The Modicum of Creativity Standard: An Analysis of Eastern Book Company v. D.B. Modak

Introduction 

The case of Eastern Book Company vs. D.B Modak[i] essentially revolves around the determination of the standard for the grant of intellectual property rights protection. The “sweat of the brow” standard of originality, which values the labour that a person invests in a work over true creativity, was the earlier position. The Hon’ble Supreme Court however, departed from this position and adopted the ‘modicum of creativity standard’ which states that the threshold for granting copyright protection is the involvement of a minimal degree of creativity. The question in the instant case was whether copyright protection can be granted to copy-edited versions of Supreme Court judgements, and further whether only the copy-edited portions can be protected, or judgement as a whole. The propositions that were put forth by the respondents were two-fold: firstly, that granting such right would lead to a monopoly over the judgements which would ultimately defeat the purpose of Section 52(1)(q)(iv)[ii] of Copyright Act that aims at putting the judgements in the public forum. The second being that copy-edited versions do not involve an element of creativity, which is the very basis for the grant of copyright protection. The court however, opposed this stand and observed that the claim of the appellants involves a minimal degree of creativity and hence is entitled to protection under the act.

Analysis of the case 

Claim of infringement:

The appellant, Eastern Book Company is a prominent publisher of legal judgements and literature. One such publication of the appellant is the Supreme Court Cases (hereinafter referred to as SCC) law report which publishes reportable, non-reportable short judgements and orders. Commencing its operations in 1969, the appellants copy-edit the judgements and reports received from the courts and incorporate elements such as cross-referencing, standardisation and formatting. The respondents Spectrum Business Support Ltd. and Regent Data Tech Pvt. Ltd. came up with software packages, Grand Jurix and The Laws Published, which incorporates the judgements and other reports that are published on SCC verbatim, including the formatting, sequencing and any other input. The appellant argued that this conduct of the respondents was an unlawful infringement of their copyright.

• Conflicting claims:

On one hand the appellants claimed that despite receiving the raw text of the judgement from the Supreme Court registry, it is the appellants who have incurred reasonable skill, judgement and expertise in making the text user friendly therefore, capable of elevating the status of the said work to an ‘original literary work’ and hence capable of getting copyright protection under the Copyright Act, 1957. [iii] The court on the other hand, dissented on this point and stated that merely formatting or sequencing will not make the work as original. Further, the court also noted that by granting such protection it would not only lead to a monopoly but would also defeat the purpose of making these judgements a part of the public domain.

What was unique about the appellants copy-edited judgements?

The changes that were incorporated by Eastern Book Company included cross citations, adequate references, margin headings, phrases (indicating dissent/ assent/ concurrence among the Judges), paragraph numbers, ellipsis, indentation, abbreviations and other corrections to the raw text. The appellants incurred significant capital expenditure, labour and skill in making the judgements user friendly.

• Initial position on “originality” –

The Delhi High Court firm to uphold that copy-edited portions of the judgements were not entitled to copyright protection. The reasoning of the court was that merely because the appellants published the judgement first, did not make them the original owners of the said text. The Hon’ble Court opined that mere addition of certain inputs to make it user friendly would not make it eligible for copyright protection.

• Stand of the defendants –

The defendants adopted a three-pronged approach to counter the claim of infringement as made by the appellant. The first being that, copy-edited versions of the judgements were derivative work (meaning that they were based on pre-existing subject matter). Secondly, the aim of Section 52(1)(q)(iv) of the Copyright act was to ensure that no one be liable for infringement for reproducing any judgement or order of any court or judicial authority.  Thirdly, that the appellants have not made significant creative contributions to entitle them to the claimed protection. In Feist Publications Inc. v. Rural Telephone Service Co. Inc.[iv], the United States Supreme Court rejected the ‘sweat of the brow’ doctrine stating that it had many flaws. Further, the sine qua non of copyright is that it must be original to the author with some minimal degree of creativity. Moreover, in the case of Matthew Bender & Co., Inc. v. West Publishing Co.,[v] a similar conflict arose between two publishers with regard to copy-edited versions of the court judgements.  The court stated that something that is already available in the public domain, can be copyrighted only if it involves a significant modification with minimal degree of creativity and not trivial variations.

• Stand of the appellants –

The case of the appellants is that the copy-edited versions involve significant creative exercise. Further they claimed that the Copyright does not expressly prohibit the protection of the grant of copyright for edited versions of judgements, as in the instant case there lies a significant difference in the raw text of the judgement and the modified version of the appellants. They relied upon several judgements such as Ladbroke (Football) Ltd. v. William Hill (Football) Ltd[vi] . In the aforementioned case, the disputing parties developed a coupon-based betting system. The issue at hand was the determination of originality in this regard. The claim for copyright protection was rejected on the ground of lack of substantive creative contribution. The ‘sweat of the brow doctrine’ was relied on. Th court took note of several landmark judgement such as Designers Guild Ltd. v. Russell Williams (Textiles) Ltd.[vii] and Agarwala Publishing House v. Board of High School and Intermediate Education and Another[viii] which reinstated the principle that a person’s skill and labour would grant him exclusive rights to their work.

• Final position –

The court initially took into consideration the ‘sweat of the brow’ doctrine which upholds the view that an author who has applied reasonable skill, expertise or effort on a work is entitled protection.  According to this position, copyright has nothing to do with originality and creative merit, but only with skill, labour and capital infused into the work. However, the court differed on the point of creativity. It stated that although innovation and originality are not a pre-condition for copyright protection, there has to be minimal degree of creativity. The Hon’ble court rejected the contention of the respondents that the appellants (EBC) were merely reproducing the raw text of the judgements in a user-friendly manner. The court noted that in doing so, the appellants were engaging in a creative exercise which involves understanding and analysing the position laid down by each case, determining dissent/ concurrence amongst the judges, identification of the key issues and making requisite corrections to the raw text. This requires knowledge, sound judgement and legal skill. It is because of the addition of these inputs to the judgements that would entitle the appellants to copyright protection. The defendants were restrained from using or reproducing the copy-edited judgements of the appellants.

Conclusion

The Eastern Book Company vs. D.B. Modak is a landmark judgement, as the Court chose to depart from the traditional “sweat of the brow” doctrine and held that the threshold for granting copyright protection is the existence or involvement of a minimal degree of creativity by the author. The “modicum of creativity” test, which prescribed for a new threshold for copyright protection, was laid down by the Hon’ble Supreme Court. The court held that originality as a criterion for copyright protection does not merely imply skill and effort but requires creativity even if it is not overtly significant. The court, however, did not completely shy away from acknowledging the creative labour undertaken by the appellants in developing the copy-edited judgements and provided due recognition to the intellectual labour involved therein. This ruling is significant since it does not compromise public access to legal judgements, rather it merely recognises the creative contributions by the appellants without modifying the position laid down by the Copyright Act, 1957.

Author:– Bhakti Savith Salian,  in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

[i] AIR 2008 SUPREME COURT 809

[ii] 52(1)(q) — “the reproduction or publication of—
(iv) any matter published in any Official Gazette except an Act of a Legislature

[iii] Section 13 of the Copyright Act, 1957

[iv] Feist Publications Inc. v. Rural Telephone Service Co. Inc., 18 USPQ 2d. 1275

[v] Matthew Bender & Co., Inc. v. West Publishing Co., 158 F.3d 674 (2nd Cir. 1998)

[vi] Ladbroke (Football) Ltd. v. Willim Hill (Football) Ltd., [1964] 1 WLR 273 (HL)

[vii] Designers Guild Ltd. v. Russell Williams (Textiles) Ltd., [2000] 1 WLR 2416 (HL)

[viii] Agarwala Publishing House v. Board of High School and Intermediate Education and Another, AIR 1967 All. 91