Journal of Intellectual Property Rights

Vol 27, July 2022, pp 266-276

DOI: 10.56042/jipr.v27i4.50594

Originality for Copyright Protection in Literary Works: After EBC v DB Modak

Sparsh Sharma
Rajiv Gandhi School of Intellectual Property Law, Indian Institute of Technology, Kharagpur — 721 302, West Bengal, India

Received: 31st May 2021; accepted: 6th April 2022

Originality, can be termed as the grund norm (the basic norm) for copyrightability. However, no one-size-fits-all formula
is adopted by countries on this aspect, and this article first explores the position and benchmarks to determine original
literary work (because even for different ‘works’ the criteria differs). Pursuant to this inquiry of identifying the ambit of the
respective thresholds, the Indian perspective is analysed with special emphasis on the decision delivered by Indian Supreme
Court in DB Modak. The judgement is critiqued to identify lacunae and absurdity in determining the law laid down and its
application in the factual matrix. Finally, subsequent Indian decisions are looked upon by the author to find out the
underlying approach by the courts wrt interpretation of DB Modak and what common threads emerge from them.

Keywords: Copyright, Original Literary Work, EBC v DB Modak, Copy-Edited Judgements, Copyright Act 1957

Originality is simply a pair of fresh eyes (1) Subject to the provisions of this section and the
-Thomas Wentworth Higginson1 other provisions of this Act, copyright shall subsist
The aspect of "fixation" and "originality" for throughout India in the following classes of works,
copyrightability2 is a common thread in almost all that is to say,—
jurisdictions. The copyrightability, therefore, requires (a) original literary, dramatic, musical and artistic
originality of expression with some minimal creative works....”6
element. It is like a rewards-based system to
encourage the creator. One of the most cited works of 3. Corresponding provision from the Copyright
Landes and Posner stress the economic rationale of Act of the United States
copyright, i.e., copyright protection as an incentive to Ҥ102 Subject matter of copyright:
create more work otherwise, an unscrupulous person (a) Copyright protection subsists, in accordance
may simply copy the work as it entails no cost with this title, in original works of authorship fixed in
as such.3 Therefore, a link exists between any tangible medium of expression…..” 7
copyrightability and originality, i.e., originality Also, few attached clauses are mentioned below,
corresponds to copyright protection (to the creator to “(1) literary works;
protect his work from getting his work copied) and (2) musical works, including any accompanying
liability (from getting sued by the creator of earlier words;
work). To substantiate this ‘universality’ of originality (3) dramatic works, including any accompanying
in national regimes, few provisions are reproduced as music....” 7
hereunder – (emphasis supplied)
The understanding of “original” by Nimmer is well
1. Canadian Copyright Act4 established, i.e., something that is independent creation
“Conditions for subsistence of copyright of the author (non-copying requirement); and
5 (1). Subject to this Act, copyright shall subsist in requirement of de minimis creativity- “contribution” by
Canada, for the term hereinafter mentioned, in every author.8 The former is an undisputed aspect, generally
originalliterary, dramatic, musical and artistic work speaking, whereas the degree of variation occurs due to
if any one of the following conditions is met…”5 the interpretation of the latter, as to how low a
2. Also, similar provision can be traced in The contribution is too low to be original- the dilemma.
Copyright Act of India, 1957.
“13. Works in which copyright subsists.— The International Order
—————— The standard of originality, albeit universal, is not
†
Email: sparsh_2020@[Link] standardised. The main international obligations like
 SHARMA: ORIGINALITY FOR COPYRIGHT PROTECTION IN LITERARY WORKS: AFTER EBC V DB MODAK 267

the Berne Convention9 and the TRIPS Agreement10 format and it does not matter whether they are of high
leave it to the member countries to their discretion. quality/style or low (just that non - copying
The closest provision in Berne convention viz., requirement is met); they should originate from the
Article 2(1)11 does not mention “original” criteria, as author. For instance, Meredith's novel, a work of high
such, and hence the courts and national statutes creativity and quality would be considered as a
assume the responsibility onto themselves to set the literary work as much as a list of registered bills of
scope and bounds of the word. However, the hint sale protected as “books” under the Copyright Act of
of originality to enjoy copyright is indicated in 1892. Also, the papers prepared by the examiner were
Article 14 bis.11 work of skill (selection), judgement and experience
and not mere compilations as per the Court
“Article 2(1)- (the position earlier set in Walter v Lane13 was on the
The expression "literary and artistic works" similar lines-labour of a reporter in taking down the
shall include every production in the literary, speech) and prima facie something which is worth
scientific and artistic domain, whatever may be copying is worth protecting, and therefore they
the mode or form of its expression, such as qualify as original literary work. This came to be
books, pamphlets and other writings; lectures, known as SOTB doctrine or “industrial collection”. It
addresses, sermons and other works of the same was also observed that novelty and inventive step are
nature; dramatic or dramatic-musical works; applicable to patents, and not to copyright.14
choreographic works and entertainments in
dumb show; musical compositions with or US- Modicum of Creativity (MOC)
without words; cinematographic works to which Essentially, it refers to creativity as an additional
are assimilated works expressed by a process rider beyond the classic skill and labour requirement
analogous to cinematography; works of (SOTB). In Feist Publications v Rural Telephone
drawing, painting, architecture, sculpture, Service Co15('Feist'), the primary issue before the
engraving and lithography; photographic works apex court was should telephone directory whitepages
to which are assimilated works expressed by a be entitled to copyright protection and the court
process analogous to photography; works of highlighted the mandate of Article 1 Section 8 Clause
applied art; illustrations, maps, plans, sketches 8 of the US Constitution which lays down the idea of
and three-dimensional works relative to promotion of Science and Technology.
geography, topography, architecture or
science.” Article 1, Section 8, Clause 8 of Constitution of
US16, gives power to the Congress,
Article 14bis- "To promote the progress of science and
(1) Without prejudice to the copyright in any useful arts, by securing for limited times to
work which may have been adapted or authors and inventors the exclusive right to their
reproduced, a cinematographic work shall be respective writings and discoveries."
protected as anoriginal work. The owner of
copyright in a cinematographic work shall enjoy Hence, based on this, it was held that not mere
the same rights as the author of an labour but intellectual labour qualifies for copyright
originalwork, including the rights referred to in protection. The lessons learnt from Feist (O'Connor
the preceding Article….” J.) were -
(emphasis supplied) (i) de minimis creativity for originality
('no matter how crude, humble or obvious'17)
UK - Sweat of the Brow (SOTB) (ii) summarily rejected SOTB doctrine as a very
In University of London Press Ltd. v University low threshold
Tutorial Press Ltd12 the issue before the court was Thus, the Court observed that “first to discover”
wrt the subsistence of copyright in examination (telephone numbers; data) does not mean that the data
question papers- whether they qualify as original is owned by the discoverer (Rural here).
literary works or not? To understand this position in perspective consider
The court observed that the question papers qualify the figure shown below and imagine it to be an
as literary works since they are in print/ writing apparent balloon. If one part is squeezed beyond a
268 J INTELLEC PROP RIGHTS, JULY 2022

point, the other will expand. Therefore if almost Canadian Supreme Court as follows,
everything is copyrightable (as standard set in the “I conclude that the correct position falls between
UK), the public domain shrinks. That was the premise these extremes. For a work to be "original" within the
of the US position.18 meaning of the Copyright Act, it must be more than a
mere copy of another work. At the same time, it need
Post-Feist not be creative, in the sense of being novel or unique.
Influenced by the scrutiny in the Feist, from skill- What is required to attract copyright protection in the
labour qualification to a creative spark, several courts expression of an idea is an exercise of skill and
(for instance in Australia) eventually sided away from judgment. By skill, I mean the use of one's knowledge,
the SOTB approach. In Desktop Mktg Sys Pty Ltd v developed aptitude or practised ability in producing
Telstra Corp19 the creativity was held unnecessary, the work. By judgment, I mean the use of one's
which later changed in Ice TV Pvt Ltd v Nine Network capacity for discernment or ability to form an opinion
Australia Pvt Ltd20 to skill, labour and intellect or evaluation by comparing different possible options
(choice) requirements. There is a catena of other cases in producing the work. This exercise of skill and
where SOTB was no longer the acceptable approach judgment will necessarily involve intellectual effort.
(post-Feist jurisprudence).21 Note that in civil law The exercise of skill and judgment required to
countries, the standard is similar to that of Feist and produce the work ‘must not’ be so trivial that it could
less lenient. Typically it refers to- “must express or be characterized as a purely mechanical exercise. For
reflect the author's personality”; “the internal turmoil” example, any skill and judgment that might be
of the author.22 This threshold is akin to the “creative involved in simply changing the font of a work to
spark” of Feist. produce "another" work would be too trivial to merit
copyright protection as an "original" work.”24
The Fine Tuning (emphasis supplied)
In CCH Canadian Ltd. v Law Society of Upper Putting the major thresholds into perspective
Canada23, primary issue was whether the law reports (roughly) based on the judgements above (Fig. 1).
of the publisher were original work and thereby the
activity of the library by providing the photocopy Eastern Book Company v D. B. Modak:26 The
service being of the nature of copyright infringement. Indian Perspective
In light of both the extreme thresholds of Till the year 2007, SOTB was the accepted
originality, the court chose a synthesis (a mid path) standard applied across the courts in India.27 For
between both the extremes given by UK (SOTB) and instance, the customer database in 1995 was
US (MOC) to decide upon the originality and considered as copyrightable by the Delhi High court
observed certain riders to qualify originality as it involved labour, capital and skill.28 Many such
(other than non-copying requirement), cases rewarding the labour existed till then.29
However DB Modak marked an apparent paradigm
(i) there needs to be sufficient “skill and judgement” shift in the Indian jurisprudence.
employed in the the work The appellants were involved in publishing
(ii) it should not be trivial or a purely mechanical Supreme Court Cases (SCC), the copy-edited
exercise
To decide as to what exactly was the mid-path, the
court held that in order to qualify copyrightability, the
word/modification should be a “non-trivial, non-
mechanical application of labour, skill and
judgement.” Merely creativity is not the requirement
to make the work original (as was said in the US
decision), i.e., creative work by definition will be
original and thereby copyrightable; but to be original,
it need not be creative. In this regard, quoting the ratio
of the case from the relevant paragraph of the
judgement clearly brings out the position of the Fig. 1 — Degrees of threshold25
 SHARMA: ORIGINALITY FOR COPYRIGHT PROTECTION IN LITERARY WORKS: AFTER EBC V DB MODAK 269

judgements, in their journal. The respondents, on the the raw judgements, with their own headnotes could
other hand, copied the text of these copy-edited be sold by the respondent and the application for
judgements and reproduced in their CD-Roms with interim relief, as such, was disposed of by the
the help of software (‘Grand Jurix’ and ‘The Laws’ Court.
respectively). Both the benches were clear on main aspects wrt
The issue before the hon’ble Court was- by adding copyrightability like, Firstly, a copy-edited judgement
inputs into the raw text of a judgement does the copy- was a mere work of correction, arrangement and
edited judgement become original and get entitlement compilation. This implies that certain inputs added by
of copyright protection? And, has the defendant- the appellants in order to make the raw judgement
respondent infringed the copyright therein, and should user-friendly cannot be granted copyright protection
he be injuncted from selling the CD-Roms? because it is materially similar to the raw judgement.
Secondly, and most importantly, if someone has a
The High Court in DB Modak right to seek a certified copy of raw text from the
The plaintiff-appellant moved before the Delhi court registry office (common source) and reproduce
High Court,30 but the single judge bench did not grant it vide Section 52(1)(q), it does not mean that he has
an interim injunction and instead vacated the stay as no right to take the same from some journal where it
prayed by the respondent, which were earlier passed is published. Thirdly, the appellants may be first to
on in the form of interim injunctions from time to publish (much like- first to discover), but it does not
time. The court held that no copyright subsisted imply that they own it because of the swiftness
appellant’s work as no creative element could be (similar to Feist).
attributed vis a vis originality. It was considered a
work of mere re-arrangement without substantial The Indian Supreme Court in DB Modak
input or creativity and reiterated the position of The Apex Court discussed the two competing
Nimmer on this.31 Relevant excerpt - views with respect to aspects of “original literary
work” primarily put forth in decisions like University
“Para 40 of London Press Ltd. v University Tutorial Press
…Nimmer on Copyright has observed that the Ltd33and Feist Publications v Rural Telephone
changes consisting of elimination, changes of Service Co.34 The former focussed upon
spelling, elimination or addition of quotations “industriousness approach” consistent with the
and corrections of typographical mistakes being Lockean theory of justice, that said, “although persons
trivial are not copyrightable. I am fully in belong to God, they own the fruits of their labor.
agreement with the observations of Nimmer When a person works, that labor enters into the
mentioned above. It is claimed by the plaintiffs object. Thus, the object becomes the property of that
that there is uniformity in style of writing and person.”35 The latter highlighted that a minimum
they have, therefore, a copyright in their style of standard of creativity is necessary for copyrightability
writing. I am unable to agree with the plaintiffs. to the expression. However, the Court came to a
As already held, the judgments published in the conclusion and adopted the position taken by the
journal of the plaintiffs are only reproduction of Canadian Court where it was held that,
the judgments of the Courts with certain 37 “....in a compilation, the author must
additions of commas, full stops, correction of produce a material with exercise of his skill (
errors, etc. in which, in my opinion, the plaintiffs use of once knowledge, developed aptitude or
cannot claim any copyright.” practiced ability in producing the work) and
(emphasis supplied) judgment (the use of one's capacity for
discernment or ability to form an opinion or
The appellant was aggrieved by the decision of the evaluation by comparing different possible
single-judge bench of the Delhi High Court and options in producing the work) which may not
approached the division bench32, which slightly be creativity in the sense that it is not novel or
modified the earlier order. Now, the respondent was non-obvious, but at the same time it is not the
prohibited to copy the head notes and editor notes of product of merely labour and capital”.
the appellant while selling its CD-Roms. However, xxx
270 J INTELLEC PROP RIGHTS, JULY 2022

38”....Copyrighted material is that what is the case of govt. work- it shall be the first owner of
created by the author by his own skill, labour copyright since “government work” as defined in the
and investment of capital, maybe it is a interpretation clause of Section 2(k)(iii) includes work
derivative work which gives a flavour of published by any judicial authority in India. Further,
creativity. The copyright work which comes into “work” as per Section 2(y) includes a literary work (in
being should be original in the sense that by sub-clause (i)). Therefore the harmonious reading of
virtue of selection, co-ordination or above-mentioned clauses gives a clear picture that
arrangement of pre-existing data contained in government is just like any other owner of the
the work, a work somewhat different in copyright subsisting in the judgements delivered by
character is produced by the author. On the face the courts in India
of the provisions of the Indian Copyright Act, 2. The presence of an exclusionary section viz.,
1957, we think that the principle laid down by Section 52(1)(q) presupposes the fact that copyright
the Canadian Court would be applicable in subsists, which is exempted by way of the provision
copyright of the judgments of the Apex Court...” 3. It is noteworthy that in Para 14 of the
(emphasis supplied) judgement, the court discusses the copyright in
derivative work, “...copyright protection in a
The appeal was partly allowed and additional relief derivative literary work created from the pre-existing
was granted to the appellants other than the already material….”
granted relief. The respondent was not just now not (emphasis supplied)
allowed to copy the headnotes, footnotes and editorial In exploring this balance, the fallacy lies in the
notes but it was extended to internal references and basic aspect of defining what constitutes a “derivative
use of phrases like dissenting or concurring. In a work”. The court borrowed the understanding from
nutshell, parts of copy-edited judgement in which the US (Section 101 of Copyright Law of the United
copyright subsists as per the ruling are (quoted from States)38 of something which is inherently absent in
plaintiff-respondent averments in Relx India Pvt. Ltd. the Indian Copyright Act, 1957.
v Eastern Book Company, para 6 36)- “101.
xxx
“(a) Creation of paragraphs in their copy-
edited version by segregating existing paragraphs A “derivative work” is a work based upon
in the original text by breaking them into separate one or more preexisting works, such as a
paragraphs and/or by clubbing separate translation, musical arrangement, dramatization,
paragraphs, and in the paragraph numbering. fictionalization, motion picture version, sound
(b) Internal referencing, after providing recording, art reproduction, abridgment,
uniform paragraph numbering to multiple condensation, or any other form in which a work
judgments. may be recast, transformed, or adapted. A work
(c) Inputs in respect of the editor's judgment consisting of editorial revisions, annotations,
regarding the opinions expressed by the Judges by elaborations, or other modifications, which, as a
using phrases like "concurring", "partly whole, represent an original work of authorship, is
concurring", "dissenting", "partly dissenting", a ‘derivative work’.”38
"supplementing", etc. (emphasis supplied)
(d) Editorial notes.
(e) Head notes in the paragraph numbering.” Instead, what is mentioned in Indian law is
“adaptation” which the court simply ignored
Critique of DB Modak (deviation from set practice of law that a statute ought
The judgment delivered by the Court in DB Modak to be interpreted to its fullest before filling the gap, if
has several shortcomings and seems confusing. In any). Section 2 of Copyright Act, 1957, i.e., the
India, the copyright flows from the statute (the Interpretation clause defines it as follows,
Copyright Act, 195737) and it is necessary to fall back “(a) ‘adaptation’ means,-
to some crucial provisions and interpret them as: (v) in relation to any work, any use of such work
1. The author is the “first owner of copyright” involving its re-arrangement or alteration”
vide Section 17(d) of the Copyright Act, 1957 and in (emphasis supplied)
 SHARMA: ORIGINALITY FOR COPYRIGHT PROTECTION IN LITERARY WORKS: AFTER EBC V DB MODAK 271

Hence the act of alteration/modification/cosmetic 6. If the govt. can be an infringer it can also be
re-arrangement of raw judgements (a literary work) an owner of copyright on par with any other
into copy-edited ones is not mere reproduction of a author/owner and enjoys rights granted under the
work in the public domain but instead falls well- Copyright Act, 1957. Like in Amar Nath Sehgal v
within the definition of “adaptation”; and a valid Union Of India39 the government paid the sum of 5
permission (license) of the owner of the copyright lakhs to the parties as an infringer of copyright.
(i.e., Court/Govt.) by the appellant was required. Relevant excerpt -
Because, Section 14(a)(6) of Copyright Act, 1957- “Para 62 (d) - Damages in the sum of Rs.5 lacs are
which explains copyright, allows only the awarded in favor of the plaintiff and against the
owner/author to adapt the work. defendants (GoI)”40
(emphasis supplied)
4. Also, Section 52(1)(q)(iv) is limited 7. In light of the above-mentioned arguments, it
torepublication (or reproduction) of the is a well-established principle in law that one who
judgements delivered by the court but not seeks equity must come with clean hands; but EBC
“adaptation”, and the argument of the appellant, (publishers) here sought relief when they adapted the
therefore, falls flat, as the exception laid in this work without permission. Landes and Posner in their
provision is inapplicable in present facts. analysis, discussed the non-copying requirement
“52. Certain acts not to be infringement of which perhaps eclipses in certain cases like- the
copyright.— lifetime of copyright protection is expired (or) costs
(1) The following acts shall not constitute an are entailed in the form of licensing of the existing
infringement of copyright, namely:— work (or) disguising the copying through engaging in
…..(q) the reproduction or publication of- costly searches, ultimately going out of the radar of
.....(iv) any judgment or order of a court, Tribunal infringement.41 The present facts perhaps did not fit in
or other judicial authority, unless the reproduction or this criteria and, hence, the bonafide and intent of the
publication of such judgment or order is prohibited by appellants was itself on a shaky ground.
the court, the Tribunal or other judicial authority, as 8. The act of respondent ought to be exempted
the case may be” in toto because judgments should be accessible to the
(emphasis supplied) general public keeping in mind the Indian knowledge
5. Some other questions remain unanswered, system of the passing of learnings (of the Vedas, the
like why the government, who is the first owner of Upanishads, the Puranas etc.). Otherwise, the very
copyright here, was not even impleaded as a party. purpose of making the judgements publicly available
This also raises the pertinent question wrt “moral is exhausted vis a vis dissemination of information,
right of the author”, which is wide enough to cover all which is a vital concern of copyright.42
“acts” (includes adaptation) prejudicial to the owner 9. For the sake of argument, even if it is
regardless of copyright/assignment. Hence, assumed that reproduction can be extended to
appellant’s act had brazenly violated this provision, adaptation, the larger question will then boil down to-
“57. Author’s special right - are judgements really an original work of the judge?43
(1) Independently of the author’s copyright Undoubtedly, it involves skill and judgement, but
and even after the assignmenteither wholly or some judges may even reproduce the pleadings, book
partially of the said copyright, the author of a excerpts etc., verbatim in the judgement. In that case,
work shall have the right - how can a law journal dealing with copy-edited
xxx judgement use the provision to their use and get
(b) to restrain or claim damages in respect of any copyright over the protected work unscrupulously, is
distortion, mutilation, modification or other act in a thoughtful discussion.
relation to the said work which is done before the 10. On the aspect of operational paras of the
expiration of the term of copyrightif such distortion, judgement, the court contradicts itself in adopting the
mutilation, modification or other act would be originality standard and confusing even the ratio of
prejudicial to his honour or reputation the decision. While considering cross-citations to the
…” citation, names of cases, giving exact page and
(emphasis supplied) paragraph number as in the original case, etc. the
272 J INTELLEC PROP RIGHTS, JULY 2022

court applied the Feist threshold of creativeness; The Ghost of DB Modak

whereas, for para segregation, internal referencing A review petition was filed to this judgment but
and including words like concurring, dissenting etc. it was dismissed as there was an “unsatisfactory
applied CCH Canadian threshold, highlighting the explanation wrt delay of 2162 days in filing review”
"skill and judgement" and more than pure mechanical (the words used by the court while dismissing).
process criteria in the work.42 Subsequently, a curative petition46 was preferred by
11. This is further complicated by use of phrases the aggrieved party vide mandate laid in Rupa Ashok
like “flavour of creativity” (four times in the Hurrav Ashok Hurra (Article 32 of Indian
judgement to be precise) to decide as to what element Constitution47) which met with a similar fate as that of
of copy-edited judgement qualifies as a copyrightable the review. One plausible reason perhaps could also
element. Such phrases, without defining, only add to be the importance given to such disputes against other
the ambiguous nature of the language used by the “serious” issues.
court.
12. It is also not logical to charge over the Post Modak Indian Jurisprudence
judgements delivered by courts just by making few Notwithstanding the decision delivered in DB
cosmetic changes here and there and not prudent to Modak, which had a limited scope wrt literary work
pay for mere references and cross citations. It does no in the public domain, its essence has vastly been
good but only increases the social cost to go to the extended to other artistic works like designs48, non-
common source and carry out the citation/reference compilations and works which are not in the public
search as it also entails time and energy. domain, as such (indicated and discussed hereunder).
13. Adding onto the last point, even if one looks In Chancellor Masters & Scholars of The Univ. of
from Idea-Expression point of view, if an idea (here Oxford vNarendera Publishing. House49, the Delhi
raw text) can be expressed only in a limited manner High Court held the math textbook to be
(citations/cross citation/partly dissenting etc.), then unprotectable as questions, answers, and arrangement
granting copyright to that expression would did not exhibit "the minimum degree of creativity".27
tantamount to a virtual monopoly. Like in Herbert Also the defendant’s work was exempted under “fair
Rosenthal Jewelry Corporation v Kalpakian,44 the use” as it was for addressing substantially different
Court held that manufacture of “bee shaped jewel purposes.
pins'' could not be possible in many ways and In Mattel, Inc. v Jayant Agarwalla50, the Court held
copyright protection was consequently refused. In this that the game of scrabble vis a vis the tile and board
regard, terms like citation/partly dissenting designs (the collocation of lines; diagonal colour
(concurring) etc. would remain same (with similar scheme combo) did not show a "modicum of
arrangement) qua all publishers/editors, more or less. creativity" and was thus unprotected and not entitled
The work of the publisher is basically cosmetically to copyright protection. Also, expression of Idea
rearranging and adapting the judgements (public which can be expressed in limited fashion cannot be
juris), and it is amply clear from the decision in R.G. extended copyright (Merger doctrine).
Anand v M/s. Delux Films,45 that facts are InServewell Products Pvt. Ltd. v Dolphin51 the
uncopyrightable. court performed the visual comparison test between
“46. the literary work and the infringing work (of
..There can be no copyright in an idea, subject Dolphin). The artistic works by the plaintiff-
matter, themes, plots or historical or legendary facts appellants wrt the flowers were taken from the book
and violation of the copyright in such cases is (“The Planimetric Design Cyclopedia 2004" and
confined to the form, manner and arrangement and "Japanese & Korean Graphic Materials Design
expression of the idea by the author of the copyright Dictionary”). Therefore this was not separately
work.” copyrightable. The plaintiff contended that the
(emphasis supplied) manner of portraying colours and seen as a whole
Hence the author agrees with the position taken by constituted an original artistic work. The court
T.G Agitha, describing the judgement as "knotty reiterated the mandate of DB Modak- minimum
analysis of originality threshold" which is a valuable creativity and uniqueness of colour combination to
criticism.42 show a creative spark; and found that plaintiff’s work
 SHARMA: ORIGINALITY FOR COPYRIGHT PROTECTION IN LITERARY WORKS: AFTER EBC V DB MODAK 273

lacked such uniqueness. It was also observed that a trade secrets of the plaintiff was rejected, and no
mere combo of non-copyrightable elements by itself copyright protection was extended.27 — the position
does not entitle to copyright protection; hence no in [Link] Biotech Pvt. Ltd64 was
infringement as such was found. reiterated by the court.
In Syndicate of The Press of The Universtiy of The Delhi High Court in Navigators Logistics Ltd.
Cambridge on Behalf of The Chancellor, Masters and v Kashif QureshiTech Plus Media Private Ltd. v
School v B.D. Bhandari52, issue before the court was Jyotijanda56 held that a “list” did not fall into the
whether protection of copyright could be extended to copyrightable subject matter (an original literary
composing grammar sentences/ exercises or not work) as it was no more than a compilation. Also, no
(plaintiff’s work- “Advance English grammar"), technique as such in compiling the list of customers
which the defendant used in his book- “MBD English was highlighted in this case (much like Tech Plus
Guide”. Div bench of Delhi High court upheld the Media Private Ltd. v Jyotijanda55).
single judge bench decision and held that copyright Emergent Genetics India Pvt. Ltd. v Shailendra
did not subsist in work in public domain and the Shivam57, the Court categorically held that copyright
purpose of the respondent’s book was altogether protection in databases (some techniques and
different and his own (which is the requirement of information) could not subsist and lacked
‘fair use’ in Indian law), i.e., step by step process of exclusivity/confidentiality as it was pre-existing
arriving at solutions. Guidebooks were work of material and without an iota of novelty as such. Court
creativity, skill and judgement and hence not an observed-
infringing copy of question papers. “35....Plaintiff does not claim exclusivity in respect
The Delhi High court in Ravinder Singh & Sons v of any particular technique or process; it is the result,
Evergreen Publications (India) Ltd.53 upheld the i.e.., the documentation of elimination, and the
injunction granted by the lower court against the attributes of the different strains which are claimed to
appellant-defendant for infringing upon the question have been compiled. If such techniques were already
Papers of ICSE Examinations for 10th standard of available, and were practised, they were capable of
respondent ("Examination Question Papers ICSE March observation, and similar documentation…”
2006 under arrangement with The Council for the Indian (emphasis supplied)
School Certificate Examinations New Delhi -all rights In Institute for Inner Studies and Ors. v Charlotte
reserved) as it was reproduced verbatim by appellants Anderson58, the issue before Delhi High Court
(with punctuations) from the guidebook of respondents. pertained to copyright over- “Pranic Healing
The court reiterated the position of Syndicate of Techniques and Literary works therein”. The court on
The Press of The University of Cambridge on Behalf of the aspect of copyright protection to historic works
The Chancellor, Masters and School v B.D. reiterated position of Baigent & Leigh v The Random
Bhandari52and DB Modakwrt originality, i.e., labour- House Group Limited.59 The idea-expression
skill-judgement to hold the copyright. dichotomy was explained by the court (which
[Link] Biotech Pvt. Ltd54 dealt with excluded facts from the ambit of protection) and
the copyright in the catalogue consisting of the originality for such works was limited to- language
composition of homoeopathic medicines of the employed, selection, arrangement and compilation of
plaintiff. The alphanumeric selection was considered data only. It thus observed-
too common by the court, and the mandate of DB “93. After understanding the rule of law laid
Modakwrt “somewhat different in character” fell down in Baker (Supra) and Feist (Supra)
short. On other counts too, where the copyright over decision, it is beyond the cavil of any doubt that
sequencing was claimed, the court held it to be a in cases relating to literary work describing
derivative work. No creative inputs were added to useful arts, science or based upon pre-existing
qualify the copyrightability. data and facts, the copyright shall be extended
Tech Plus Media Private Ltd. v Jyotijanda55 only to the manner of description of the said art
copyright in customer databases with contact points of principles or facts in the language employed by
clients was databases and pertaining to the running of the author and it is substantial copying by the
the business of information technology publications infringer and not in the facts in generality.”
was in question. The argument that it constituted the (emphasis supplied)
274 J INTELLEC PROP RIGHTS, JULY 2022

Hence, only “way in which facts are presented” is Book Company and Others v D.B. Modak and
protectable and it held, Another - MANU/SC/4476/2007 : (2008) 1 SCC Page
“106. Therefore, the plaintiff in the instant 1 has held in paragraph 46 that the work that has
case cannot be heard to say that the protection been originated from an author and is more than a
to performance of Pranic Healing techniques mere copy of the original work, would be sufficient to
can be accorded on the basis of the copyright generate [Link] creation of the work which
claim in the book describing, illustrating and has resulted from little bit of skill, labour and capital
compiling the exercises or Asanas of Pranic are held to be sufficient for a copyright in derivative
Healing.” work of an author. Catena of decisions have
In Dart Industries Inc. v Techno Plast60 issue propounded a theory that an author deserves to have
before the Div bench of Delhi High court was wrt his or her efforts in producing a work, rewarded. The
copyrightability of drawing sheets based on which the work of an author need not be in an original form or
moulds were made (copyright as artistic works) as novel form but it should not be copied from another's
significant capital was invested to produce such work, that is, it should originate from the author.”
moulds. On the issue of copyrightability, the court (emphasis supplied)
refused to grant protection on 2 counts, viz., the lack In Salgunan N. v Ram Gopal Edara62 the plaintiff
of minimum creativity vide the decision of DB himself copied compilations from various law books
Modak; and use of Idea-Expression doctrine in (since the mistakes were also verbatim copied). The
holding that depiction of some articles could not per Court highlighted the aspect that for derivative work,
se be treated as protected under copyright. Relevant “selection and arrangement” coupled with modicum
excerpt – of creativity is needed in derivative works which was
“32. absent here (plaintiff’s work comprised compilation
...plaint nowhere discloses that the drawings (i.e.. of books- titled "Review of Post Graduate Medical
the artistic works here) have any inherent capability Entrance Examination"). Hence the case of
of art: it is evident that these drawings are of infringement was not made out in the first place and
commonplace everyday articles used in households...” further the work taken was in the public domain.
(emphasis supplied) Khaidem Jacko Meitei v Union of India,63 the
In Pearson India Education Service Pvt. Ltd. v Manipur High Court highlighted the importance of
New Rubric Solutions LLP61, the plaintiff created non-copying requirement vis a vis originality quoting
literary work in the form of some charts which famous precedents. The case pertained to instances of
involved skill-analysis of students (known as plagiarism by the PhD students under a professor in
“Kaleido”). The defendant alleged copyright Manipur University. The Court directed University to
infringement for the use of its work (promo purposes- take appropriate action to deal with the issue quickly
"PearsonsMyPedia Launch” youtube video) by the as originality is sine qua non for copyrightability and
defendant. However, it is noteworthy that the work of “Copying or plagiarism is an anathema to creativity
the plaintiff was based upon the defendant's book. The and invention.”64
Court upheld the originality of the derivative work by DilipLoyalkav Assistant Commissioner of Income
again going back to the age-old “skill-labour-capital” Tax65 is a peculiar case where the question of whether
approach (more than a mere copy of the work a book on Income Tax in question-answer form was a
sufficient to get copyright). SOTB was inherently literary work or not arose in an income tax dispute.
signified to grant injunction for the copyright Assessee (appellant-plaintiff) filed an appeal against
infringement. Relevant excerpt in judgement which the decision of CIT(Appeals) which confirmed the
followed the ghost of DB Modak - disallowance of deduction as per Section 80QQB66
“26. When a person produces something with his amounting to Rs. 99,000/- (this provision allows
skill and labour, it normally belongs to him and the deduction for “literary work”). The Court allowed
other person would not be permitted to make profit appeal and held that the author was entitled to
out of the skill and labour of the original author and it deductions as his book was recognised by GoI and he
is for this reason, the Copyright Act gives to the had received “royalty”. Quoting DB Modak, the Court
authors certain exclusive rights in relation to the held it to be a work of intellectual labour coupled with
literary work. The Apex Court in the case of Eastern adequate skill.
 SHARMA: ORIGINALITY FOR COPYRIGHT PROTECTION IN LITERARY WORKS: AFTER EBC V DB MODAK 275

Conclusion court decisions have held compilations to be

Some remarkable and pragmatic jurisprudence unoriginal (unless value addition is creative/
came out of Indian High courts (except few which fell substantial) and have analysed such works by
back on ‘industrial collection’67) notwithstanding the comparison (with experts sometimes) to carve out
ghost of DB Modak. Many of the judgements were inequivalence/ value-addition/ sameness much like
forward-looking, highlighting that mere skill and “reward based” sliding continuum system as proposed
labour to create work is insufficient and some by Parchomovsky and Stein71, i.e., putting a positive
intellectual effort to create work which is somewhat or negative premium on originality. In this journey
different in character is essential to qualify originality. itself, the court looks at- if the work can be expressed
The classic underlying position of JAL Sterling in another way (Merger doctrine) or how it stands
(English position on originality) can be seen wrt non- apart (purpose) from the pre-existing work and
copying requirement, and trinity of skill-labour- thereby the scale and extent of protection to be
judgement.68 A bent towards post-Feist jurisprudence granted, if any.
is seen unlike the earlier SOTB approach, pre-2007.
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