IN

THE HIGH COURT OF DELHI

AT
NEW DELHI
O/S NO....................... 2007

APPLICANT - NEWLY FORMED ASSOCIATION OF PRODUCERS

V.

RESPONDENT - PRODUCER A

AUGUST 2007

ON SUBMISSION
TO
THE HIGH COURT OF DELHI

MEMORIAL FOR RESPONDENT

 IN
THE HIGH COURT OF DELHI
AT
NEW DELHI
O/S NO....................... 2007

IN THE MATTER OF : SPECIAL BENCH CONSTITUTED

BY THE HIGH COURT

APPLICANT - NEWLY FORMED ASSOCIATION OF PRODUCERS

V.

RESPONDENT - PRODUCER A

AUGUST 2007

ON SUBMISSION
TO
THE HIGH COURT OF DELHI

MEMORIAL FOR RESPONDENT

(COUNSEL FOR RESPONDENT)
Table of Contents

T A B L E O F C O N T E N T S

INTRODUCTION

INDEX OF AUTHORITIES

STATEMENT OF JURISDICTION

STATEMENT OF FACTS

STATEMENT OF ISSUES

SUMMARY OF ARGUMENTS

ARGUMENTS ADVANCED
Introduction

I N T R O D U C T I O N

THE RESPONDENT HAS THE HONOUR TO SUBMIT THIS MEMORIAL

IN CONFIRMITY WITH THE CIVIL PROCEDURE CODE, 1908. IT SETS
FORTH THE GROUNDS OF FACTS AND LAW ON WHICH THE CLAIMS
ARE MADE.
Index of Authorities

I N D E X O F A U T H O R I T I E S

ARTICLES

1.A Practitioners Guide On Copyright Law by Bruce P. Keller& Jeffery P Cunard 2006

2.Unscrambling the egg: pre suit infringement in investigations of process and method

patents”by Jeffrey I.D. Lewis and Art C.Cody

BOOKS

1 David Brainbridge, Intellectual Property Law(3rd ed., 1996, Pitman Publishing)

2.Cases and Mayerials on intellectual property, by W.R. Cornish. 2 nd edition; Universal Law
publishing co.pvt. ltd.,2004
.3. W.R.Cornish, Intellectual Property,Patents,Copyrights,Trademarks And Allied Rights;4 th
edn.,1999;Sweet And Maxwel
4.Teena Hart and Linda Fazzani,”Intellectual Property Law”,(2nd edn.2000),

5. P. Narayanan, Intellectual Property Law(2nd ed.,1999 Eastern Law House)

6. Terrell on the Law of Patents, (Sweet & Maxwell, 2000

Websites
www.lexis.com
www.legalpundits.com
www.westlaw.com
www.Supremecourtonline.com

MISCELLANEOUS

BLACKS LAW DICTIONARY(HENERY CAMPBELL BLACK, ED., MINNESOTA:

WEST PUBLISHING CO. 7 EDN 1990)

HALSBURYS LAW OF ENGLAND(LONDON: BUTTERWORTHS, 1997)
Table of Cases

T A B L E O F C A S E S

1. American Braided Wire Co. v. Thompson, (1889) 6 RPC 518

2. Biogen Inc. v. Medeva plc.,(1997)RPC 1
3. British Medical Association v.Marsh (1931) 48 RPC 565
4. Casio India Co. Limited v. Ashita Tele Systems Pvt. Limited,2003 (27) PTC 265 (Delhi),
5. Cellular Clothing Co. Ltd. v. Maxton Murray (1899) 16 R.P.C. 397)
6. Christodoulou v. Disney Entereprises and others 2005 FCA 1401
7. Ciba Geigy plc v. Parke Davis and co. Ltd (1994)FSR 8
8. Coleman v. Steven Smith (1912)29 RPC at 88 (CA)
9. Delavelle v. Harry (1946) 63 RPC 103
10. Francis Day & Hunter v. 20th Cebtury Fox Corperation All.ER 192 (1939).
11. Franklin Knitting Mills,Inc v.Fashionite Sweater Mills,Inc.,297 F 247,248(S.B.N.Y.1923)(l.Hand,J.)
12. Globe Super Parts v. Blue Super Flame(AIR 1986 Del 245)
13. Graham v. John Deere Co., 383U.S.1,148 U.S.P.Q.459 (S.Ct.1966)
14. I.P.Lund TradingAps v.Kohler Co. 163 F3 27,37-38,49
15. International Business Services Group (P)Ltd and another v.IBS Technologies Pvt Ltd,2000 PTC
595 Mad
16. International Business Services Group v. IBS Technologies Pvt. Ltd. ,2000 PTC 595
17. J.J. Mehta v. Registrar of Trade Marks(AIR 1986 Bom 85)
18. John Dickinson v. Apsley Press (1937) 54 RPC 219
19. Joseph Lucas (Batteries) Ltd v. Gaedor Ltd (1978) R.P.C.297
20. Lever Bros v. Bedingfield (1899) 16 RPC 3 at 10,11 (CA)
21. Local office manager v. Gomzee A ctive. 2007 (34) PTC 164 (kar), 165
22. LuxTraffic Controls Ltd v Pike Signals Ltd Lux Traffic Controls Ltdv Faronwise Ltd (1993) RPC
107 at 139.
23. Lyngstad v. Amabas(1977)FSR 62 AT 65
24. Malyan Tabacco v. U. K. Tobacco AIR 1934 PC 169 at 170.
25. Mars GB limited v. Cadbury ltd 1987 RPC 387
26. Multani v. Pramount Talkies AIR 1942 Bom241
27. My Kinda Town Ltd. v. Soll (1983) R.P.C. 407)
28. New Kids on the block v. News America Publishing. Inc.,971 F.2d 302,308(9 th Cir. 1992) Trade
Mark Association, 95 TMR 848,
29. Non Drip Measure Co. v. Strangers Ltd (1943) 60 R.P.C.135
30. Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 R.P.C.
39)
31. Olim Mathieson Corp. v. Biorex Labs Ltd (1970) R.P.C.157
32. Orthopedic Equipment Company v. All Orthopedic Appliances, 707 F.2d 1376, 217 U.S.P.Q.1281
(Fed.Cir.1983),
33. Re Rouffet, 149 F.3d, 1355
34. Reddaway v. Banham(13 RPC 1896 RPC 218)
35. Royal Biscuits Pvt. Ltd. v. Sethi Bakers And Confectioners,1993 (1) ARBLR 13
36. Samuel Parkes & Co. Ltd v. Cocker Bros (1929) 46 R.P.C.241
37. Savage v.Harris & Sons, (1896) 13 RPC.364 at 370.
38. Siddell v. Vickers & Sons Ltd, (1890) 15 APP Cas.496
39. State Street Bank and Trust Comp. v. Signature Financial Group Inc. , 149 F.3d 1368(fed.Cir 1988)
40. Stratoflex v.Aeroquip Corp.713 F.2d.1530, 18 U.S.P.Q.871 (Fed,Cir.1983)
41. Structural Rubber Products Co. v. Park Rubber Co.749F.2d 707,223 U.S.P.Q.1264(Fed.Cir.1984)
42. Technograph Printed Circuits Ltd .v. Mills & Rockley Ltd (1972) R.P.C.346
43. Williams v. Bronly (10909)26 RPC 765 at 771
44. Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd ( 1985)
Statement of Jurisdiction

STATEMENT OF JURISDICTION

THE RESPONDENT HAS THE HONOUR TO SUBMIT THIS

MEMORIAL OF THE PRESENT CASE BEFORE THE SPECIAL
BENCH CONSTITUTED BY THE DELHI HIGH COURT.
Statement of Facts

S T A T E M E N T O F F A C T S

Producer A engaged a team of students to research possible parameters that could have defined the success of 50
pre-determined blockbusters. The parameters that are to be examined are lead and supporting actors, movie
theme, music ,dialogues ,extent of special effects used, technical finesse etc. The team of students revisits the
films, interviews the Producers and Directors, screens newspaper articles to create a list of such “success
factors”. Producer A identifies a few elements of relevance in modern day film making.  Such elements are then
regrouped and evolved the form of a “success formula” and applied for protection under the Patents Act. Based
on the Success Formula evolved by Producer A, a protocol was developed having pre-defined steps with a
dynamic database to arrive at the said success formula.
The Producer additionally applies for a copyright in the said formula as an original artistic work as “A success
formula for film making” and the language of the work is indicated as “Bollywood Lingo”.The Producer
approaches a few lyrists and playback singers from the past blockbusters and calls upon them to revisit the past
hits and adapt the lyrics and songs for the new production through use of modern day instruments. A film plot is
made, casting characters of the past, with the same screen names for the new movie. The Producer adopts a
name that emerges from an amalgamation of 3 hit titles and applies separately for a trademark registration for
his new title. 
The movie, when released proves to be a hit .All promotional activities are with reference to the past characters.
It evokes nostalgia in the viewers and dialogues used appear to be the same although on a closer scrutiny are
found to emanate from an effective use of thesaurus.
A suit for injunction is instituted against Producer A by a newly formed association of past Producers and
claiming:
(i)That the title of the movie constitutes an infringement of trademark rights;
(ii) There is a violation of copyright as the essential theme and the arrangement of characters has been
impersonated and there is substantial copying of a developed idea;
(iii)The patent applied for protection by Producer A with variable claims is invalid on the ground of obviousness
even though the patent has not yet been granted and no objection on the lack of obviousness has been raised by
the Patent Office.
Statement of Issues

S T A T E M E N T O F I S S U E S

I. WHETHER THE DEFENDANT HAS VIOLATED THE

TRADEMARK OF THE APPLICANT

II. WHETHER THE DEFENDANT HAS VIOLATED THE

COPYRIGHT OF THE APPLICANT

III. WHETHER THE DEFENDANT’S FORMULA CAN BE

PATENTED

IV. WHETHER THE DEFENDANT IS LIABLE TO PAY

DAMAGES
Summary of Arguments

S U M M A R Y O F A R G U M E N T S

A. THE TITLE OF THE MOVIE DOES NOT CONSTITUTE AN INFRINGEMENT OF

TRADEMARK RIGHTS
 NON REGISTRATION OF THE TRADE MARK NEGATES THE
INFRINGEMENT CLAIM.
 THE RESPONDENT HAS NOT VIOLATED THE APPLICANT’S
TRADEMARK RIGHTS.

 The statutory provision of Section 27 of the Trade Mark Act,1999 prevails

over the common law right of passing off.
 Producer has not committed passing off
 The misrepresentation claim is unfounded
 THE TITLE OF THE MOVIE IS FOR TRADEMARK REGISTRATION

B. THERE IS NO VIOLATION OF COPYRIGHT BY THE DEFENDANT

 The movie is an Original work of the producer
 Copyright protection is confined to originality of expression and not extended to
originality of central idea
 Lay observer test applies here
 Substantial improvement negates the violation claim
 Work must be considered as a whole entity
 There is no physical copying of the film itself
 Characters of the blockbusters are not sui generis
 THE SUCCESS FORMULA IS ENTITLED TO COPYRIGHT PROTECTION
C. THE SUCCESS FORMULA IS ELIGIBLE FOR PATENT PROTECTION
 THE SUCCESS FORMULA COMES WITHIN THE PURVIEW OF A
PATENTABLE SUBJECT:
 THE SUCCESS FORMULA IS NOT OBVIOUS
 The formula satisfies the test of non obviousness
D. THE APPLICANT IS LIABLE TO PAY DAMAGES TO THE RESPONDENT
 RESTITUTIO IN INTEGRUM
 Account of Profit
Arguments Advanced

A R G U M E N T S A D V A N C E D

A. THE TITLE OF THE MOVIE DOES NOT CONSTITUTE AN INFRINGEMENT OF

TRADEMARK RIGHTS
A(a) NON REGISTRATION OF THE TRADE MARK NEGATES THE INFRINGEMENT
CLAIM.
Registration is prima facie evidence and sine qua non of validity of trademark. 1The actuality
that the trade mark of the consortium is unregistered deprives it of legal protection, if any and
consequently places no restraint on producer A on grounds of infringement.
In the relevant context, where the mark is a word mark, it includes a consideration of the way in
which the word has been displayed in relation to the good sand advertisement of which complaint is
made.2Moreover the principle of nominative fair use3 applies here.
Further in the instance of unregistered trademarks, in present milieu the burden of proof lies
with the party alleging trademark infringement 4 .
A(b)THE RESPONDENT HAS NOT VIOLATED THE APPLICANT’S TRADEMARK RIGHTS.
A(b)(i) The statutory provision of Section 27 of the Trade Mark Act,1999 prevails over
the common law right of passing off.
A(b)(ii)Producer has not committed passing off
To succeed in a passing off action the plaintiff has to establish that the plaintiff has suffered or
is reasonably likely to suffer damage or injury to his business or goodwill as a consequence of the
defendant’s action.5
In String fellow v. Mc Cain 6it was opined that request for an infringement is whether the
plaintiffs goodwill is suffered or likely to suffer damage and not whether the defendants has reaped
any positive benefit from misrepresentation of goodwill.
The applicant is not suffering any loss as the old films had been screened in the past and have
already collected their box office revenue. Moreover the release of A’s movie has only caused
rescreening of the old films, thereby proving profitable to the applicant.

1
“ Sec.27 of the Trade Mark Act ,1999 states that no action lies for infringement of unregistered trade mark.” Local office manager v.
Gomzee A ctive. 2007 (34) PTC 164 (Kar), 165
2
Christodoulou v. Disney Enterprises and others 2005 FCA 1401; see also Mars GB limited v. Cadbury ltd 1987 RPC 387 at 402; “The ‘the
artistic relevance test’ just became relevant:the increasing strength of the the first amendment as a defence to trademark infringement and
dilution.” Kerry L. Timbers and Julia Huston , 93 TMR 1278.
3
“in case of what is sometimes labelled nominative fair use or comparitve fair use refence is made to a trademark for the express purpose of
calling to mind the actual subject of the mark and because that is simply the best way to refer to the mark or goods or services sold under the
mark; New Kids on the block v. News America Publishing. Inc.,971 F.2d 302,308(9 th Cir. 1992) ” ,’Frannken law:The supreme Corts and
balanced look at fair use, JONATHAN MOSCIN. International Trade Mark Association, 95 TMR 848,
4
I.P.Lund TradingAps v.Kohler Co. 163 F3 27,37-38,49;see also International Business Services Group v. IBS Technologies Pvt. Ltd. ,
2000 PTC 595;Casio India Co. Limited v. Ashita Tele Systems Pvt. Limited,2003 (27) PTC 265 (Delhi),Royal Biscuits Pvt. Ltd. v. Sethi
Bakers And Confectioners,1993 (1) ARBLR 13 ,Coolways india v. Princo Air conditioner PTC (suppl)(1)470 Del Functional features, (a)
burden if proof, 96 vol.90. TMR;
5
‘ in the “Advocaat”s case, Lord Diplock defined the five necessary characteristics of the cause of action thus;
(1)Misrepresentation(2)made by a trader in the course of trade(3)to prospective customers of his or ultimate consumers of goods or services
supplied by him(4)which is calculated to injure the business or goodwill of another trader(in the sense that this is a reasonably foreseeable
consequence and (5)actual damage to a business or
goodwill of the trader by whom the action is brought (or will probably do so).’ Cornish,p.495;see also (1979) F.S.R.397 at 405
6
(1984)RPC 501 AT 510.512.534 SEE ALSO Lyngstad v. Amabas(1977)FSR 62 AT 65 see also
 In a quia timet action7 in the absence of evidence of actual confusion a strong case must be
made to justify a conclusion that confusion will result from what the defendants are doing. 8
Prior use of a particular name for a cinematographic film confers no right to the exclusive use
of that name. In a passing off action relating to a film the court has to consider not merely the
similarity in the name but similarity in the make up, the similarity in subject matter and other
surrounding circumstances.9
In the instant case passing off cannot be claimed by the applicant as only a part of each films
titles have been borrowed and there is no similarity in the subject matter.
The owner of a name, or the devisor of a fictional character 10, has no right under the law of
passing off to prevent the use of such a name. On the same parallels,the CPP cannot claim exclusivity
on the use of the titles of the characters.
A(b)(iii)The misrepresentation claim is unfounded.
A misrepresentation claim is invalid on the basis of the principle that 11 “in the absence of
confusion there can be no harm to goodwill and ,therefore, no damage to the plaintiff ”. The
defendant’s work has in no way been confused with the films of the past and there is no resultant
damage to the goodwill of the applicant.
Furthermore, in Blackwell v. Crabb 12 it was observed that since the elements of the labels were
common to the trade there was no infringement of trade mark. In the instant case, the title of the past
movies are universal and standard, well accustomed to the film sphere.
The mere fact the applicant in this case has taken the idea or some parts of the plaintiff’s trade
mark which is not a colorable imitation of it would not constitute infringement. 13
A.(c)THE TITLE OF THE MOVIE IS FOR TRADEMARK REGISTRATION
In a catena14 of decisions ranging from Laxmikant V. Patel v. Chetanbhat Shah and another 15
to, Bakemans Industries Limited v.Parle products Ltd 16 the court held that even if the coined word
has dictionary meaning provides distinctive mark or trademark and the person who has coined it has a
right to protect it. Therefore, the Same right is categorically conferred upon the respondent ,for his
newly coined title.
Hence it is submitted that the new trademark does not constitute infringement and is entitled
to a separate trade mark registration.
B. THERE IS NO VIOLATION OF COPYRIGHT BY THE DEFENDANT
B.(a)(i) The movie is an Original work of the producer

7
“In an action for passing off the plaintiff has to establish that the defendant’s activities will lead to passing off .Hence quia timet action
will lie”:Computer Vision (1975) RPC 171;British Medical Association v.Marsh (1931) 48 RPC 565;John Dickinson v. Apsley Press (1937)
54 RPC 219;Delavelle v. Harry (1946) 63 RPC 103
8
Malyan Tabacco v. U. K. Tobacco AIR 1934 PC 169 at 170. “ the patronage whish the public gives to the films ,the title of the work does
not guide it,same in the film adaptation of works already famous in theatre. The public is attracted in the first place by the talent and the
fame of the actors then by their name of the art director and the executive capacity of the filming company”, Dr. Martin Wassrermenn,
‘internatinal trademark association , The trade mark reporter. 333 TMR 163.
9
Multani v. Pramount Talkies AIR 1942 BOm241,Franklin Knitting Mills,Inc v.Fashionite Sweater Mills,Inc.,297 F
247,248(S.B.N.Y.1923)(l.Hand,J.)
10
The use of well known names, whether of real people or of fictional characters, for commercial purposes is known as “character
merchandising”.
11
Ciba Geigy plc v. Parke Davis and co. Ltd (1994)FSR 8
12
(1867) 36 LJ Ch 504,see also Williams v. Bronly (10909)26 RPC 765 at 771, Coleman v. Steven Smith (1912)29 RPC at 88 (CA)
13
Lever Bros v. Bedingfield (1899)16 RPC 3 at 10,11 (CA) ; The application to the defendent’s goods of ordinary English terms such as
“cellular clothing” ( Cellular Clothing Co. Ltd. v. Maxton Murray (1899) 16 R.P.C. 397), or “Office Clothing” ( Office Cleaning Services
Ltd. .v. Westminster Window and General Cleaners Ltd. (1946) 63 R.P.C. 39)or the use of descriptive expressions or slogans in general use
such as “Chicago Pizza” ( My Kinda Town Ltd. v. Soll (1983) R.P.C. 407)cannot entitle a plaintiff to relief simply because he has used the
same or similar terms as descriptive of his own goods and has been the only person previously to employ that description.; see also
Francis ,Day & Hunter v. 20th Century Fox Corporation All.ER 192 (1939). www.lexis.com
14
, Globe Super Parts v. Blue Super Flame(AIR 1986 Del 245), J.J. Mehta v. Registrar of Trade Marks(AIR 1986 Bom 85) and Reddaway
v. Banham(13 RPC 1896 RPC 218)
15
AIR 2002 SC 275
16
2002(25)PTC 445 (Bom)
 In order to be entitled to copyright, the product must be the result of some original or creative
work.17
A work may be ‘original’ if the author has applied his skill or labour, even though he has drawn
on knowledge common to himself and others or has used already existing material. 18
The owner of a copyright has no monopoly in the subject matter, giving others the liberty to
produce the same result provided that their work is none the less “original” 19
B.(a)(ii) Copyright protection is confined to originality of expression and not extended to
originality of central idea
In R.G. Anand v. Deluxe Films20, it was held that there is no infringement of copyright on
copying an idea, theme, plot, historical or legendary fact.
In Barbara Taylor Bradford v. Sahara Media Entertainment Ltd. 21, the court held that ‘the law
protected originality of expression and not originality of the central idea’.
Where the plaintiff had developed an idea into various concept notes, character sketches,
detailed plot of episodes, they would become subject-matter of copyright protection 22.
In the instant case Producer A was inspired from certain yesteryear’s blockbusters, and gave
expression to the same from his own creativity. These fundamental movie themes have been in
existence since the advent of cinema, employed by all movie makers. Thus, this common knowledge
should not bar his original creativity under the cover of copyright violation 23. In other words he has
not made use of the copyrightable elements of the work but only of the underlying ideas. 24
B.(a)(iii) Lay observer test applies here
If to the “lay observer”, it would not appear to be reproduction; there is no infringement of the
artistic copyright in the work. 25Any prudent movie audience will be able to draw a clear cut
distinction between the new movie and the work of the past. Bollywood theme revolves around a
well defined set of threads.No one can claim monopoly over these themes and novelty is not essential
in this background.
B.(a)(iv) Substantial improvement negates the violation claim
Copyright law does not prevent a person from taking what is useful from an original work and
create a new work with additions and improvements 26.
Where the theme is same but is presented and treated differently …no question of violation of
copyright arises27.
In the instant case, there is substantial improvement since the movie is a novel presentation of
the theme.
B.(a)(v) Work must be considered as a whole entity

17
Grignon v. Roussel (1991), 38 CPR (3d)4
18
Macmillan v. Cooper, ,AIR 1924 PC 75;see also United Feature v. Star Newspaper, (1980) 2 E.I.P.R. D 43 (S.C., N.S.W.); Hanfstaegl v.
empire palace, (1894) 3 Ch. 109, Rupendra Kashyap v. Jiwan Publishing House, (1996) PTC 439 (Del)
19
Halsbury’s Laws of England ,4th Ed.,vol 9,p 259
20
AIR 1978 SC 1613 see also Rees v. Melville (1911-16) MCC168,CA, R.Madhavan v. S.K.Nayar, AIR 1988 Ker 39
21
2004 (28) PTC 474 (Cal.) (D.B.)
22
Zee Telefims v.Sundial communications pvt. Ltd;2003 (27) PTC 457 (Bom) DB
23
The defendant may refute by evidence that notwithstanding the similarity there was no copying but independent action.”
King Features syndicate v. Kleeman, (1941) AC 417 at pp.435-436;see also L.LB.Plastics v. Swish Products, (1979) RPC 551 at 625.
A Practitioners Guide On Copyright Law by Bruce P. Keller& Jeffery P Cunard 2006
24
Glyn v. Wston Feature (1916) 1 Ch 261. see also Civic Chandran v. Ammini Amma 1996 (1) KLT 608
25
Associated Electronic & Electrical Industries v. Sharp Tools, AIR 1991 Kant 406
26
Kartar Singh Giani v.Ladha Singh AIR 1934 Lah 77 see also Emerson v. Davies 1848- 3 Story U.S Rep 768 , Eastern Book Co. v. Navin
J. Desai, (2001) PTC 57 (Del) see also Boosey v. Whight (1900) 1 Ch 122 ; The same is the case with a model to create a different product.
( National Reports[2004]E.I.P.R.N-109.Germany. ‘Protection of the format of a TV show’ . Re “Sendeformat” Federal Supreme Court June
26,2003)
27
Barbara Taylor Bradford v. Sahara media Entertainment Ltd. 2004(28) PTC (Cal)
 Furthermore, in determining whether a work is entitled to copyright protection. The work must
be considered as a whole; it is not proper to dissect the work into parts and then show that each part is
not entitled to copyright and then conclude that the whole is also not entitled to protection. 28
It is a prima facie evident that there has been no copyright violation by A.
He has extensively improvised the theme and presentation, at its creative best 29
B.(a)(vi) There is no physical copying of the film itself
In Star India Private Limited v. Leo Burnett (India) Private Limited 30 ,it was held :
“The expression ‘to make a copy of the film’ would mean to make a physical copy of the film
itself. If the film has been filmed or shot separately by a person and it resembles the earlier film, the
subsequent film is not a copy of the first film”.
Unless there had been a copying of the whole or parts of the plaintiff’s film itself, in the sense
of a copying of the particular recording of that film, there could not be any infringement of the
copyright.31
The instant case, does not fulfil the requirements for infringement, thus reaffirming that there
has been no substantial copying by A.
B.(a)(vii)Characters of the blockbusters are not sui generis
No character is protectable under copyright law unless the character is extremely well-
delineated.32 It should be unique and distinctive in character. 33
In the instant case, these characters have no special or distinctive feature. They are merely roles
created and enacted by ordinary actors .These characters have no entity of their own. Hence, casting
them together in a new production will not amount to wrongful impersonation.
Further on ,adaptation in relation to copyright in musical work subsist in arranging music by
adding accompaniment , new harmonies, new rhythm and the like and transcribing it for different
musical forces.34
In the instant case, A has merely adapted the old songs through the use of modern day
instruments and special effects35 which does not make it liable for infringement of copyright of
musical works.
B.(b) THE SUCCESS FORMULA IS ENTITLED TO COPYRIGHT PROTECTION
In Macmillan & co. v. Cooper 36 it was opined that the question is not whether the material
which is used is entirely new , it is whether the same plan,arrangement and combination of material is
used for any other purpose.
A may have gathered gathered inspiration for parts of his plan from existing sources. However
he has combined in a different manner based on the newly success formula,evolved through a
stupendous research work on 50 films. Hence, the success formula evolved by Producer A is an
original work fit for copyright protection.
C. THE SUCCESS FORMULA IS ELIGIBLE FOR PATENT PROTECTION
C.(a) THE SUCCESS FORMULA COMES WITHIN THE PURVIEW OF A PATENTABLE
SUBJECT:

28
Ladbroke v. William Hill (1964) All ER 465
29
Facts ,p.1,para 3,p.2, para 2.3,4,6
30
, 2003 (27) PTC 81 (Bom)
31
CBS Australia Limited and Others v. Telemark Teleproducts (Aust.) Pty. Ltd., 1987 (9) IPR 440; see also Kelly v. Cinema House, (1928-
35) Mac. C.C. 362
32
Warner Brothers Pictures v. Columbia Broadcasting Systems, 216 F 2d 945, 104 U.S.P.Q. 103 (9th Cir 1954)
33
Universal City Studios v. Kumar Industries, 1982 Copyright L. Decisions (CCH) 25, 452 (SD Tex. 1982)
34
Intellectual Propertyby Cornish, 4th Ed. Para 10.12
35
Fact sheet,p-2,para2
36
(1923) 40 T.L.R.186 at 187
 A patent may be granted for a method or process. 37 Whether an alleged invention is patentable
depends upon what technical contribution the invention as a whole makes to the known art. 38 There
must be some technical advance on the prior art in the form of a new result. 39
The success formula developed by Producer A describes the method in which a successful film
is to made enhancing the existing knowledge and technical expertise in the field of film making,
hence bringing it within the ambit of business method patent ,thereby qualifying it for a patentable
subject matter.
C.(b) THE SUCCESS FORMULA IS NOT OBVIOUS
C.(b)(i) The formula satisfies the test of non obviousness
Non obviousness is related to novelty: both test ask whether each and every element of the
invention can be found in the prior art. 40 Obviousness connotes something which would at once occur
to a person skilled in the art who was desirous of accomplishing the end, 41or ‘it must not be the
obvious or natural suggestion of what was previously known’ 42:
In determining Obviousness or non obviousness of the claimed subject matter of each of the
patents in suit, the following should be considered:43
1. You should determine the scope and content of the prior art relied upon against the patent
in suit;
2. You should then identify the differences, if any, between each claim of the patent in suit
and the prior art; and
3. Determine the level of the ordinary skill in the pertinent art at the time the invention of the
patent in suit was made.44
The correct conclusion may well depend on the form and the scope of the claim under
consideration construed in the light of the relevant surrounding circumstances. 45 It has been observed
that on the issue of obviousness it is dangerous ever to consider particular observations in a particular
case in any tribunal without reference to the facts of that case. 46
37
“The state of the art in the case of an invention is taken to comprise all matter (whether a product, a process, information about either, or
anything else) which, at any time” State Street Bank and Trust Comp. v. Signature Financial Group Inc. , 149 F.3d 1368(fed.Cir 1988); see
also “ Unscrambling the egg: pre suit infringement in investigations of process and method patents”by Jeffrey I.D. Lewis and Art C.Cody;
84 J. Pat.and Trade Mark Off.Soc’y 5, “ The term business method means : A method of administering, managing, or otherwise operating
an enterprise or organisation , including a technique used in doing or conducting business.” 35 U.S.C 100 “ reports consider: committee
no.757- special committee on patents and internet” by Jeffery R.Kuester,CHAIR: section of intellectual property law 2000-2001;www.
Lexis .com
38
Case T-204/84 Vicom/Computer-related invention (1987) EPOR74, Technical Board of Appeal, cited with approval in Genentech’s
Patent (1989) RPC 147 AT 208, CA per Purchas LJ.Merril Lynch’s Application (1989) RPC61 at 569, CA Raytheon Co’s Application
(1993) RPC 427 at 449.
39
Merrill Lynch’s Application (1989) RPC 561 AT 569, CA (giving as an example a substantial increase in processing speed bought about
by the use of a novel computer program) See also LuxTraffic Controls Ltd v Pike Signals Ltd, Lux Traffic Controls Ltdv Faronwise Ltd
(1993) RPC 107 at 139.
40
“Prosecution history estoppels, the doctrine of equivalence and the scope if patents” by T.Whitney Chandler, 13 Harv. J. Law and Tec
465, see 35 U.S C.A 102 (west 2000)
41
American Braided Wire Co. v. Thompson, (1889) 6 RPC 518 at 528. As Lord Herschell pointed out in Siddell v. Vickers & Sons Ltd
(1890) 15 APP Cas.496
42
Lopes L.J. see Savage v. Harris & Sons (1896) 13 RPC.364 at 370.
43
“To decide whether the claimed subject matter would have been either obvious or unobvious to a person of ordinary skill in the pertinent
art. You should also consider such objective considerations as commercial success, long felt but unresolved need, failure of others to solve
the problem, acquiescence in the patent by others, and whether the same or similar inventions were made independently by others prior to or
at about the same time as the invention of the patent in suit”. Graham v. John Deere Co., 383U.S.1,148 U.S.P.Q.459 (S.Ct.1966);
Orthopedic Equipment Company v.All Orthopedic Appliances, 707 F.2d 1376, 217 U.S.P.Q.1281 (Fed.Cir.1983),Stratoflex v.Aeroquip
Corp.713 F.2d.1530, 18 U.S.P.Q.871 (Fed,Cir.1983,)Structural Rubber Products Co. v. Park Rubber Co.749F.2d 707,223
U.S.P.Q.1264(Fed.Cir.1984)
44
Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd.( 1985)… Graham v.John Deere Co. In Graham, the court laid out a
four part obviousness inquiry.
(1) determine the scope and content of the prior art;
(2) ascertain the differences between the claimed invention and the prior art;
(3) resolve the level of ordinary skill in the pertinent art;
(4) consider secondary indicia of non-obviousness, such as commercial success, and long-felt in the art.
45
L’ Oreal’s Appln 1970 RPC 565 at 570, In re Rouffet, 149 F.3d at 1355
46
Imperial Chemical Industries (howe’s) Appln. (1977)RPC 121 ay 128 relying on John’s – Manville corporation Patent 1967 RPC
479(CA).; Savagev Harris & Sons, (supra) Samuel Parkes & Co. Ltd v. Cocker Bros (1929) 46 R.P.C.241 – Non Drip Measure Co.v.
 In the instant case, there is no prior art to be referred to with respect to a formula to make a
successful film, though the elements put together were already present in the industry, it required
immense research ,technical brilliance and understanding to create a data base and apply permutation
and combination of such success parameters.
It was held in Biogen Inc. v. Medeva plc.47
In the case of using an idea of using established techniques to do something which no one had
previously thought of doing. In that case, the inventive step will be doing the new thing. The inventive
idea will be the way of achieving the goal. In a catena of other cases many people may have a general
idea of how they might achieve a goal but not know ho w to solve a particular problem which stands
in their way. If someone devices way of solving the problem, his inventive step will be that solution. 48
The formula for a successful film brought out by Producer A is actually a solution devised
from the various features already existent in the industry, hence qualifying the act for an inventive
step and ruling out the possibility of obviousness.
If the question of obviousness is doubtful, such a doubt should be resolved in favour of the
applicant.49
Thus it humbly submitted that the the success formula is not obvious and is a qualified to be
patented.
D. THE APPLICANT IS LIABLE TO PAY DAMAGES TO THE RESPONDENT
D.(a) RESTITUTIO IN INTEGRUM
According to the principle "Restitutio in integrum", so far as money can do it, the injured
person should be put in the same position as he would have been in, if he had not sustained the wrong,
namely if the tort had not been committed. Once the liability is fixed upon the defendant, the court
must award damages.50
D.(a)(i) Defamation
The damages awarded must be sufficient enough to compensate him for the damage to his
reputation, vindicate his good name, and take out the distress, hurt and humiliation, which the
defamation has caused. It touches the plaintiff's personal integrity, professional reputation, honour,
loyalty and the core attributes of his personality, the more serious it is likely to be. 51
Producer A is a person of prominent repute in the film industry whose image was tarnished and
also the repute of his work brought down, which further led to loss in his business.
D.(a)(ii) Account of Profit
The principle upon which the court grants an account of profits is that where one party owes a
duty to another, the person to whom that duty is owed is entitled to recover from the other party every
benefit which that other party has received by virtue of his fiduciary position if in fact he has obtained
it without the knowledge or consent of the party to whom he owed the duty. 52
Lost profits, lost opportunities and competitive position acquired by the defendant may all be
taken into account while calculating the damages. 53
The principle in AMCO v.Indonesia54 that full compensation of prejudice,by awarding to the
injured party ,damnum emergens(loss suffered)and lucram cessans(expected profits)is applied here
Therefore,compensation will be awarded covering direct and foreseeable prejudice
Strangers Ltd (1943) 60 R.P.C.135 (long felt want) Olim Mathieson Corp.v.Biorex Labs Ltd (1970) R.P.C.157 (for the use of the ‘Simkins
List’) and Technograph Printed Circuits Ltd. V. Mills & Rockley Ltd (1972) R.P.C.346 at 355, Joseph Lucas (Batteries) Ltd v. Gaedor Ltd
(1978) R.P.C.297
47
(1997)RPC 1
48
INTELLECTUAL Property Law by David Brainbridge 358
49
E.I.Du Pont de nemourse and Co. (Holland’s) Appln (1971)RPC 7 at 21(PAT);see also ESSO research and engineering Co,’s Appln.
[1969] RPC 174 at 176
50
[Halsbury's laws of england, vol 12 ,(4th edn,.Reissue) p.1129;see also Livingstone v. Raywards CoalCo,(1848)1 Ex850 at p.855]
51
John v.MGN Ltd,([1997] Q.B 586)
52
Electrolux and Elecrtix [(1953) 70 RPC158 at p.159]
53
Gerber Garment Technology Inc v. Lectra Systems Ltd. [(1995)RPC 383]
54
24 ILM,1985,P.1022,1036
 The negative publicity on part of the consortium of producers caused a dip in the box office
collections of the film made by Producer A and increasing their income by re screening of the past
movies, hence holding the consortium liable to pay damages to the effect to make good the loss him.
Thus it is humbly submitted, that the consortium is liable to pay damages to producer A for the
loss of his reputation and causing loss in box office collection.

CONCLUSION AND PRAYER

Wherefore in the light of the issues raised,arguments advanced and

authorities cited,it is humbly prayed that this Honb’le court may be pleased
to adjudge and declare:

A. THE TITLE OF THE MOVIE DOES NOT CONSTITUTE AN INFRINGEMENT

OF TRADEMARK RIGHTS

B. THERE IS NO VIOLATION OF COPYRIGHT BY PRODUCER A

C. THE SUCCESS FORMULA IS ELIGIBLE FOR PATENT PROTECTION

D. THE APPLICANT IS LIABLE TO PAY DAMAGES TO THE RESPONDENT

And pass any other order that this court may deem fit.
And for this act of kindness the respondent as in duty bound shall
forever pray.