Citation: Civil Appeal No. 6472 of 2004
Bench: Justice B.N. Agarwal & Justice P.P. Naolekar
Court: Supreme Court of India
The Petitioners, Eastern Book Company, a partnership firm, and EBC Publishing Private Limited were engaged in the business of printing and publishing various legal books together. One such publication was titled ‘Supreme Court Cases’ or SCC. This publication has existed since 1969 and consisted of all non-reportable, reportable and short judgements, orders, records of proceedings and directions of the Supreme Court. They published copy-edited versions of these judgments along with certain additions such as formatting, numbering, cross-referring, and other contributions that rendered it user-friendly. It also incorporated headnotes, footnotes, and long notes.
In 2004, the Respondents, Spectrum Business Support Limited, (also called Respondent-1) and Regent Datatech Private Limited (Respondent-2) put out a software titled ‘Grand Jurix’ and ‘The Laws’ respectively. These companies were alleged to have copied the entire module from SCC onto CD-ROMs, thereby infringing the appellants’ IP rights.
Whether the Petitioners’ work is eligible for protection under Copyright Law?
Whether the Defendants infringed the Petitioners’ copyrights?
Whether individual elements added by the Petitioners suffice to receive copyright protection over the entire work?
Section 13, 14 and 52 (1) (iv) (q) of the Indian Copyright Act, 1957.
The Petitioners contended that they have copyright in their version of the judgements compiled in SCC, which is a product of their skills, ability, labour and capital. They did not intend to claim monopoly over the judgement, but the specific format in which they publish them. The Petitioners further claimed that their work was infringed by the Respondents because all the modules contained in the CD-ROM were similar to their work and they had replicated the Petitioners’ way of publishing the legal reports with the exact arrangements, sequences, and choices of cases. It was further alleged that the Respondents copied the entire judgement as put forth in the Petitioners’ law report with the same formatting, paragraph numbers, copy-editing and footnotes.
The Respondents, however, presented that the Petitioners’ product is not eligible for protection under copyright law as it is merely a derivative work of Supreme Court’s judgments. Since it does not portray independent creation, it is not an original work. It was argued that the additions made by the Petitioners were not sufficient enough to render it protection under the Copyright Act. Further, they applied the merger doctrine and stated that the idea intended to be expressed by the Petitioners and the form in which they express the idea are inseparable, therefore leaving no room for a possible alternative expression.
The Court held that for a derivative work to receive copyright protection, it must be demonstrated that the derivative work is more than just a copy of the original. It must contain the author’s independent skill apart from capital and labour. The court wanted to identify whether the petitioner's work was original. For doing so, they determined that the modicum of creativity was too high of a standard whereas sweat of the brow test was too low of a standard. Hence, they decided to apply the Canadian test of "skill and judgement". According to the court, skill meant those which are not trivial and are substantial and judgement meant the use of resources that went beyond the mere expenditure of labour and capital. The Respondents were ordered to refrain from copying the paragraphs made by the Petitioners for internal referencing and to stop using the Petitioners’ views on dissent and concurring opinions of the cases. The final judgement was in favour of the Petitioners, giving them an exclusive right over their content, prohibiting the utilisation of the same.
Eastern Book Company & Ors. v. D. B. Modak and Anr. created a new benchmark for the interpretation of "originality" as a concept by defining a balance between ‘Sweat of the Brow’ and the ‘Modicum of Creativity’ test. At one end of the spectrum, there is the ‘Sweat of the Brow’ test to determine originality, which entitles anybody with the provisions of labour and capital to be eligible for copyright protection. On the other hand, we have a benchmark of creativity, which requires a creation or a production to be novel and non-obvious. The Court is seen to have adopted a ‘middle path’ with the prerequisite of ‘adequate skill and judgement’, thereby setting a standard for proving originality.