USE OF THE MARK BY THE PLAINTIFF IS PROTECTED UNDER

SECTION 34 (A) AS A VESTED RIGHT OF A PRIOR USER.
¶ (38) Section 34 (a) restrains the proprietor of a registered trademark to interfere with the
use by any person of a trademark identical with or nearly resembling it in relation to goods or
services in relation to which that person or a predecessor in title of his has continuously used
that trade mark from a date prior to the use of the first-mentioned trade mark in relation to
those goods or services be the proprietor or a predecessor in title of his or to the date of
registration of the first-mentioned trade mark in respect of those goods or services in the
name of the proprietor of a predecessor in title of his, whichever is the earlier.
¶ (39) According to the facts of the instant case, Plaintiff is the author of the book series
Ballad of Malice and Power which originally created the character of Boromir Bohemia. The
series received a huge response from the readers and is the reason behind the introduction and
the very inception of the character of Boromir Bohemia in the minds of the readers including
one of the defendants Ms. Earl Grey. For a span of twenty years, which is the time period
between the first and the last book of the series, the book has been mentioning the character
of Boromir Bohemia and his pivotal role in the plotline of the series.
38
[1998] 14 F. Supp. 339 (S.D.N.Y.)
23
¶ (40) A look at the legislative intent of the Trade Marks Act,1999 suggests that the purpose
of assigning a mark with a good or a service is to get that particular good or service
recognized distinctively by that vey mark. In this case, the character Boromir was used for a
long time in the book series Ballad of Power and Malice and the TV show Valar Dohaeris:
The Beginning. In continuation of this trade, the name Boromir was used in the title of the
series Boromir the Conqueror, which was marketed since June 2015 and released in February
2016. The defendants never used the word Boromir neither in any of their merchandise nor in
the title of their comics and released their comics only in August 2016. Hence, it can be
concluded that the Plaintiff has already been using the mark Boromir as a prior user and
therefore his use of the trademark is protected irrespective of the registration of BOROMIR
by the defendant in January, 2015.
¶ (41) When rival claims are raised with regard to the right to use a trade mark, the rights of
the rival claimants fall to be resolved on the basis that within the area of conflict:
(a) The senior user prevails over the junior user;
(b) The junior user cannot deny the senior user's rights;
(c) The senior user can challenge the junior user unless and until is it inequitable for him
to do so.
¶ (42) The principles themselves are deducible from:
(a) The right to protection conferred upon senior users at common law
(b) The common law rule that the legitimacy of the junior user's use of the mark in issue
must normally be determined as of the date of its inception, and
(c) The potential for co-existence to be permitted in accordance with equitable principles.
¶ (43) In regard to an application for registration of a mark not yet used but proposed to be
used or for registration of a mark used in relation to particular services but proposed to be
used in relation to additional services, the designer or originator of the mark will be the
proprietor provided that no one else has become the first user of the mark in relation to those
services. 39 Therefore, the defendants cannot restrain the plaintiffs from using the word
Boromir in a TV show as they might in the future; use the word in a TV show.
5. THE PLAINTIFFS ARE ENTITLED TO PREVENTIVE RELIEF
39
Venkateswaran Trade Marks And Passing-Off (5th edn)
24
¶ (44) The courts in India have long recognized the need for the preventive relief to protect
rights and property. As laid down in Section 38 (3) (b) (c) (d) of the Specific Relief Act, 1963
and in Raman Hosiery Factory v. J.K. Synthetics Ltd.40 and Gramophone Company of India
Ltd. v. Shanti Films Corporation,41 a perpetual injunction can be granted-
1. To prevent the breach of an obligation existing in favour of the plaintiff, whether
express or by implication, or when the defendant invades or threatens to invade the
plaintiffs’ rights to, or the enjoyment of property, inter alia, where invasion is such
that compensation in money would not afford adequate relief; or
2. Where there exists no standard for ascertaining the actual damage caused or likely to
be caused by the invasion; or
3. Where the injunction is necessary to prevent multiplicity of judicial proceedings.
¶ (45) As held in R.M.Subbiah v. Shankaran Nair42, Performing Rights Society Ltd. v. Indian
Morning Post Restaurant43,The Himalayan Drug Company v. Sumit44,Music Broadcast Pvt.
Ltd. v. Phonographic Performance Ltd.,45 the plaintiffs are entitled to a relief of perpetual
injunction.
¶ (46) From the facts of the case at hand, it is seen that the defendants have infringed the
copyrights of the plaintiffs, an intangible right whose valuation is not necessarily possible.
Moreover, every copy of the comic sold by the defendant is an infringing copy and the
plaintiff would be forced to initiate multiple judicial proceeding to recover damages from
each sale if an injunction is not granted. Therefore, the plaintiffs are entitled to a preventive
relief.
6. THE PLAINTIFFS ARE ENTITLED TO DAMAGES
¶ (47) In addition to the preventive relief, the plaintiffs are entitled to receive damages under
Section 40 of the Specific relief Act and Section 55 of Copyright Act, as held in held in M/S.
40
[1974] AIR Del 207 (Del)
41
[1997] AIR Cal 63 (Cal)
42
[1979] AIR Mad 56 (Mad)
43
[1939] AIR Bom 347 (Bom)
44
[2006] 126 DLT 23
45
[2004] 29 PTC 282 (Bom)
25
Hindustan Pencils Pvt. Ltd. vs M/S. India Stationery Products 46 ,,Bajaj Auto Ltd. v. TVS
Motor Company.47, R.K.Malik & Anr v. Kiran Pal & Ors48.
Since, each copy sold by ECL is an infringing copy; all the profits obtained by the sale of the
comics should be awarded as damages along with a pecuniary damage of Rs. 1, 00, 00,000.
46
[1990] AIR Del 19 (Del)
47
[2008] ILLJ 726 (Mad)
48
[2009] 3 TAC 1 (SC)
26
PRAYER
In light of the issues raised, arguments advanced and authorities cited, defendants
most humbly request this High Court to adjudge and declare that:
1. That the Defendants be held guilty of misappropriation of character Boromir Bohemia and
that a Permanent Injunction is to be passed according to Section 38 of the Copyright Act,
1957 to prevent them from further misappropriating the character Boromir Bohemia.
2. That the Defendants be slapped with damages as deemed fit by the Honourable Court with
reference to the gravity of the issue.
And pass any other order it may deem fit in the interest of justice, equity and good
conscience.
COUNSELS FOR PLAINTIFFS
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SP SATHE NATIONAL MOOT COURT COMPETITION 2016-17 | MEMORIAL FOR THE PETITIONER

MEMORIAL FOR SP SATHE MOOT COURT COMPETITION

IN THE HON‘BLE HIGH COURT OF BOMBAY

Jack Samuelson and Brightwalker Studio Ltd …..Plaintiffs

Earl Grey and Edified Comics Ltd …..Defendants

Written Submissions on behalf of the Plaintiffs

Counsels for Plaintiffs

MEMORIAL FOR SP-07

LIST OF ABBREVIATIONS ................................................................................................. 4

TABLE OF AUTHORITIES .................................................................................................. 5

1. CASES CITED .............................................................................................................. 5

2. STATUTES REFERRED ................................................................................................ 7

3. BOOKS REFERRED. ..................................................................................................... 7

4. TREATIES AND CONVENTIONS ............................................................................... 8

STATEMENT OF JURISDICTION ...................................................................................... 9

STATEMENT OF FACTS .................................................................................................... 10

STATEMENT OF ISSUES ................................................................................................... 12

SUMMARY OF ARGUMENTS ........................................................................................... 13

ARGUMENTS ADVANCED ................................................................................................ 14

1. THE WORKS OF JACK SAMUELSON AND BRIGHTWALKER STUDIOS LTD.

ARE PROTECTED IN INDIA BY THE COPYRIGHT ACT, 1957. ................................. 14

2. EARL GREY AND EDIFIED COMICS LTD. HAVE INFRINGED THE

COPYRIGHTS OF JACK SAMUELSON AND BRIGHTWALKER STUDIOS LTD. ... 14

A. THE WORK OF THE PLAINTIFFS WITH RESPECT TO THE CHARACTER

BOROMIR BOHEMIA AND THE LAND OF VENGURSA IS COPYRIGHTABLE. 14

B. DEFENDANTS’ WORK IS A SPECIMEN OF INDIRECT COPYING OF THE

PLAINTIFFS’ WORK ..................................................................................................... 16

C. THE ACTS OF THE DEFENDANTS ARE NOT PERMITTED BY THE

COPYRIGHT ACT, 1957. ............................................................................................... 18

3. THERE HAS BEEN NO INFRINGEMENT OF TRADE MARK BY VIRTUE OF

SEC 29(4) OF THE TRADE MARKS ACT 1999. ............................................................. 20

A. USE OF MARK IN DISSIMILAR GOODS ......................................................... 20

B. USE OF MARK DOES NOT TAKE UNFAIR ADVANTAGE .......................... 21

C. USE OF MARK NOT DETRIMENTAL TO THE DISTINCTIVE CHARACTER

D. USE OF MARK NOT DETRIMENTAL TO THE REPUTE OF THE

REGISTERED TRADE MARK ...................................................................................... 23

4. THE USE OF THE MARK BY THE PLAINTIFF IS PROTECTED UNDER

SECTION 34 (A) AS A VESTED RIGHT OF A PRIOR USER........................................ 23

5. THE PLAINTIFFS ARE ENTITLED TO PREVENTIVE RELIEF ............................ 24

6. THE PLAINTIFFS ARE ENTITLED TO DAMAGES ............................................... 25

1. AIR - All India Reporter

23. F2d - Federal Reporter 2nd Series

1. Adobe Systems Inc. v. Sachin Naik. ............................................................................... 10

2. Ashdown v. Telegraph Group Ltd ................................................................................ 15

3. Associated Electronic & Electrical Industries v. Sharp Tools .................................... 14

4. Bajaj Auto Ltd. v. TVS Motor Company ...................................................................... 23

5. British Sugar plc. v. James Robertson & Sons Ltd ...................................................... 18

6. British Sugar plc. v. James Robertson & Sons Ltd. ..................................................... 18

7. Dav Dayal v. State of Uttar Pradesh ........................................................................... 18

8. Donoghue v. Allied Newspaper.................................................................................... 11

9. F.L.Berawalla & Ors v. R.K.Jain & Ors ..................................................................... 14

10. Gopalnath v. Jagannath Prasad .................................................................................. 17

11. Gramophone Company of India Ltd. v. Shanti Films Corporation ............................. 22

12. Johnslone v. Bernard Jones Publications Ltd. Beausehamp ....................................... 14

13. Ladbroke v. William Hill.............................................................................................. 13

16. Microsoft Corporation & K.Mayuri & Ors ................................................................. 10

17. Microsoft Corporation v. S.K.Das ............................................................................... 10

18. Music Broadcast Pvt. Ltd. v. Phonographic Performance Ltd .................................... 22

19. N.T Raghunathan v. All India Reporter ltd., Bombay. ................................................. 11

21. R.K.Malik & Anr v. Kiran Pal & Ors .......................................................................... 23

22. R.M.Subbiah v. Shankaran Nair .................................................................................. 22

23. Raja Pocket Books v. Radha Pocket books .................................................................. 12

24. Ram Rakhpal v. Amrit Dhara Pharmacy ..................................................................... 19