Citation: AIR 1989 Ker 49
Court: Kerala High Court
Bench: K. Sukumaran, J.
Facts:
Malayala Manorama Co. Ltd. (the “Respondent”), a well-established publishing house initially filed a case for copyright infringement against V.T. Thomas (“Thomas”), and Kala Kaumudi, a rival publishing house (together the “Appellants”). Thomas created a cartoon series based on two characters – Boban and Molly which were routinely published by the Respondent. Even after the termination of Thomas’s employment with the Respondent, he continued making cartoons based on the characters. These were published by his new employer, and the rival publishing house – Kala Kaumudi. In response to this, the Respondents filed a suit for copyright infringement and injunction against the Appellants which was allowed by the District Court. Aggrieved by the same, the Appellants filed the present appeal with the High Court of Kerala.
Issues:
Whether an author has the right to continue using certain characters after the termination of his employment?
Whether characters can be protected as a subject matter of copyright?
Rules:
Copyright Act, 1957
Section 2(d) – Definition of author
Section 17 – Ownership of copyright
Analysis:
Whether an author has the right to continue using certain characters after the termination of his employment?
Copyright Ownership – Contract of Service versus Contract for Services
The Respondent contended before the Court that since Thomas had created the characters of Boban & Molly during the course of his employment with the Respondent, the Appellants had no right to use or publish material including the characters or the cartoons.
In order to answer this question, the Court had to determine whether the cartoons and characters were created by Thomas under a contract of service or a contract for services. Section 17(a) and (c) of the Copyright Act, 1957 provide for the ownership of copyright in case of a contract of service or apprenticeship and attributes an employer-employee characteristic to such contracts. In a contract for services, the person providing the service acts as an independent contractor as opposed to an employee. The fundamental test applied to determine the nature of the relationship between the parties is whether the person performing services is doing so in the course of business or as an accessory to the business. The former is a contract of service, and the latter, a contract for services.[1] In order for copyright to vest in an employer, the work must not only be made by an ‘employee’ but must also be made ‘in the course of employment.
In the present case, the arrangement between Thomas and the Respondent changed from time to time. Thomas had created the characters – Boban and Molly before entering into employment with the Respondent, and hence, the Court opined that only Thomas should be allowed to exploit his work even after terminating employment. The Court opined that the Respondent played no role in the creation of the characters and hence no copyright would vest with the Respondents. The Respondents would only have copyright over the cartoons created by Thomas during the course of employment but not over the characters.
Copyright in characters
While determining whether Thomas could continue making cartoon strips to be published by the rival publishing house Kala Kaumudi, the Court distinguished between the cartoons made using the characters and the characters separately. The Court held that the copyright in the cartoons made by Thomas during the course of employment would vest with the Respondent as an artistic work, while the copyright over the characters of Boban and Molly would vest with Thomas as the characters were developed by him independently and not during the course of employment with the Respondent. The Respondents were thereby restricted from employing others to create new cartoons based on the characters of Boban and Molly while the Appellants were restricted from using the specific cartoons created by Thomas for the Respondents. Thomas could, however, continue creating new cartoons based on the same characters. The Court thus impliedly recognized that fictional characters could be the subject matter of copyright in India.
The Court relied on the landmark test laid down in the case of Nichols v. Universal Pictures Corporation[2] where copyright protection could be extended to characters only if they had attributes and personalities unique enough to create a deep impression in the minds of the readers while implicitly allowing copyright protection for fictional characters.
Conclusion:
This case was the first of its kind in India to extend copyright protection to fictional characters thereby paving the way for the development of copyright jurisprudence. The Court sought to strike a balance between the commercial rights of the Respondents while respecting the artistic liberty of Thomas, thereby keeping in line with the larger objectives of intellectual property rights.
References:
[1] Stephenson, Jordan and Harrison v. Macdonal and Evans, (1952) 69 RPC 10; Market Investigations Ltd. V. Minister of Social Security, (1969) 2 QB 173.
[2] Nichols v. Universal Pictures Corporation, 45 F.2d 119 (2d Cir. 1930).
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