1. ZULFIQAR AHMAD KHAN, J.--- Through CMAs Nos.664 and 16752 of.2014, the Defendants are seeking restraining orders against the plaintiffs from using, displaying or selling Plaintiff's products under the taglines "Dawlance Making Pakistan Proud", "Dawlance Reliable Hai" and "Kyonkay Dawlance Reliable Hai". Per counsel, orders be passed that these taglines as well as other materials detailed in Paragraph-15 of the plaint not be reproduced before the general public (both nationwide and internationally) through all forums of media as these materials are admittedly created by the Defendant No.l.
2. The controversy at hand stems from an Agreement dated 01.11.2006 reached between the Defendant No.1 and the Plaintiff No.3 with regards provision of services by the Defendant No.1, which services are detailed in Clause-II of the said Agreement. A review of the Agreement shows that while the Plaintiff is in the business of manufacturing and selling deep freezers, washing machines and other home appliances, the Defendant No.1 claimed to have expertise in media and advertisement campaigns etc. Thus the Agreement required the Defendant No.1 to provide assistance in media planning and buying (including electronic and out of home, as well as, to design art work for both ATL and BTL advertisement, and to design strategic plans and campaigns for the sale and marketing of the Plaintiffs' products. The Agreement envisages two streams of payments; one, which is described accurately in Item-D of Paragraph-2 and the other in the preamble of Paragraph-2 itself. In the preamble part, it is agreed that the Defendant No.1 will be paid 10% fixed fee of total annual advertising spent by the Plaintiff No.1 on media, and in terms of Item-D, the cost of the execution of the work created by the Defendant No.1 was to be paid separately from the said 10% fixed fee. While there is evidence spread between Pages 75 to 89 that the costs for the production of various creative works (per Item-D) were paid, however, the Counsel for the Defendant No.1 contends that his client was never paid the 10% fee emanating out of the annual spent on advertising by the Plaintiff No.1, nor the counsel for the Plaintiff was able to bring forward any evidence in this regard during the course of the arguments.
3. Be that as it may, it is admitted by the Plaintiff No.1 itself that the items reproduced in Paragraph-15 of the Plaint were produced for the Plaintiff No.1 by the Defendant No.l. These items (as listed in the plaint) include:- (i)Dawlance brand architecture and guidelines, colours, pantone shades, technical details, dimensions. The logo, "D-Dawlance", and the slogan, "Dawlance Reliable Hai" in English and Urdu.
4. (ii)Print collateral - design and creative.
5. (iii)Radio collateral - all campaigns, mixed and unmixed audio.
6. (iv)In-store branding collateral - all designs.
7. (v)Outdoor collateral - billboards, pole signs, etc. (vi)Shop boards and shop signs - all designs.
8. (vii)Event specific collateral - e.g. DLS and HAPEE.
9. (viii)Unites Sales Limited and Electric City branding designs.
10. (ix)Product photography - all models, all angles. Finished and un-finished high-resolution artwork files.
11. (x)Product collateral - User manuals, warrant cards, logos cartons, branding, cookbooks, guides, kits, POPS. etc. All talent photoshoots - finish and un-finished, high resolution images.
12. (xii)Brochures, pamphlets and similar collateral for corporate and all categories.
13. (xiii)All exhibition stalls and branding-local and foreign stall designs etc. It seems that the disputes arose between the parties and a notice for termination was served upon the Defendant No.1 on 20.12.2013. However, since the Plaintiff did continue using the taglines and the works as detailed in Paragraph-15, it agitated Defendants seeking present restraints against the Plaintiff No.1 for the use of the material admittedly created by the Defendant No. 1 .
14. The controversy originally was vast-spread, however finally was summed up in the form of the query as to who was the owner of the copyright in the work created under the Agreement. In this regard section 13 of the Copyright Ordinance, 1962 was relied upon which provides that in ordinary circumstances the author of the work would be the first owner of the copyright, however, per proviso (b), in case of photographs, painting, portrait, engraving or cinematographic work made for valuable consideration at the instance of another person (in the absence of any agreement to the contrary) will make that person first owner of the copyright in the work. It is admitted that no such express provision was kept in the Agreement, therefore, the learned counsel for the Defendant No.1 emphasized that since the Defendant No.1 had an agreement for services (as not an agreement of services) in particular when payments were only made once the created work was submitted by the Defendant No.1 to the Plaintiff No.1, and those too for the material production of the work (Item-D), all creative and intellectual property rights (including copyright) in the work remained with the Defendant No.l.
15. It is undisputed that the Agreement was entered on 01.11.2006 and as per the scheme envisaged by the said Agreement, it was for the Defendant No.1 to come up with various creative plans and campaigns, which ought to be approved by the Plaintiff No.1, whereupon their execution by making the payment for the production (Item-D) was to take place. Since provision (b) of Section 13 clearly requires copyright ownership in a work to pass on to another person only in cases where the work was made for valuable consideration emanating from that person, thus where no such consideration were ever paid (other than the material production costs of the work under Item -D) and until unless the work is assigned after following the prerequisites of Section 14 of the Copyright Ordinance, ownership of copyright in the work stays with the author as laid down under Section 13 of the said Ordinance.
16. Similar questions came before this court in the case of Atiqa Odho v. R. Lintas (Pvt.) Ltd. (PLD 1997 Kar. 57) where the plaintiff who claimed to be a leading model filed a suit against the advertising agency as well as against Lever Brothers Pakistan Ltd., a leading manufacturer of several, products including LUX branded toilet soaps, for the relief of permanent injunction restraining the defendants from Using the plaintiff's photograph or any video tape showing her as a model for any advertising purpose in respect of the said products. She was making such claims on the basis of an agreement executed between the plaintiff and the advertisement agency whereby it was agreed that the defendants would be entitled to the exclusive right to use the plaintiff's photographs for advertising the product LUX in all forms of advertisement like newspaper, periodicals, printed materials, films, hoarding, neon signs, display panels, packing materials and at any place. The agreement was for one and half years and even after the expiry of agreement the defendants did not discontinue using the plaintiff's photographs which resulted in filing of the suit. In these circumstances where a question arose as to who owns rights in the material property (photographs, signage, wrappers, advertising materials etc.,) and to whom the copyright in that material property belongs. Court held that while exclusive right to use plaintiffs photograph and T.V. images etc., for the advertising purposes was acquired by defendants and they would be entitled to retain all such materials upon which pictures or photographs of plaintiff were printed and published, however, the defendants were not entitled to use the same for public consumption in any periodicals, newspaper, T. V. or film after the termination of such contract. This view was rejected when an appeal against the said order was filed (2000 CLC 872) however the reason for such reversal was that the appellant who had undisputedly parted with valuable amount of Rs.300,000 for retaining the services of the respondent restricting her modelling activities for any other competitor for a period of 1-1/2 years. However in the case at hand while there has been placed a restriction on the Defendant No.1 from taking assignment with competing clients under Paragraph 1(b), no retainer was ever paid to the Defendant No.1, thus the case at hand could not be held to have been covered by the orders passed in the appeal.
17. Also in the case of Shakeel Adilzadah v. Pakistan Television Corporation Ltd. (1989 CLC 2447) interpreting Section 13 of the Copyright Ordinance, 1962, Court held that ... where copyright had not been specifically assigned, the Court can still draw its inference by looking at the agreement. Mere circumstance that an author had been engaged by a Publisher to write a book for remuneration would itself not vest the copyright in the Publisher unless such an intention can be gathered from the agreement.
18. Thus while undoubtedly the Plaintiff No.1 could enjoy the physical possession of work created by the Defendant No.1, there is no doubt in my mind that at any given point in time Plaintiff No.1 became owner of copyright in those works. I accordingly allow the instant applications and restrain the Plaintiffs from using, displaying or selling their products under the taglines "Dawlance Making Pakistan Proud", "Dawlance Reliable Hai" and "Kyonkay Dawlance Reliable Hai" and from using the materials detailed in Paragraph-15 of the plaint from being reproduced before the general public (both nationwide and internationally) through any forums of media, as these materials having been admittedly created by the Defendant No. 1 .