TEAM CODE:- T34

Memorial for IUMCC-2016

Before
THE HONBLE HIGH COURT OF BOMBAY

Jack Samuelson and Brightwalker Studios Ltd. .. Plaintiff

VS.
Earl Grey and Edified Comics Ltd. ..Defendant

On behalf of the defendant

TABLE OF CONTENTS
1

List of abbreviation...3
Index of Authorities..4
Statement of Facts.....5
Issues raised..7
Summary of Arguments....8
Advance Argument...9
Prayer..17

List of Abbreviation

Ors.

Others

Ltd.

Limited

HC

High Court

SCC

Supreme Court Cases

AIR

All India Report

V.

Versus

Anr.

Another

BSL
Ltd.

Brightwalker Sutdio

ECL

Edified Comic Ltd.

TM

Trademark

INDEX OF AUTHORITIES
3

Statutes
Code of Civil Procedure,1908.
International Copyright Order, 1999.
Letters Patent of the High Court of Judicature of the Presidency of
Bombay, 1885.
The Copyright Act, 1957.
The Trade and Merchandise Marks Act, 1958.
The Trade Marks Act, 1999.
USA The Copyright Act of 1976.
Cases
Fateh Singh Mehta v. O.P Singhal, AIR 1990 Raj 8.
Baker v. Selden, 25 L Ed 84 I : IOI US 99 (I 879)
Lord Hoffman in Designers Guild Ltd. v. Russell Wiliams ( Textiles) Ltd.
2001 FSR II.
R.G. Anand v. Deluxe Films, 1978) 4 SCC II8 : AIR 1978 SC 1613.
Lord Hoffman in Designers Guild Ltd. v. Russell Wiliams ( Textiles) Ltd.
2001 FSR II.
Metcalf v. Bochco, 294 F 3d 1069, 1074 (9th Cir 2002).
Sucheta Dilip Ghate V. Dilip Shantaram Ghate, AIR 2003 Bom 390 (DB).

STATEMENT OF FACTS

 Jack Samuelson is the most celebrated author for his work regarding to fantasy fiction
and Brightwalker Studios Ltd. (BSL), a US (United State) based production and
Network Company.
Jack Samuelson gets most popularity after publishing of his book in 1994 named as
A Flagon of Dreams which was the comic books. He continuously publishes series
of that same book at irregular interval of time. His last book being released in 2014
which was called as Ballad of Malice and Power.
Printed and digitized version of book series available for the sale in the US, Members
of Europe union, Canada, China and the India Sub-continent.
After getting huge response from the youth, he entered into the contract with
Brightwalker Studios Ltd. in 2005 for the production of show on his series of book.
After that, the show began with the name of Valar Dohaeris : the beginning, which
was the based on the Jack Samuelson series of book. After making of successful deal
with jack Samuelson, BSL acquired Exclusive license to adapt the Ballad of Malice
and Power into full fledge television show called as Valar Dohaeris.
Ms. Earl Grey was the huge fan of series of book named as Ballad of Malice and
Power and she took much interest in the particular character in the story named as
Boromir Bohemina but after that she depressed from ongoing because her character
favorite is not more alive in the ongoing story.
Due to this depression, she took this character from storyline and start writing one
more story on that character of her own. In her story, she makes her own new story
and also make her own sketches of that character. In her storyline, she gave breath life
and soul into the Borimirs character.
Ms. Grey collated all the scattered bits and pieces on Boromirs story from the series
of book and also define it as the protagonist in her version of the conquests Boromir
had in the land of vengursa.
Firstly, She calls her version of Boromirs conquest as the Bohemian Rhapsody.
Then, she express her story on the her own blog called as the pickwick paper.
Generally, she get tremendous respond from the public and also her blog pickwick
paper break record of 10,000 rank barrier in in the Alexa Global System. Then, she
get continuously request from the public to produce or publish more series her story.
But at this stage neither Samuelson nor BSL take any action against the Eaarl Grey.
Edified Comics Ltd. (ECL) is a vast organization for the publication of commercial
books and a company registered and based out of Mumbai( India). ECL set great
opportunity for grey to produce money.
ECL approach Ms. Grey and made deal with her regarding publication of her comic
book. ECL preserve an all-encompassing IP-assigment in the Bohemian Rhapsody in
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the exchange for a hefty sum of royalty and Grey also promise that she maintain the
creativity of the book.
But before entering comic book market, ECL wanted to monetized the prevailing the
popularity of Boromir Bohemia from Greys book. ECL also want to propagate this
comic to public, so ECL start manufacturing product and also star selling them such
as apparel, Costumes, accessories, artwork, wallpaper, stationary and consumer
products.
On the 4th January 2015, ECL obtained registration certificate form the Indian
trademark registration on word BOROMIR and also get trademark registration as
on the pictorial presentation of boromir from the comic book.
ECL also printed these trademark on all these the product and also printed the logos of
ECL on these product.
In 2015, Samuel released his last book of series and BSL also released last show of
series. It was played on many small screen cinemas and BSL generated around 20
million views on the release day.
After the releasing of last show series, that was the end of the series, so BSL wanted
to produced and developed the spin off series and that was called in the name of
Boromir the Conqueor which was totally based on the life of Boromir and BSL also
commenced marketing and released a teaser trailer in june 2015. The show was
globally released on 9th februrary 2016.
On 16th August 2016, ECL also released the comic book named as The Bohemian
Rhapsody in ongoing and hugely popular Comicraze event in Mumbai.

ISSUES

1.
2.
3.
4.

The petition is filled by Jack Samuelson is not maintainable?

Can a character be protected under copyright?
They get appropriate registration of trademark?
Is Plaintiff violating the rights of the Defendant by infringing the registration
trademark?

SUMMARY OF ARGUMENTS
1. The petition on civil case is filled directly in the High Court is not maintainable?
The petition filed by the plaintiff in the High Court is not maintainable because if the
district court having the jurisdiction over the suit than any other law or statues cannot
perform their action toward suit at the time of proceeding of suit.
2. Can a character be protected under copyright?
There is not copyright own by the plaintiff because mere idea is not protected in the
copyright act. The same idea can use the by the different person in the another form of
expression.
3. They get appropriate registration of trademark?
In above there is already prove that there was not an infringement of the copyright act,
so the defendant has the right to get the registration certification of the copyright.
Defendant has a good intention to use the trade mark as for its own benefit. Defendant
registered the trademark for getting the rights over the word BOROMIR
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BOHEMIA for its business purpose. Defendant also create its own pictorial
presentation of the character for using it on its comic book.
4. Is Plaintiff violating the rights of the Defendant by infringing the registration

trademark?
There is an infringement of trademark made by the plaintiff itself by the using the
word Boromir the conqueror in their spin off series because the Defendant has
already obtain the trade mark registration over the Boromir in January 2015 for its
comic book.

ADVANCE ARGUMENTS
1. The petition on civil case filled directly in the High Court is not maintainable?
Petitioner have approached the Honable High Court of Bombay under 20(c) of the
C.P.C., 1908, section 62(1) of the copyright act, 1957 but the section 62(2) of the
copyright Act, 1957 states that if the District Court having jurisdiction over the suit
then suit is not standing with the any other law or statutes or C.P.C., 1908 at the time

of preceding of suitor for the time being in the force.

Sections 20(c) of the C.P.C., 1908 states that the suit has been filed where the whole
cause of action is arise. According to the facts of the problem, there is no specific

place mention in the facts where the whole cause of action arises1.
Moreover, Clause XII of Letters Patent Act requires, for Bombay High Court to have
ordinary original civil jurisdiction over a matter, either the clause of action, in whole,

to arise within its limits or the defendant to carry its business within its limits.
In the present matter, petitioner itself dont where the whole causes of action arises,
then petitioner cannot able to file a suit in Bombay High Court and also it is not
clearly in the facts that where the cause of action is arise. Also petitioners do not

know that from where the defendant belongs.

2. Can a character be protected under copyright?

1 Sucheta Dilip Ghate V. Dilip Shantaram Ghate, AIR 2003 Bom 390 (DB).
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Law does not recognize property rights in ideas but only in the expression of the same
in a particular manner adopted by the author.2 There is no copyright in ideas, scheme,

system or method. Copyright is confined only to the subject.

Under the part 1 of the copyright act 1956 states that it is not requisite that the work
should be the expression of original or inventive thought, for the copyright act are not

concerned with the originality of the idea but with the expression of thought.3
Section 2(O) of the copyright act 1957 states that the expression of work inter alia
means a literary works. The word original does not mean that the work must be
expression of original or invented ideas or thought. Copyright acts are not concerned
with the origin of ideas but with the expression of thoughts and in case of literary

work with the expression of thoughts in printing or writing.4

A foundational element of the Copyright Law is that it does not grant the author of
literary works protection on ideas and on facts

Law is only reward the creativity

expression of ideas and facts.

The Honble Supreme court decided in the case of R.G. Anand v. Deluxe Films

That basic similarities were two aspects of provincialism, via. The role of
Provincialism in regard to marriage and renting out accommodation, evils of the caste
and the evils of the dowry. The court conclude that the number of similarities by
themselves are not sufficient to raise and inference of colourable. The similarities are
trivial and touch the insignificant points and do not appear to be of substantial nature.

But is was held that a mere idea cannot be the subject matter of the copyright.
There can be no copyright in an idea which is merely in the head, which has not been
expressed in the copyrightable form, as a literary works, dramatic, musical or artistic
work, but the distinction between ideas and expression cannot mean anything so

2 WPPT, Art. 7.
3 Halsburys Laws of England.
4Fateh Singh Mehta v. O.P Singhal, AIR 1990 Raj 8.
5 Baker v. Selden, 25 L Ed 84 I : IOI US 99 (I 879)

6 (1978) 4 SCC II8 : AIR 1978 SC 1613.

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trivial as that. The expression of ideas is protected, both as a cumulative whole and

also to that extent which they form a substantial part of the work.7
Protectable expression includes the specific details of authors rendering of ideas or
the actual concert elements that make up the total sequence of events and the relation

between major characters.8

As the matter of facts, plaintiff knows about the blog of defendant and also aware
about the facts that defendant takes the idea from Plaintiff book but earlier at this
stage of moment plaintiff didnt take any action against the defendant but afterwards
when the defendants comic book get huge response from the public then the plaintiff

takes an action against the defendant of infringement of copyright.

As the matter of facts, Ms. Earl Grey picked up single character which is not alive in
the ongoing story of the author. The character taken by the defendant is not playing
any major role in the story and in the present story which is named as BOROMIR
BOHEMIA. Boromir finds little mention in the book series and is not alive in the
ongoing storyline in the books or in the series. The defendant collated some of the
ideas from the book of Plaintiff which is named as BALLAD OF MALLICE AND
POWER, but after that defendant creates her own story and sketches by using her
intellectual labour. By using her own thought of ideas, defendant made her own new
storyline and also made her own new sketches of the characters. The defendant make

her own title of comic named as The Bohemian Rhapsody.

Thus, it is humbly submitted that the Honble Court comes to know that the ideas is
not protected under any of the copyright acts or convention but the expression of ideas
is protectable under Copyright acts.

3. They get appropriate registration of trademark?

There is already proved that there is no infringement done by the defendant, because
the defendant took only the idea from the plaintiff book. It has been proved that the
idea do not be protected under the copyright acts but the way of expression of ideas

which is original and done by the intellectual labor is protected under copyright acts.
The application for registration of trademark for the various purposes, etc., shall be
made in forms, TM-1, TM-2, TM-22, TM-37, TM-45, TM-51, TM-52, TM-53, TM-

7 Lord Hoffman in Designers Guild Ltd. v. Russell Wiliams ( Textiles) Ltd. 2001 FSR II.
8 Metcalf v. Bochco, 294 F 3d 1069, 1074 (9th Cir 2002).
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61, TM-64, TM-65, TM-66 AND TM-68,9 as provided in Schedules of Trademark

Rule 2002. The application can also be signed by the agent of the applicant. A single
application also made for different-different class of goods or services included in any

one class from a convention country.

Section 20(1) of Trademark act 1999, contains the advertisement of application.
When the application is accepted for registration of trademark, whether absolutely or
subject to condition or limitations. If any condition is subject to acceptation of
application of registration then it should be advertise in the prescribe manner. This
section also states that the registrar may cause for application to be advertise before
the acceptance if it relates to Trademark to which sub section (1) of Section 9 10 and
sub section (1) and (2) of section 1111 apply. In any other case where it appears to
registrar that it is expedient by the reason of any exceptional circumstances then

registrar have the power to advertise the application before acceptance.

Section 20 (2) of Trademark Act, 1999 contains that according to Section 20 (1) of
Trademark act, 1999 application has been published before the acceptance. After the
advertisement of application if any error found in the application registration then it

has a right to amend it and correct it which is mention in the Section 22.12
Section 21 of Trade Mark act, 1999 provides for opposition to registration. Any
person can give notice in writing of opposition to the registration within three months
from the date of advertisement or re-advertisement of an application for registration.
A copy of notice. The notice of opposition must include the statement of ground of
opposition, but By way of the exception, it appears a section 16 objection (application
by agent or representative) may only taken by the proprietor of the mark in

Convention Country.13
As a matter of fact, the registration of the Trademark is appropriate because
according to the above mention section of the Trademark Acts, it concludes that the

9 Trademark Rules 2002.

10 Section 9 of Trade Mark act, 1999
11 Section 11 of Trade Mark act, 1999
12 Section 22 of Trademark Act, 1999
13 This includes the countries party to the WTO Agreements (TRIPS) : SI 1999/1899
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registration of Trademark done by the defendant is valid. The way of getting

Trademark registration by the defendant is done in a proper way which as mentioned

in the section 18 of the Trademark Acts.

As a matter of facts Plaintiff do not oppose the application of registration of
Trademark which was filed by the Defendant, when the application of registration of
Trademark was advertised under section 20 of the Trademark act, 1999, then
Plaintiff do not oppose the Advertise of application of registration but they have the
right to oppose the application which is mentioned in the Section 21 of Trademark
Acts, 1999, Under the certain period of Time which is also mentioned in section 21 of

Trademark Act, 1999.

Thus, it is humbly submitted before the Honble Court that Defendant get an

appropriate Registration of Trademark under the Trademark Act.

4. Is Plaintiff violating the rights of the Defendant by infringing the registration
trademark?
All of the provision in S.10 of the 1994 Act relating to infringement are qualified
by the expression uses in the course of trade a sign. 14 To constitute and
infringement the sign15 in issue must therefore be used in the course of trade.
Broadly, use in the course of trade calls for use in the context of a commercial

activity with a view to economic advantage, and not as a Private Manner.

Section 28 of Trademark Act, 1999 contains that
1. Subject to the other provisions of this Act, the registration of a trade mark
shall, if valid, give to the registered proprietor of the trade mark the exclusive
right to the use of the trade mark in relation to the goods or services in respect
of which the trade mark is registered and to obtain relief in respect of
2.

infringement of the trade mark in the manner provided by this Act

The exclusive right to the use of a trade mark given under sub-section (1)
shall be subject to any conditions and limitations to which the registration is

3.

subject.
Where two or more persons are registered proprietors of trade marks, which
are identical with or nearly resemble each other, the exclusive right to the use
of any of those trade marks shall not (except so far as their respective rights
are subject to any conditions or limitations entered on the register) be deemed
to have been acquired by any one of those persons as against any other of

14 Implementing the same words of TM Directive, Art. 5(1) and (2)

15 The term sign is used throughout the 1994 Act, s.10 to describe the mark used by the Infringer.
12

those persons merely by registration of the trade marks but each of those
persons has otherwise the same rights as against other persons (not being
registered users using by way of permitted use) as he would have if he were

the sole registered proprietor.

Section 29 states that Infringement of registered trade marks.
1. A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which is identical with, or deceptively similar to, the trade mark
in relation to goods or services in respect of which the trade mark is registered
and in such manner as to render the use of the mark likely to be taken as being
used as a trade mark.
2. A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which because of
(a) its identity with the registered trade mark and the similarity of the goods or
services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of
the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or
services covered by such registered trade mark, is likely to cause confusion
on the part of the public, or which is likely to have an association with the
3.

registered trade mark.

In any case falling under clause (c) of sub-section (2), the court shall presume

4.

that it is likely to cause confusion on the part of the public.

A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for
which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark
without due cause takes unfair advantage of or is detrimental to, the

5.

distinctive character or repute of the registered trade mark.

A registered trade mark is infringed by a person if he uses such registered trade
mark, as his trade name or part of his trade name, or name of his business
concern or part of the name, of his business concern dealing in goods or
services in respect of which the trade mark is registered.

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6.

For the purposes of this section, a person uses a registered mark, if, in
particular, he
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for
those purposes under the registered trade mark, or offers or supplies services

under the registered trade mark;

(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
7. A registered trade mark is infringed by a person who applies such registered
trade mark to a material intended to be used for labelling or packaging goods,
as a business paper, or for advertising goods or services, provided such person,
when he applied the mark, knew or had reason to believe that the application of
the mark was not duly authorised by the proprietor or a licensee.
8. A registered trade mark is infringed by any advertising of that trade mark if
such advertising
(a) takes unfair advantage of and is contrary to honest practices in industrial or
commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
9. Where the distinctive elements of a registered trade mark consist of or include
words, the trade mark may be infringed by the spoken use of those words as
well as by their visual representation and reference in this section to the use of

a mark shall be construed accordingly.

Under the Rome Conve1ntion, the National Broadcasting Organization enjoy the
right to authorize or prohibit certain acts namely, the rebroadcasting of their broad

casting the fixation of their broad caste the reproduction of such fixation.
As the matter of subject of matter, after getting of registration on the trademark
named as BOROMIR and also pictorial presentation of boromir on 4th January
2015. The defendant get certain rights under the section 28 of trademark act, 199,
after getting of the registration, the plaintiff is breaching right of the defendant.
There plaintiff is infringing trademark of the defendant under the section 29 of
trademark Act, 1999. They are infringing the trademark in the way of spin off the
series and they called the spin off series as Boromir the Conqueror because the
defendant already get registration on the name of BOROMIR, so it is the

infringement of trademark.
Thus, it humbly submits that the defendant prove that there is an infringement of
trademark which is done by the plaintiff before the Honble Court.

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PRAYER
Wherefore in the light of the facts of the case, arguments advanced and authorities
cited, Counsels for the Defendant humbly pray and implore before this Honble
Bombay High Court:That it may be pleased to adjudge and declare:
1. The Petition filled by the Jack Samuelson and BSL in the Bombay High Court is
not maintainable.
2. ECL and Earl Grey are not liable for infringing of Copyrights.
3. Jack Samuelson and BSL are liable for the damages caused to ECL and Earl
Grey. 4. An injunction to be passed against BSL and Jack Samuelson.
The Court may make any other such order as it may deem fit in terms of justice,
equity and good conscience.
And for this act of kindness the Defendants shall as duty bound ever humbly pray.
Respectfully Submitted
S/d______________
Place: Mumbai, India

Counsel(s) for

Petitioners
Date: September, 2016

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