CODE – R17

Before

HON’BLE SUPREME COURT OF INDIA

UNDER ARTICLE 133 OF THE CONSTITUTION OF INDIA

PETITION NO. XX OF 2019

AONBHESH PUNDA …PETITIONER

V.

MPRINCIPLED MATHEW …RESPONDENT

AND

AYASHI BHUA AND ORS. …PETITIONERS

V.

UNION OF INDIA …RESPONDENT

MEMORIAL FOR THE RESPONDENTS

 -Table of Contents-

TABLE OF CONTENTS

Table of Contents .............................................................................................................................. i

List of Abbreviation ....................................................................... Error! Bookmark not defined.

Index of Authorities .........................................................................................................................ii

Statement of Jurisdiction ................................................................................................................ iv

Statement of Facts ............................................................................................................................ v

Questions Presented .......................................................................................................................vii

Summary of Arguments ............................................................................................................... viii

Arguments ........................................................................................................................................ 9

1. There is no case for trademark infringement. ........................................................................ 9

1.1. The registration of the spoof as a trademark was invalid. ....................................... 9

1.2. Even if the trademark’s registration was valid, Principled Matthew did not
infringe Onbhes Punda’s Trademark. .............................................................................. 13

2. There has been no copyright infringement by Principled Matthew ..................................... 15

2.1. Onbhesh Punda did not have copyright over the issue as the remedy lies in the DA
15

2.2. Even if the Appellant has a copyright, the respondent’s actions do not amount to
copyright infringement..................................................................................................... 18

2.3. The protection of copyright should not be content agnostic. ................................ 19

3. There is no case for passing off ........................................................................................... 20

3.1. Onbhesh Punda did not have the requisite goodwill for a passing off claim ........ 20

3.2. There has been no Misrepresentation by Principled Matthew .............................. 21

3.3. There has been no damage to Punda’s business so as to be valid for a passing off
claim. 22

Prayer ............................................................................................................................................. 23

Memorial for the Petitioner

- (i) -
 -Index of Authorities-

INDEX OF AUTHORITIES

CASES

Aveek Sarkar v. State of W.B., (2014) 4 SCC 257. -------------------------------------------------- 1

Bimal Kumar Barua v. M/S Rayban Sun Optics India Ltd. ----------------------------------------- 4
Broder v. Zeno Mauvais 88 F. 74, 75 (C.C.N.D. Cal. 1898) ---------------------------------------- 9
Chintaman Rao v. The State of Madhya Pradesh, [1950] S.C.R. 759. ---------------------------- 3
Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960 SC 142;--------------- 4
Dharam Dutt v. UOI (2004) 1 SCC 712,--------------------------------------------------------------- 2
Dunhill v Barlett (1922) 39 R.P.C 426. ---------------------------------------------------------------11
Eastern Book Company v. D.B. Modak , 2002 PTC 641. ------------------------------------------- 8
Emersion v. Davies, (1848) 3 Story US Rep 768. ---------------------------------------------------- 8
Holman v. Johnson (1775) 1 Cowp 341 at 343. ------------------------------------------------------ 9
Hyde Park Residence v. David Yelland [2000] EWCA Civ 37 ------------------------------------ 9
Kartar Singh v. State of Punjab, (1994) 3 SCC 569 -------------------------------------------------- 3
MacMillan and Co. v. K. And J. Cooper AIR 1924 PC 75------------------------------------------ 8
Matal v. Tam 137 S. Ct. 1744 --------------------------------------------------------------------------- 2
McCrum v. Eisnker, (1917) 87 LJ Ch. 99.------------------------------------------------------------- 8
Perry v. Truefitt (1842) 49 ER 749. -------------------------------------------------------------------10
Ranjit D. Udeshi v. State Of Maharashtra 1965 AIR 881. --------------------------------------- 2, 3
Sabel BV v. Puma AG, Rudolf Dassler Sport ECJ 11 NOV 1997 --------------------------------- 5
Shreya Singhal v. U.O.I [AIR 2015 SCC 1523]. ----------------------------------------------------- 3
Sun Pharma Laboratories Ltd v. Ajanta Pharma Ltd 2019 SCC OnLine Del 8443. ------------- 5
Super Cassettes Industries Ltd. v. Hamar Television Network Pvt. Ltd., 2011 (45) PTC 70
(Del.) ----------------------------------------------------------------------------------------------------- 9
Tata Press Limited v. Mahanagar Telephone-Nigam 995 SCC (5) 139. -------------------------- 2
Uniply Industries Ltd v. Unicorn Plywood Pvt. Ltd. & Ors. AIR 2001 SC 2083. --------------- 5
United biscuits v. Asda Stores [1997] RPC 513. ----------------------------------------------------11

Statutes

The Constitution of India,1950 -------------------------------------------------------------------------- 9

The Copyright Act, 1957 ------------------------------------------------------------------------------- 6,7
The Designs Act, 2000 ----------------------------------------------------------------------------------- 6
The Indian Penal Code, 1872 ---------------------------------------------------------------------------- 1

Memorial for the Petitioner

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The Trademark Act, 1985, Section 9(1)(j). ----------------------------------------------------- passim

Treatises

C. Edwin Baker, First Amendment Limits on Copyright, 55 VAND. L. REV. 891 (2002) at 901,
903 -------------------------------------------------------------------------------------------------------- 9
L. Bently & B. Sherman, Intellectual Property Law, 674 (4th ed., 2014); -----------------------10
NATHUNI Adam LAL, LAL’S COMMENTARY ON THE COPYRIGHT ACT (Ajay Sahni, 4th ed.,
2006) ----------------------------------------------------------------------------------------------------- 6
P. NARAYANAN, PATENT LAW 66 (3RD ed., 1998). ---------------------------------------------------- 1

Miscellaneous

Agreement on Trade-Related Aspects of Intellectual Property Rights, Art. 27(2), Apr. 15,
1994 ------------------------------------------------------------------------------------------------------ 4
Draft of Manual of Trade Marks, Practice & Procedure. ----------------------------------------- 1, 3
In the matter of Trade Mark Application Number: 2232411 in Class 25 in the name of
Christopher ---------------------------------------------------------------------------------------------- 2
Kellett ,The Difference Between Trade Marks, Patents, Copyright And Designs Explained,
February 26 2019, available at https://www.citma.org.uk/resources/trade-marks-
ip/intellectual-property-blog/the-difference-between-trade-marks-patents-copyright-and-
designs-explained.html (Last visited on August 07, 2019). -------------------------------------- 6
Ned Snow, Content-Based Copyright Denial, Indiana Law Journal Vol. 90:Iss. 4-------------- 9
Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, 13 U.S.T. 2, 828
U.N.T.S. 305, Art. 6quinquies. ----------------------------------------------------------------------- 4
Preface to the Draft of Manual of Trade Marks, Practice & Procedure --------------------------- 1
Re Jellinek’s Application [1946] RPC 59 ------------------------------------------------------------- 4
 -Statement of Jurisdiction-

STATEMENT OF JURISDICTION

The Respondent humbly submits this memorandum in the matter of the civil appeal filed before
the Hon’ble Supreme Court of India, under Article 133 of the Constitution of India.

Memorial for the Petitioner

- (iv) -
 -Statement of Facts-

STATEMENT OF FACTS

In the summer of 2018, Talkative Chaturvedi saw a meme on the internet signifying how
climate change problems are being mishandled. She did further research and then came
across many new facts along with a graphic which showing how production of everyday
meals contributes to a large amount of greenhouse gas emissions. Chaturvedi and her friend
Cultural Rajurkar then made a caricature to make people aware about how they can control
change in climate by changing their eating habits. The caricature represented a person
intaking a hamburger looking like the Earth with a lentil looking like an angel on one side of
his head and a beefsteak looking like a devil on the other (‘the Cartoon’). They then
circulated the Cartoon throughout the University campus with the help of newspapers and
magazines. The Cartoon was further posted on the university’s meme page by Chaturvedi and
Rajurkar with the message: change your diet and save the planet.

II

Onbhes Punda, a student from IIT-KGP was interested in creative arts and had designed and
sold temporary tattoos and in his college in the past. However, only the t-shirts were
successful in receiving positive acclaim. One day, Onbhes saw the Cartoon and made a
mockery of it by designing stickers in which he had superimposed a gross image of male
genitalia on the it and captioned it ‘Lavda Lahsun’ (the Spoof’). He did this to express his
disagreement with the message of the Cartoon which he thought was annoyingly
patroninsing. Obhnes then started an aggressive social media campaign as a response to the
one started by Chaturvedi and her friends. The stickers created by Onbhes gained instant
popularity and their sale fetched him great profits. In February 2019, he got together with his
University’s inter-university cultural fest called Pingfest and sold his stickers through a stall.
With its increasing popularity, Onbhes formalized the sticker business by starting a single-
member company called Alcove & Boyz Ltd and registered a trademark for the Spoof under
Class 16.

III

Principled Mathew, a student in IIM C decided to sell t-shirts through a stall at his
university’s inter-university cultural fest known as the Great Gathering of Naughties. He

Memorial for the Petitioner

- (v) -
 CODE – R17

wanted to get the Spoof printed at the back of the t-shirts since it was current, provocative
and sent across a message which a lot of people resonated with. To avoid any sort of trouble,
he made sure that the Spoof had not been registered under the Indian Patent Office (Designs
Wing). As a precaution he changed the angel from the Spoof to a pork steak and the devil to a
wheat crop. Onbhes then started promoting the t-shirts on social media, a week before the
GGN. The sale of t-shirts profited him.

IV

Nushy Chaas, who was Onbhes’ friend saw some people wearing the t-shirts sold by
Principled Mathew at GGN in April, 2019. When Onbhes got to know about this, he
approached the High Court of Calcutta seeking remedy. The High Court decided in favour of
Principled Mathew. It was held that no trademark infringement had taken place as obscenity
rendered the registration improper. They also said that Onbhes did not have a claim to
copyright infringement as he should claim infringement under the Designs Act, 2000 and also
that Onbhes failed to prove any goodwill in the Spoof as a trademark, rendering the passing
off action otiose. The Court did not even find any merit in the constitutional challenge to the
obscenity exclusion under the Trade Marks Act, 1999. Onbhes appealed to the Supreme
Court and it has been transferred by a single judge to a three-judge bench through an order.
 -Questions Presented-

QUESTIONS PRESENTED

The questions presented before this Court are as follows

1. Whether there has been a trademark infringement.

2. Whether there has been a copyright infringement.

3. Whether there is a case of passing off.

Memorial for the Petitioner

- (vii) -
 -Summary of Arguments-

SUMMARY OF ARGUMENTS

1. There is no case for Trademark infringement.

It is submitted that there is no case for trademark infringement since the registration of the
trademark was invalid and infringement can happen only on a registered trademark. The
registration of the ‘spoof’ was invalid since it was obscene and was thus hit by the obscenity
exclusion clause in the trademarks act. Moreover, the obscenity exclusion clause is
constitutionally valid since obscenity is a reasonable restriction under Article 19(2) of the
Indian Constitution. Moreover, even if the trademark was registered, the respondent has not
infringed it since the requirements of Section 29(2)(b) and Section 29(4)(c) have not been
fulfilled.

2. There is no case for Copyright Infringement.

It is submitted that there is no case for copyright infringement. The appellant could not have
copyright over the spoof as it was a design. Alternatively, assuming that the appellant did
have copyright over the spoof, the respondent has not infringed his copyright since he had
made substantial change to the spoof which grants his work the stature of an independent
artistic work. Moreover, the case is not maintainable since copyright should not be content
agnostic.

3. There is no case of passing off since the requirements of the trinity test have not been
fulfilled.

The respondent did not have the requisite goodwill under the test to make a case of passing
off. There was misrepresentation by the respondent which would make the public doubt the
source of the goods. There has been no damage to the appellant’s potential business profit
since it could not be reasonably foreseen that the appellant would venture into the T-shirt
business.

Memorial for the Petitioner

- (viii) -
 -Prayer-

ARGUMENTS

1. THERE IS NO CASE FOR TRADEMARK INFRINGEMENT.

There has been no trademark infringement since the registration of the spoof as a trademark
was invalid [1.1]. Alternatively, even if the trademark was registered, the respondent has not
infringed it [1.2].

1.1 The registration of the spoof as a trademark was invalid.

According to Section 27(1) of the Trade Marks Act, for there to be a case for infringement,
the trademark must be validly registered. The registrar has the final adjudicating power in this
regard.1 The trademark’s registration was invalid, as it was hit by the obscenity exclusion
clause,2 because the spoof was obscene [1.1.1] and the Obscenity exclusion clause in the
trademarks act is constitutionally valid [1.1.2].

1.1.1 The spoof created by Onbhesh Punda is obscene under the Trade Marks Act.

The Trade Marks Act prohibits registration of trademarks that are obscene.3 However, it does
not define the term ‘obscenity’. The Supreme Court, for the test of what comes under
‘obscenity’ adopted the ‘contemporary community standards’ test in the Aveek Sarkar case4.
However, this test is inapplicable as it was laid down in respect of criminal liability,5 which is
not relevant for the purpose of deciding this case. Hence, the court must resort to the ‘draft of
Manual of Trade Marks, Practice & Procedure’ which is a guide to the act.6 Courts have
previously used this manual to decide on terms that are not clearly defined in the act.7

1
P. NARAYANAN, PATENT LAW 66 (3rd ed., 1998).

2
The Trademark Act, 1999, Section 9(2)(c).

3
Id.

4
Aveek Sarkar v. State of W.B., (2014) 4 SCC 257.

5
The Indian Penal Code, 1872, Section 292.

6
Preface to the Draft of Manual of Trade Marks, Practice & Procedure.

7
Suo motu proceedings initiated on petition received from Sri.R.S.Praveen Raj from thiruvananthapuram, regarding
trademark registration on the picture of the deity of attukal temple, thiruvananthapuram.

Memorial for the Petitioner

- (9) -
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The manual explains that the alleged obscene trademark should be evaluated in its context.
For instance, for something like contraceptives, meant for adults, the standard is relaxed.8
The manual also further goes on to allow objections to be raised against explicit full frontal
nudes.

In the present case, the spoof had a “crassly drawn image of ‘male genitalia’ superimposed on
‘the cartoon’ with the caption ‘Lavda Lahsun’”.9 Using the guidelines given in the manual,
male genitalia on stickers and mobile phone covers qualifies as obscene under this manual.

Moreover, in the Ghazillion case10 also, a similar matter had arisen where UK’s statutory
provision invalidated registration of obscene or immoral trademarks.11 In this case, the
trademark to be registered was for the words ‘tiny penis’.

The court reasoned that even though the word ‘penis’ is a well-known anatomical term, it
should be used only in a ‘serious’ context. It said that the word was colloquially and even in
the present case’s time period used as a ‘vernacular slang’.

This reasoning can also be applied here. The word ‘lavda’ is a frequently used slang denoting
a penis which is also sometimes used as an abusive word and hence falls under the same
ambit.

Hence, the spoof, within the understanding of 9(2)(c) due to the superimposed male genitalia
and the caption.

1.1.2 The obscenity exclusion clause under the Trademarks Act is constitutionally valid.

The obscenity exclusion clause is constitutionally valid since all the prongs of the
constitutional validity test have been fulfilled as envisaged in the Dharam Dutt case 12 since

8
Draft of Manual of Trade Marks, Practice & Procedure.

9
Moot Proposition, ¶7.

10
In the matter of Trade Mark Application Number: 2232411 in Class 25 in the name of Christopher Philip
Ghazilian.

11
The Trademark Act, 1999, Section 3(3)(a).

12
Dharam Dutt v. UOI, (2004) 1 SCC 712,¶49
 CODE – R17

Trademarks fall under Article 19(1)(a) of the Constitution [1.1.2.1]. Obscenity falls under
19(2) [1.1.2.2] and is a reasonable restriction [1.1.2.3].

1.1.2.1 Trademarks fall under Art. 19(1)(a) of the constitution

It is admitted that Trademarks form part of ‘commercial speech’ and commercial speech in
India is given protection under freedom of speech and expression under Art 19(1)(a)13.
Therefore, trademarks are a part of Art. 19(1)(a).

1.1.2.2 Obscenity falls under the restrictions envisaged by Art 19(2)

The dictionary meaning of the word ‘obscenity’ would show the meaning of obscene as
offensive to modesty or decency; lewd, filthy and repulsive. This was accepted in the Ranjit
Udeshi case.14 Though the case discussed obscenity under Section 292 of the IPC, it accepted
that any obscenity exclusion clause would fall under the ambit of this restriction. Hence
Obscenity is covered under Art 19(2) under ‘decency and morality’.15

1.1.2.3 The restriction imposed by the Obscenity exclusion clause under the trademarks act is
reasonable under Art 19(2) of the Constitution.

Two considerations relevant for determining the reasonability of a restriction are that of
‘vagueness’ and ‘excessive restriction and arbitrariness’.

The term ‘reasonable restrictions’ implies that the limitations that are imposed on people in
enjoyment of their rights should not be of an excessive or arbitrary nature than what is
required for maintaining public interest.16 It has also been held that both the substantive and
the procedural aspects of the law imposing a restriction should be examined17.

13
Matal v. Tam, 137 S. Ct. 1744; Tata Press Limited v. Mahanagar Telephone Nigam, 995 SCC (5) 139.

14
Ranjit D. Udeshi v. State Of Maharashtra, 1965 AIR 881.

15
Id.

16
Chintaman Rao v. State of Madhya Pradesh, [1950] S.C.R. 759.

17
State of Madras v. V.G. Row, [1952] S.C.R. 597; Dr. N. B. Khare v. State of Delhi, [1950] S.C.R. 519.
 CODE – R17

An enactment may be void for vagueness if its prohibitions are not clearly defined,18 as it
may result in arbitrariness19. It may be argued that the term ‘obscene’ is vague but the
petitioner must establish that it results in excessive discretion and arbitrariness. The word
‘obscene’ envisages application of certain standards that can be used to determine what
constitutes as obscene.20

The obscenity exclusion clause under the trademarks act21 does not impose an excessive
restriction but only aims at protecting the public from immoral trademarks which is clearly
within the scope of Art 19(2).22 Moreover, it is not arbitrary since the Registrar who has the
power to approve the registration23 is also mandated to provide the reason for rejection of
registration.24 Hence, there is accountability and a limit on his discretionary power.
Moreover, the issuance of the draft manual also serves as a guide to both the administrative
authorities and the users.

Hence, the word ‘obscene’ cannot be taken to be so vague so as to result in its constitutional
invalidity.

Other common law countries such as Australia25, England26, Canada27 etc., all have an
obscenity or immorality exclusion clause in their respective trademarks act. Even
international conventions such as the Paris Convention and the TRIPS Agreements provide
the right for member states to deny registration if the marks are “contrary to morality or

18
Kartar Singh v. State of Punjab, (1994) 3 SCC 569, ¶130-131; Shreya Singhal v. U.O.I, AIR 2015 SCC 1523.

19
Shreya Singhal v. U.O.I, AIR 2015 SCC 1523.

20
Draft of Manual of Trade Marks, Practice & Procedure.

21
The Trade Marks Act, 1999, Section 9(2)(c).

22
Ranjit D. Udeshi v. State Of Maharashtra, 1965 AIR 881.

23
The Trade Marks Act, 1999, Section 18(4).

24
The Trade Marks Act, 1999, Section 18(5).

25
The Trade Marks Act, 1995, Section 42 (Australia).

26
The Trade Marks Act, 1994, Section 3(3)(a) (UK).

27
The Trade Marks Act, 1985, Section 9(1)(j) (Canada).
 CODE – R17

public order”.28 Thus, international practice is in keeping with the retention of the ‘obscenity
exclusion clause’.

1.2 Even if the trademark’s registration was valid, Principled Matthew did not infringe
Onbhes Punda’s Trademark.

Infringement of a trademark under Section 29(2)(b)29 takes place when a person uses a mark
which because of its similarity with the registered trade mark and the similarity of the goods
or services covered by the registered trademark is likely to cause confusion in the public.
Infringement under Section 29(4)(c)30 happens in case of dissimilar goods or services given,
the registered trademark has reputation in India among other things.

Here, trademark has not been infringed under Section 29(2)(b) since the goods sold by the
two parties involved were of a completely different character [1.2.1]. moreover, there was no
infringement under Section 29(4)(c) as the ‘spoof’ did not have the requisite reputation in
India.

1.2.1 The goods sold by the two parties are of a completely different character under
Section 29(2)(b) of the Trademarks Act.

For a case for infringement under Section 29(2)(b) of the Trademarks Act along with proving
that the trademark being used by the other person was identical or similar, it also has to be
proven that an average buyer can establish a ‘trade connection’ between the two goods or
services being sold under the two trademarks.31 The right of a registered trademark holder is
not infringed if the goods sold under the similar or identical mark are of a completely
different character.32 The test for similarity of goods as given in Section 29(2)(b) is to
determine if the goods are of the same description in the sense of their ‘nature and

28
Agreement on Trade-Related Aspects of Intellectual Property Rights, Art. 27(2), Apr. 15, 1994; Paris Convention
for the Protection of Industrial Property, Mar. 20, 1883, 13 U.S.T. 2, 828 U.N.T.S. 305, Art. 6quinquies.

29
The Trade Marks Act, 1999, Section 29(2)(b).

30
The Trade Marks Act, 1999, Section 29(4)(c).

31
Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142; Re Jellinek’s Application, [1946]
RPC 59.

32
Rustom Ali Molla And Ors. v. Bata Shoe Co. Ltd., 12 September, 1956.
 CODE – R17

composition’33, their respective uses,34 the ‘trade channels35’ in which they are sold and if
subsequent to all this, there is a reasonable probability of the public being confused in
relation to the two goods sold by the two parties.

Here, the nature and composition of T-shirts is very different from that of Stickers and
Mobile covers sold by Punda. Stickers are primarily made of an adhesive, usually made by a
vinyl compound pasted on a printed paper or plastic. Mobile covers are printed plastic carved
out in the shape of different models of mobiles and T-shirts are clothing material made of
substances such as nylon or like in this case, cotton.

Their respective uses also differ since stickers are usually used for decorative purposes.
Mobile covers are used for decoration and protection of the mobile and T-shirts are worn by
people on their bodies and hence has a different utility value.

From a ‘trade channel’ point of view also these goods differ. Mobile covers are usually sold
in mobile shops or other general electronic accessories shops which also usually sell stickers
used at the back of various electronics whereas T-shirts are sold at a clothing store, which is
very different. The probability of them being sold through one trade channel is low.

This eliminates the likelihood of the public being confused by any purported similarity
between the two goods which usually emanates from the inability to recognise a distinctive
trade market for the two different goods36 and hence there does not lie a case for trademark
infringement under Section 29(2)(b)37

1.2.2 The Spoof made by Punda did not have the requisite reputation in India as required
by Section 29(4)(c) of The Trademarks Act.

For the purpose of sale of a meagre number of goods, a ‘limited or sporadic’ prior use of the
trademark for sale does not create a reputation for that particular unregistered trademark in

33
Re Jellinek’s Application, [1946] RPC 59.

34
Bimal Kumar Barua v. M/S Rayban Sun Optics India Ltd.

35
Id.

36
Sabel BV v. Puma AG, Rudolf Dassler Sport, ECJ 11 NOV 1997

37
The Trade Marks Act, 1999, Section 29(2)(b).
 CODE – R17

the market.38 This has been held in the Ajanta case39 where a sale of 980 tubes for a sum of
Rs. 10,078 over a period of six months was considered a ‘sporadic’ sale and was held to not
be indicative of the fact that trademark had acquired a reputation in the market with respect to
the goods sold.

Here, even though Punda had sold 300 stickers which some may consider to be a good sale,
the subsequent sale of 45 units of mobile covers on an online portal which is available all
over India is an evidence to the fact that the initial sale of stickers was a ‘sporadic’ sale.

Hence, the trademark had not required a reputation in the market to be covered under the
ambit of Section 29(4)(c) and thus there has been no trademark infringement by Principled
Matthew.

2. THERE HAS BEEN NO COPYRIGHT INFRINGEMENT BY PRINCIPLED MATTHEW

There has been no copyright infringement by Matthew since the appellant did not have a
copyright over the ‘spoof’ as it is a Design [2.1] Alternatively, assuming the appellant had
copyright over the ‘spoof’, the respondent’s additions amount to substantial change and
therefore his actions do not amount to copyright infringement [2.2]. Moreover, the case is not
maintainable since copyright should not be ‘content agnostic’[2.3]

1.3 Onbhesh Punda did not have copyright over the issue as the remedy lies in the DA

Punda’s claim should lie under the DA since ‘the spoof’ falls under the definition of design as
per Section 2(d) of the DA [2.1.1]. This is due to the fact that spoof is not entitled to
protection according to the Copyright Act40 (“CA”) [2.1.2]. Alternatively, since the spoof was
capable of being registered under the DA and was not registered, Punda is not entitled to
copyright protection according to the CA 41[2.1.3].

1.3.1 Punda’s ‘Spoof’ is a design as per Section 2(d) of the DA.

38
Uniply Industries Ltd v. Unicorn Plywood Pvt. Ltd. & Ors., AIR 2001 SC 2083.

39
Sun Pharma Laboratories Ltd v. Ajanta Pharma Ltd., 2019 SCC OnLine Del 8443.

40
The Copyright Act, 1957, Section 15(2).

41
Id.
 CODE – R17

‘Design’ under Section 2(d)42 includes only the “features of shape, configuration, pattern,
pattern, ornament or composition of lines or colours applied to any article” by a manual,
industrial, chemical or mechanical process which appeals to in the final article and is judged
wholly by the eye. A design includes things like graphic symbols and packaging43 but every
artistic work cannot be a design.44 The Appellant had superimposed a ‘crassly drawn image
of male genitalia’ on ‘the cartoon’ which was essentially a ‘caricature’. 45 A caricature also
forms part of ‘drawing’ which is primarily a ‘composition of lines’.46

Here, ‘the spoof’ has been applied on the stickers and the mobile covers, which are ‘articles’,
through an industrial process which has resulted in articles that can be judged solely by the
eye and has an appeal of its own. Therefore, the spoof is a design under Section 2(d).47

1.3.2 The spoof is not entitled to copyright protection as per Section 15(2) of CA since it
was not capable of being registered under the DA

In India, unless a work is covered by the provisions of the CA, it cannot be given copyright
protection.48 In accordance with this the CA provides a comprehensive list of works for
which a copyright can exist.49 Moreover, it also provides a special provision with respect to
copyright in designs which are capable of being registered under the DA or have already been
registered.50

42
The Designs Act, 2000, Section 2(d).

43
Kellett, The Difference Between Trade Marks, Patents, Copyright And Designs Explained, February 26 2019,
available at https://www.citma.org.uk/resources/trade-marks-ip/intellectual-property-blog/the-difference-
between-trade-marks-patents-copyright-and-designs-explained.html (Last visited on August 07, 2019).

44
The Designs Act, 2000, Section 2(d).

45
Moot Proposition, ¶7.

46
NATHUNI ADAM LAL, LAL’S COMMENTARY ON THE COPYRIGHT ACT (Ajay Sahni, 4th ed., 2006)

47
The Designs Act, 2000, Section 2(d).

48
The Copyright Act, 1957, Section 16.

49
The Copyright Act, 1957, Section 13.

50
The Copyright Act, 1957, Section 15.
 CODE – R17

Therefore, there cannot be a copyright protection for works which are not covered in these
two sections.51

For those designs that are capable of being registered under the DA but have not been
registered, copyright protection ceases to exist as soon as the article(s) to which the design
has been applied has been reproduced more than fifty times by an industrial process by the
copyright owner or his licensee.52 This implies that copyright protection is available on a
design only when it is capable of being registered under the DA but has not been registered
and that protection shall cease to be available once there has been a reproduction for more
than fifty time as stated above. Consequently, designs that are not capable of being registered
under the DA are not entitled for copyright protection.

The DA mandates that for a design to be capable of registration, the design must be a new or
an original one, should not have been published to the public in tangible form before the
filing of the application for registering the design, it must be notably distinguishable from
other known designs and should not contain any ‘scandalous or obscene’ matter or mark.53

As proved in sub submission [1.1.1], the ‘spoof is obscene and is therefore not capable of
being registered under the DA.

1.3.3 Alternatively, even if the spoof is capable of being registered under the DA and is not
registered, the creator loses the entitlement to copyright protection a in accordance
with Section 15(2) of CA.

For any design that is capable of being registered under the DA but has not been registered,
loses its copyright protection once the article on which the design has been applied is
industrially reproduced more than fifty times by its owner or his licensee.54

51
The Copyright Act, 1957, Sections 13 and 15.

52
The Copyright Act, 1957, Section 15.

53
The Designs Act, 2000, Section 4.

54
The Copyright Act, 1957, Section 15.
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Here, the spoof which is a design as proved under [2.1.1] had been applied on the stickers 55
and had been reproduced at least three hundred times.56 Therefore the copyright protection
has ceased to exist now.

1.4 Even if the Appellant has a copyright, the respondent’s actions do not amount to
copyright infringement

Copyright Legislations are more focussed and concerned towards ‘expression of thought’ and
not ‘origin of idea’.57 When a person by way of trade exhibits any infringed copies of the
work, copyright in that work is deemed to be infringed.58 There can be no definite test to
determine what constitutes a substantial part of a picture.59 India follows the ‘modicum of
creativity’ test under which the creativity standard for a copyright claim is not high at all but
is in fact set at a minimum.60 Here,’ the spoof’ was created as a parody61 to the original
cartoon which was created to spread climate change awareness.62 The modified spoof (mark)
created by the appellant removed the Devil and the angel63 which were originally used to
signify correct and good dietary options to decrease climate change which was condemned by
the petitioner in his spoof. In the case of McCrum,64 by changing the expression of a soldier
in the same stance and position, the accreditation of independent artistic was awarded. Here,
in the mark, the whole idea of what constitutes a good dietary plan was removed and a

55
Moot Proposition, ¶7.

56
Moot Proposition, Clarification 3.

57
MacMillan and Co. v. K. And J. Cooper, AIR 1924 PC 75; Emersion v. Davies, (1848) 3 Story US Rep 768.

58
The Copyright Act, 1957, Section 51(b)(iii).

59
Hanfstaengl v. HR Baines and Co Ltd, (1895) AC 20, 25.

60
Eastern Book Company v. D.B. Modak, 2002 PTC 641.

61
Moot Proposition, ¶7.

62
Moot Proposition, ¶5.

63
Moot Proposition, ¶11.

64
McCrum v. Eisnker, (1917) 87 LJ Ch. 99.
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passive acceptance of the inevitability was showed which can be deduced from the changes
made.

Hence the mark qualifies as an independent artistic work under the ‘modicum of creativity’
test and therefore the Respondent has not infringed the copyright of the Appellant.

1.5 The protection of copyright should not be content agnostic.

What is meant by the statement that copyright should not be content agnostic is that even if a
person expresses his thought in an original manner, it does not necessarily mean that a person
becomes entitled to a copyright since copyright is not an inherent right. Hence, a person
becomes entitle to a copyright protection over his work only if the contents of the work are
lawful.

All statutes must be read in accordance with The Constitution of India which is the supreme
authority of law in India. The constitution provides for a reasonably Restricted Freedom of
speech and expression65 and hence no other law in India should have the authority to bypass
this and award an unrestricted freedom of speech and expression. If the protection of
copyright is made ‘content agnostic’ people will enjoy this protection over their work which
is otherwise prohibited by law. This would defeat the purpose of reasonably restricted rights
which the constitution guarantees. Hence to uphold the supremacy of the constitution,
protection of copyright should be ‘content agnostic’.

Across the world, courts using the principle of Ex turpi causa non oritur action66 have time
and again refused to enforce a copyright if the work to be copyrighted is against the law.67
Indian courts have also recognised this in the case of Super Cassettes Industries68 where the
court held that a copyright should not be enforced if the work is ‘immoral’, ‘injurious to
public life’, or incites people to commit an act that can be injurious to public life.

65
The Constitution of India, 1950, Art. 19(2).

66
Holman v. Johnson, (1775) 1 Cowp 341 at 343.

67
Hyde Park Residence v. David Yelland, [2000] EWCA Civ 37; Broder v. Zeno Mauvais, 88 F. 74, 75 (C.C.N.D.
Cal. 1898).

68
Super Cassettes Industries Ltd. v. Hamar Television Network Pvt. Ltd., 2011 (45) PTC 70 (Del.) 88-89.
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Moreover, a denial of enforcement of copyright does not result in a total curbing of freedom
of speech since such a denial does not prohibit the usage of the work but only denies the
enforcement of copyrights and hence restricts the commercial exploitability of the work.69
Therefore, a court may refuse to enforce a copyright on the ground of public interest even
when such a ground is not explicitly mentioned in the legislation70 in question.

Hence, copyright should not be content agnostic and ‘the spoof’ here even though having
copyright in theory should not be given protection under the law on the grounds of being
obscene.

3. THERE IS NO CASE FOR PASSING OFF

Even if a person cannot file for trademark infringement, the trademarks act does not limit the
person to claim remedy under the tort of ‘passing off’71. Passing off is a tort which prohibits a
person to sell his own goods under the pretence that they are goods of another person. 72 In a
case for passing off, the plaintiff has to fulfil three essential conditions which are known as
the ‘trinity test’ where the plaintiff has to prove that 1) he had ‘goodwill’, 2) the defendant
made a misrepresentation that is likely to deceive the public, and 3) the misrepresentation led
to some sort of damage to the claimant’s business.73 Here, Onbhesh Punda did not have the
requisite goodwill [3.1], Matthew did not make a misrepresentation with his T-shirts [3.2]
and there has been no damage to Punda’s business [3.3].

1.6 Onbhesh Punda did not have the requisite goodwill for a passing off claim

Goodwill is the attractive force which attracts customers to the business.74 For goodwill to
exist there must be some impact on the customer behaviour that is causative in nature.75 Just

69
C. Edwin Baker, First Amendment Limits on Copyright, 55 VAND. L. REV. 891 (2002) at 901, 903; Ned Snow,
Content-Based Copyright Denial, Indiana Law Journal Vol. 90 (4) Article 3.

70
The Copyright Act, 1957.

71
The Trademark Act, 1999, Section 27(2).

72
Perry v. Truefitt, (1842) 49 ER 749.

73
Reckitt & Colman Products Ltd. v. Borden Inc., 1980 RPC 31 (House of Lords); Laxmikant Patel v. Chetanbhai
Shah, (2002) 3 SCC 65.

74
IRC v. Mueller & Co’s Margarine, [1901] AC 217, 224.
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because a trader has started a business and had some sale does not necessarily mean that the
seller has earned the requisite goodwill.76 Consumers might buy the goods just because of the
convenience of the location or just because the business is there.77

Here, Punda was selling stickers initially from his own room and the mess. 78 The reason that
the stickers sold so much thee is because IIT-KGP is away from the city and stickers having a
marginally low price, it was convenient for people of the college to buy those stickers from
there for their personal use. Even the sale in the fest can be attributed to the fact that because
his business was just present there, it was opened to a floodgate of students who could easily
afford a sticker and hence bought one. This reasoning is further substantiated by the fact that
when he sold the same stickers and other products through an online portal shipping across
India, the initial success was not matched.79

Hence it can be concluded that Punda did not have the requisite goodwill for a succesful
claim under passing off.

1.7 There has been no Misrepresentation by Principled Matthew

The only head where misrepresentation can be contested is under ‘misrepresentation as to

source’. This kind of misrepresentation occurs when the defendant somehow suggests to the
public that the claimant is the source of the product being sold. 80 It also occurs when the
defendant uses a word or name that the public associates with the claimant.81 In the case of
Dunhill82 the plaintiffs were manufacturers of tobacco pipes which they had been for many
years been marking with an inlaid white spot. The defendants started selling pipes with a spot

75
Id.

76
L. BENTLY & B. SHERMAN, INTELLECTUAL PROPERTY LAW, 674 (4th ed., 2014); HFC Bank Ltd v. Midland
Bank Ltd., [2000] F.S.R. 176.

77
Id.

78
Moot Proposition, ¶8.

79
Moot Proposition, ¶9.

80
United biscuits v. Asda Stores, [1997] RPC 513.

81
L. BENTLY & B. SHERMAN, INTELLECTUAL PROPERTY LAW, 696 (4th ed., 2014)

82
Dunhill v. Barlett, (1922) 39 R.P.C 426.
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on them, but larger and coloured. It was held that the spots on pipe stems were distinctive and
hence no passing off could be claimed

Here, there was a substantial change in the mark used by Matthew from that used by Punda.
Punda’s mark had a demon and angel as food items which represented a message whereas
Mathhew’s mark did not have any such representation where food items denoted something
good or bad.. The Dunhill case applies here since the mark had become clearly distinctive.
Moreover, Matthew sold the T-Shirt only in his college’s fest83 which indicates that the
buyers comprised of an educated class capable enough of distinguishing between the two
marks. Hence there has been no misrepresentation by Matthew.

1.8 There has been no damage to Punda’s business so as to be valid for a passing off
claim.

The only head where damage can be contested is under a ‘loss of potential trade and profit’
since no existing trade could have been damaged since the claimant was not selling T-shirts.

A ‘loss of potential trade and profit’ may occur when the defendant trades in a certain market
sector where the claimant can be reasonably inferred to have an intention to expand in the
future and thus resulting in loss of potential trade and profits. 84 Here, the defendant was
selling stickers and later expanded to Mobile covers. His expansion to Mobile covers was an
unsuccessful business venture85 which would have discouraged him to expand further with
the business with the same mark. Moreover, both of these Businesses were associated with
the use of plastic and the market rates of both are lower than that of T-shirts which is also
made from a totally different material and has a totally different market sector of its own.

Hence, it can be concluded that there has been no loss of potential trade and profit to punda
and therefore no damages to his trade.

Since all three of the Trinity test prongs are not fulfilled, the passing off action fails.

83
Moot Proposition, ¶¶10-12.

84
LRC v. Lila Edets, [1973] RPC 560.

85
Moot Proposition, ¶9.
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PRAYER

In the light of the arguments advanced and authorities cited, The Respondent humbly submits
that the Hon’ble Supreme Court of India may be pleased to Adjudge and declare that;

1) There is no case for Trademark Infringement;

2) There is no case for Copyright Infringement;
3) There is no case for passing off.

And any other order as it deems fit in the interest of equity, justice and good conscience.

For this act of kindness, The Respondent shall duty bound forever pay.

Signed,

On behalf of the Respondent,

The Counsel for the Respondent