Copyright on Compilations

As per the Practice And Procedure Manual 2018, in order to qualify for
copyright protection a compilation must “exhibit some creativity or originality in
the selection or arrangement of the contents of the work. If the labour and skill
required to make the selection and to compile the tables which form its items is
negligible then no copyright can subsist in it.” “The notion of originality of
content of the work cannot realistically be present in any kind of compilation.
Nevertheless, compilations as such come within the ambit of copyright protection
for literary works, since they are referred to as collections in the Berne
Convention, but in reality, they do not possess originality in the same sense as
genuine literary works. Originality in their case is tested on the grounds of the
selection and arrangement of the material used to compile the final work. The
author of a compilation does not really create anything new, but merely selects
and arranges prior work. In such cases, copyright protection is only provided for
the new original literary work of authorship and not to the work as a whole”.
Further, as the term ‘compilation’ is not defined in the statute itself, there is a need
to go beyond the statute and understand the interpretations attributed to it through
judicial pronouncements.

I. Eastern Book Company & Ors. v. D. B. Modak and Anr.

Citation: Civil Appeal No. 6472 of 2004

Bench: Justice B.N. Agarwal & Justice P.P. Naolekar
Court: Supreme Court of India

Facts:
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.

Issues:
 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?
Laws:
Section 13, 14 and 52 (1) (iv) (q) of the Indian Copyright Act, 1957.

Analysis:
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.

Conclusion:
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.

University of London Press v. University Tutorial Press

This is a well-known case that sheds light on the concept of ‘originality’ in
copyright law. In this case, the court examined the application of the “sweat of the
brow” theory, which suggests that copyright protection can be granted when a
work reflects significant skill, labor, and judgment.
The court’s ruling emphasised that mere effort or industry alone would not be
sufficient to establish copyright protection. Instead, the work must exhibit a certain
level of creativity and originality, showcasing the author’s personal skill and
judgment in its creation.
Fiest Publications, Inc. v. Rural Telephone Services Co
This case revolved around the question of the level of creativity required to seek
copyright protection for compilations.
In Fiest Publications v. Rural Telephone Services, Fiest used information from
Rural Telephone’s listings without obtaining a license after Rural refused their
request. In the initial court proceedings, the court ruled in favor of Fiest, stating
that Rural’s directory lacked the creativity necessary for copyright protection.
However, upon appeal, the court adopted the “Modicum of Creativity” theory,
departing from the “Sweat of the Brow” theory. According to the court, a
compilation of facts can be eligible for copyright protection only if it demonstrates
a sufficient amount of intellectual creativity and judgment in its creation.
The court determined that Fiest did not violate Rural’s copyrights as Rural’s
listings did not meet the legal standard for copyright protection. This decision
significantly influenced the understanding of copyright protection for compilation
works, establishing the requirement of a certain level of creativity and judgment to
qualify for copyright.

To qualify for copyright protection, a compilation must exhibit a sufficient

degree of originality and creativity in its selection and arrangement. Mere
mechanical or routine processes of organisation and arrangement do not meet
the threshold of originality required for copyright protection.

Primary Acts of infringement

Primary acts of infringement are defined under section 51 (a). Primary

infringement is when the property of the copyright owner is copied. For example,
if a person is downloading a movie from a pirated website. In some cases, only a
part of the copyrighted property is copied, for example, downloading only certain
portions of the movie, not the whole thing. To establish infringement in such cases,
the owner of the copyright should establish that a substantial amount of the work is
stolen or copied. In the case of C. Cunniah & Co. v. Balraj & Co.,1959 the court
held that one picture is said to be a copy of another only if a substantial part of the
content is found in the copied or reproduced content.
The Chancellor, Masters & Scholars of the University of Oxford & Ors. vs.
Rameshwari Photocopy Services & Anr. (2016):

- This case dealt with the photocopying of educational materials. The Delhi High
Court emphasized the need for original works to have a certain degree of
creativity, rather than just being a product of labor and skill.

In Eastern Book Co. v Navin J Desai(2001 PTC 57(Del ) the Delhi High Court
examined the requirement of originality in the literary work. The plaintiff was the
publisher of CD-ROM Supreme Court Cases. The allegation made was that the
competitors THE LAWS and GRAND JURIX have infringed the copyright in their
work which is compilation of the supreme court judgments and the head notes.
The plea of the plaintiff is that judgments were copy edited before publishing
which includes correcting errors in typing, Para numbering, citation of cases,
applying comas and full stops which includes skill and labour thus copyright
subsist in such work. The court held that no copyright exist in the judgments and it
was in public domain and been published once and the copy editing work is too
trivial for copyright to exist. In respect of head notes the court held that if the
plaintiff could establish that there was originality and intellect was put in making
the head notes, copyright shall exist but the defendant undertook to ensure that
head notes copyright was not infringed thus no order was passed.

In Gurukrupa Mech Tech Pvt Ltd v. State of Gujarat and Ors [(2018) 4 GLR
3324] a Single Judge Bench (J.B. Pardiwala, J.) of the High Court of Gujarat in its
order of August 2018, while discussing the landmark Supreme Court decision in
Eastern Book Company & Ors. v. D.B. Modak, reiterated,

“Where a compilation is produced from the original work, the compilation is more
than simply a re-arranged copyright of original, which is often referred to as skill,
judgment and or labour or capital. The copyright has nothing to do with
originality or literary merit. Copyrighted material is that what is created by the
author by his skill, labour and investment of capital, maybe it is derivative work.
The courts have only to evaluate whether derivative work is not the end-product of
skill, labour and capital which is trivial or negligible but substantial. The courts
need not go into evaluation of literary merit of derivative work or creativity aspect
of the same.” Further, this Court held, “it is apparent that copyright subsists in
those works which can be deemed as original work, predominantly originating
from the author.”

Recently in February 2021, in the case of A. Sirkar & Co. (Jewellers) Pvt. Ltd. v.
B. Sirkar Jahuree Pvt. Ltd., [2021 (86) PTC 19] a Single Judge Bench (Srikumar
Goswami, J.) of the Commercial Court at Alipore while discussing the Delhi High
Court’s decision in Burlington Home Shopping v. Rahnish Chibber stated, “…it
has been held by the Hon’ble Court that a compilation may be considered a
copyright work by virtue of the fact that there was devotion of time, labour and
skill in creating the said compilation from many available works”. The courts have
through its decisions recognized the presence of time, labor and skill to be of
paramount importance while determining whether or not copyright subsists in
compilation of judgments.

Academy of General Edu., Manipal and Ors. vs. B. Malini Mallya (23.01.2009
-SC)

MANU/SC/0146/2009

The Copyright Act is not concerned with the original idea but with the expression
of thought. Copyright has nothing to do with originality or literary merit.
Copyrighted material is that what is created by the author by his own skill, labour
and investment of capital, maybe it is a derivative work which gives a flavour of
creativity. The copyright work which comes into being should be original in the
sense that by virtue of selection, coordination or arrangement of pre-existing data
contained in the work, a work somewhat different in character is produced by the
author. On the face of the provisions of the Copyright Act, 1957, we think that the
principle laid down by the Canadian Court would be applicable in copyright of the
judgments of the Apex Court. We make it clear that the decision of ours would be
confined to the judgments of the courts which are in the public domain as by virtue
of Section 52 of the Act there is no copyright in the original text of the judgments.
To claim copyright in a compilation, the author must produce the material with
exercise of his skill and judgment which may not be creativity in the sense that it is
novel or non- obvious, but at the same time it is not a product of merely labour and
capital. The derivative work produced by the author must have some
distinguishable features and flavour to raw text of the judgments delivered by the
court. The trivial variation or inputs put in the judgment would not satisfy the test
of copyright of an author

A. Sirkar and Co. (Jewellers) Pvt. Ltd. vs. B. Sirkar Jahuree Pvt. Ltd.
(09.02.2021 - Other) : MANU/OT/0018/2021

As per section 13 of the Indian Copyright Act, 1957, copyright subsists in literary
works, dramatic works, musical works, artistic works cinematograph films, sound
recordings. However, the Act does not define the term "originality". In absence of
precise definition of the term "originality" the Indian Courts have relied upon
various doctrines by the decisions of the many foreign Courts. The Privy Council,
in the case of Macmillan & Company Ltd. v. Cooper, MANU/PR/0118/1923 :
(1924) 26 BOMLR 292 approved the principle laid down in University of London
Press Ltd. v. University Tutorial Press Ltd. (1916) 2 Ch. 601 which laid down that
copyright over a work arises and subsists in that work due to the skill and labour
spent on that work, rather that due to the inventive thought. This is more popularity
known as the "sweat of the brow" theory. It has been held originality varies merely
from the fact that sufficient labour, skill and efforts (physical or otherwise) have
been applied in the work. Such "sweat of the brow" theory was adopted in India
particularly that was appeared from the Judgment of the Hon'ble High Court at
Delhi in the case of Burlington Home Shopping v. Rahnish Chibber
MANU/DE/0718/1995 : 61 (1995) DLT 6 wherein it has been held by the Hon'ble
Court that a compilation may be considered a copyright work by virtue of the fact
that there was devotion of time, labour and skill in creating the said compilation
from many available works.

In Kelly v. Morris MANU/EG/0442/1872, School of thought propounded is that,

at least in respect of compilations, only time and expenses are necessary which is
"industrious collection".

The plaintiff was the owner and publisher of the first directory. The defendant
came out with another directory.

The plaintiff sought an injunction against the defendant to restrain the publication
of the defendant's directory on the allegations that the defendant was guilty of
appropriating the information contained in the plaintiff's directory and obtained the
benefit of many years of incessant labour and expense. The defendant, on the other
hand, contended that there had been no unfair or improper use of the plaintiff's
work. Information which was given in the plaintiff's directory was entitled to be
used and adopted as long as he did not servility copy it. The defendant had
bestowed his independent time, labour and expense on the matter and thus had in
no way infringed the copyright of the plaintiff. Granting injunction, the Court held
that in the case of a directory when there are certain common objects of
information which must, if described correctly, be described in the same words, a
subsequent compiler is bound to set about doing for himself that which the first
compiler has done. In case of a road-book, he must count the milestones for
himself. In the case of a map of a newly discovered island he must go through the
whole process of triangulation just as if he had never seen any former map, and,
generally he is not entitled to take one word of the information previously
published without independently working out the matter for himself, so as to arrive
at the same result from the same common sources of information, and the only use
that he can legitimately make of a previous publication is to verify his own
calculations and results when obtained. The compiler of a directory or guidebook,
containing information derived from sources common to all, which must of
necessity be identical in all cases if correctly given, is not entitled to spare himself
the labour and expense of original inquiry by adopting and re-publishing the
information contained in previous works on the same subject.

(Cited in Eastern Book Company and Ors. vs. D.B. Modak and Ors. (12.12.2007 -
SC) : MANU/SC/4476/2007)

In Gopal Das v. Jagannath Prasad and Anr. MANU/UP/0148/1938 :

AIR1938All266 , the plaintiffs were the printers and publishers of the books. The
book titled "Sachitra Bara Kok Shastra" was printed for the first time in 1928 and
had run into four editions since. The defendants printed and published another
book titled "Asli Sachitra Kok Shastra" in 1930. The plaintiffs' case was that the
book published by the defendants was a colorable limitation of their book and an
infringement of plaintiffs' copyright. It was held by the Court that the plaintiffs
compiled their book with considerable labour from various sources and digested
and arranged the matter taken by them from other authors. The defendant instead
of taking the pains of searching into all the common sources and obtaining his
subject matter from there, obtained the subject matter' from the plaintiffs' book and
availed himself of the labour of the plaintiffs and adopted their arrangement and
subject matter and, thus, such a use of plaintiffs' book could not be regarded as
legitimate. It was held that a person whose work is protected by copyright, if he
has collected the material with considerable labour, compiled from various sources
of work in itself not original, but which he has digested and arranged, the
defendant could not be permitted to compile his work of like description, instead of
taking the pains of searching into all the common sources and obtaining the
subject-matter from them and to adopt his arrangement with a slight degree of
colourable variation thereby saving pains and labour which the plaintiff has
employed. The act of the defendant would be illegitimate use. The Court held that
no one is entitled to avail himself of the previous labour of another for the purpose
of conveying to the public the same information, although he may append
additional information to that already published.

(Cited in Eastern Book Company and Ors. vs. D.B. Modak and Ors. (12.12.2007 -
SC) : MANU/SC/4476/2007)

In V. Govindan v. E.M. Gopalakrishna Kone and Anr. MANU/TN/0165/1955

: AIR1955Mad391 , the respondents had published an English-English Tamil
Dictionary in 1932. The appellants were the publishers of similar Dictionary in
1947. An action was brought regarding the publication and sale of the dictionary
by the appellants, which was alleged to be constituting an infringement of the
respondents' copyright. The lower court went through both the books minutely and
found, "page, after page, word after word, slavishly copied, including the errors,
and found the sequence, the meanings, the arrangement and everything else
practically the same, except for some 'deliberate differences' introduced here and
there to cover up the piracy". The High Court referred to Copinger and James on
Law of Copyright wherein the law has been neatly summarized that: "In the case of
compilations such as dictionaries, gazetteers, grammars, maps, arithmetic's,
almanacs, encyclopedias and guide books, new publications dealing with similar
subject-matter must of necessity resemble existing publications, and the defense of
'common source' is frequently made where the new publication is alleged to
constitute an infringement of an earlier one." The Court held that in law books and
in books as mentioned above there is very little amount of originality but the same
is protected by law and "no man is entitled to steal or appropriate for himself the
result of another's brain, skill or labour even in such works." The Court further
clarified that where there is a 'common source', the person relying on it must prove
that he actually went to the common source from where he borrowed, employing
his own skill, labour and brains and that he did not merely copy.

(Cited in Eastern Book Company and Ors. vs. D.B. Modak and Ors. (12.12.2007 -
SC) : MANU/SC/4476/2007)
In Agarwala Publishing House v. Board of High School and Intermediate
Education and Anr. MANU/UP/0031/1967 : AIR1967All91 , a writ petition
was filed by a publisher form challenging an amendment of the Regulations of the
Board declaring that copyright of the question papers set at all examinations
conducted by the Board shall vest in the Board and forbidding the publication of
such question papers without the Board's permission. The question involved in the
case was whether the question papers are 'original literary work' and come within
the purview of Section 13 of the Copyright Act, 1957. It was urged that no
copyright can exist in examination papers because they are not 'original literary
work'. It was held that the 'original literary works' referred to in Section 13 of the
Copyright Act, 1957, are not confined to the works of literature as commonly
understood. It would include all works expressed in writing, whether they have any
literary merits or not. This is clear from the definition given in Section 2(o) of the
Act which states that literary work includes tables and compilations. The Court
further held that the word 'original' used in Section 13 does not imply any
originality of ideas but merely means that the work in question should not be
copied from some other work but should originate in the author, being the product
of his labour and skill.

(Cited in Eastern Book Company and Ors. vs. D.B. Modak and Ors. (12.12.2007 -
SC) : MANU/SC/4476/2007)

In the case of Gangavishnu Shrikisondas v. Moreshvar Bapuji Hegishte and

Ors. ILR 13 Bom 358, the plaintiff, a book seller, in 1984 brought out a new and
annotated edition of a certain well-known Sanskrit work on religious observances
entitled 'Vrtraj,' having for that purpose obtained the assistance of the pandits, who
re-cast and re-arranged the work, introduced various passages from other old
Sanskrit books on the same subject and added footnotes. Later on, the defendant
printed and published an edition of the same work, the text of which is identical
with that of the plaintiff's work, which moreover contained the same additional
pages and the same footnotes, at the same places, with many slight differences.
The foundation of both plaintiff's and defendant's books is an old Sanskrit work on
Hindu ceremonial, which could have been published by anyone. The copyright
claimed by the plaintiff was on the additions and alterations to the original text,
which the parties admit to be material and valuable, and in which the copyright is
claimed of its prior publication. The defendants argued that there was nothing
really original in the plaintiff's book and, therefore, he was not entitled to copyright
in the bock. It was held by the Court that a new arrangement of old matters will
give a right to the protection afforded by the law of copyright. If anyone by pains
and labour collects and reduces it as a systematic compilation in the form of a book
it is original in the sense that that entitles the plaintiff to the copyright. The
plaintiff worked for such a new arrangement of old matters as to be an original
work and was entitled to the protection; and that as the defendants had not gone to
independent sources of the material but had pirated the plaintiff's work, they were
restrained by injunction.

(Cited in Eastern Book Company and Ors. vs. D.B. Modak and Ors. (12.12.2007 -
SC) : MANU/SC/4476/2007)

In Rai Toys Industries and Ors. v. Munir Printing Press 1982 PTC 85, the
plaintiff had published a Tambola ticket book containing 1500 different rickets in
1929. The plaintiffs alleged that the defendants had brought out another ticket book
which the plaintiffs claimed to have written in 1929 and registered as copyright.
The ticket book brought out by the defendants was alleged to contain 600 different
tickets and the same had been copied identically from the books of the plaintiff. On
this basis, a suit for injunction and rendition of account was filed by the plaintiff.
The question before the court was whether the ticket-books in the form of tables
constitute literary work; and whether copyright has been violated or not? It was
held by the High Court that preparation of tickets and placing them in tables
required a good deal of skill and labour and would thus satisfy the test of being
original literary work. It was recognized that the arrangement of numbers is
individual work of a person who prepares it; it bears his individuality and long
hours of labour. It is not information which could be picked up by all and sundry.
The preparation of tickets is an individualized contribution and the compilation
eminently satisfies the test of being an original literary work. Hence it was held to
be a clear case of copyright violation when the defendant decided to pick and
choose 600 tables on the sly and publish them as his individual work.

(Cited in Eastern Book Company and Ors. vs. D.B. Modak and Ors. (12.12.2007 -
SC) : MANU/SC/4476/2007)