On ‘Prima Facie’ cases and ‘Originality’: Part I

In determining how the standards of originality are to be applied in particular cases, it is essential to note that in a majority of cases, the Courts are called upon to decide whether to grant a temporary (or interim) injunction (i.e. an injunction awarded until final disposal of the suit) or not. The significance of this is not that it alters the legal tests for “originality”, but that it does alter the results of the application of those tests in particular situations. This is because in temporary injunction matters, the plaintiff has to (a) establish his case only at a prima facie level, (b) demonstrate irreparable injury if a temporary injunction is not granted, and (c) demonstrate that the balance of convenience is in favour of the plaintiff (i.e. the plaintiff will be more disadvantaged because of the non-grant of the injunction that the defendant will be disadvantaged because of the grant of one).

Now, the factors of “irreparable injury” and “balance of convenience” are largely factual determinations. However, the question of what constitutes a “prima facie” case poses legal problems. In this two-part post, therefore, I will begin by looking in some detail at what this prima facie determination requires the plaintiff to demonstrate. Once this is done, I will look at the legal standards of originality. Finally, I will try to determine whether the approach of Justice Bhat in applying these standards to the facts of Oxford is correct.

A. What is a “prima facie” case?

(For the discussion on the meaning of “prima facie” case, I am particularly indebted to a paper by Shantanu Naravane and V. Niranjan, 4^th year students at the National Law School of India University, Bangalore, which is presently under review by a leading journal. Unfortunately, the paper is not available online.)

Under English law, the leading case on the requirements for granting a temporary injunction was the American Cyanamid case (House of Lords). According to Lord Diplock’s speech, a “prima facie” case would be made out if the plaintiff raised a “serious question to be tried”. All that was required was that this “serious question” test be satisfied – it was not necessary for the plaintiff to demonstrate a reasonable possibility of success at trial. A “serious question” was considered to be any question which was not “frivolous or vexatious”. This was a low burden – as long as the plaintiff’s case was not frivolous or vexatious, the requirement of a prima facie case would be made out. The merits of a parties case are not to be considered at this stage under the Cyanamid test. Now, it is arguable that the English position has changed and a greater burden is posed on the plaintiff according to the Series 5 Software (1996 C.L.C. 631). According to Series 5, in order to establish a prima facie case, the relative strengths of the claims of the parties can also be looked at. Nonetheless, Series 5 is a Court of Appeal decision, while Cyanamid is a case decided by the House of Lords. English Courts have therefore shown reluctance to go along with Series 5, and the recent approach seems to indicate that Cyanamid is in general still the law in England.

I now turn to the Indian position. The Supreme Court has pronounced on the relevance of the Cyanamid test several times; unfortunately, the Supreme Court decisions have not been exceptionally clear. For instance, in Wander Ltd. v. Antox (1990) SCC (Supp) 727, the Court appeared to approve the Cyanamid “serious question test; however, it did not express a clear opinion on the issue. In Power Control Appliances v. Sumeet Machines, the Supreme Court relied upon Cyanamid (which does not require the plaintiff to demonstrate a reasonable probability of success) and also on a 1957 Madras High Court decision (K. Aboobacker v. Nanikram Maherchand, 1957 (2) Madras LJ 573) which said that reasonable probability of success was a major factor in deciding whether a prima facie case was made out. The Court did not clarify how it could rely on these two directly contradictory lines of reasoning. This confused state of affairs caused several High Courts to cite Cyanamid but resort to a comparison of the relative strengths of the claims of the parties. In Colgate Palmolive v. Hindustan Lever, the Supreme Court approved of the decision in Series 5, but it clarified that Series 5 must not be read changing the Cyanamid position. The Court also said that the no opinion should be expressed on the merits; yet, the relative strength of the parties’ claims should not be ignored. It appears that the only way to reconcile all these observations is to consider the relative merits of the parties’ cases as one of the factors in determining the balance of convenience, and not in assessing whether a prima facie case is made out.

However, this was not the final word. In a recent pronouncement in M. Gurudas v. Rasaranjan, the Court again went back to the “serious question” test. In Cyanamid, a serious question was considered to be a question which was not merely frivolous or vexation. In Gurudas, however, the Court considered a serious question to be a something more than a “mere triable issue”. One of the most recent decisions discussing this whole area of law is the Cipla decision of the Delhi High Court. On this blog, the Cipla decision has been extensively covered. It is important because of its introduction of “public interest” as a factor in granting interim injunctions in patent cases. However, even from the point of view of the general law on “prima facie case” in injunctions, the decision is important. In the words of the Court, “… the courts should follow the approach indicated in American Cyanamid…The first aspect to be considered is whether the plaintiff had an arguable case…”

So where does that leave Indian law? I would argue that given the reasoning of Gurudas, the Indian law on “prima facie case” is that there must be a serious question raised by the plaintiff; in the sense that the plaintiff’s claim must not be vexatious, and that there should be some possibility of success. I would read Gurudas as moving away from the Series 5 approach and closer to Cyanamid. If the plaintiff can show that he has some possibility of success and that his claim is not vexatious, then he must be held to have satisfied the requirement of “prima facie” case. There should not be a comparative examination of the respective merits of the parties’ claims/arguments – that examination is a matter best left for the trial stage. What is relevant is the possibility of success, not the probability. The relative strengths of the parties cases should be used as a “tipping factor” in case it is difficult to establish in whose favour the balance of convenience lies. This – in my opinion, based on the existing case law and the rationale behind grant of temporary injunctions – is the correct position of law in India.

With this, I now proceed to discuss the legal standard for “originality”, before looking at the application of that standard in Oxford.

B. The standard for originality – from EBC to Oxford

It will be useful to determine the standard of originality by a process of elimination. There are 4 possibilities which must be considered:

1. “Sweat of the brow” standard
2. CCH “intellectual skill and judgment” standard
3. Feist “creativity” standard
4. Another independent standard

We can begin by rejecting the first and the last approach. In the cases following the Supreme Court decision in EBC, the “sweat of the brow” standard is departed from quite clearly. Also, there is nothing to indicate that any new standard is being devised. In EBC, as a reader pointed out in commenting on an earlier post and as discussed in another post on this blog, the judgment is confusing in relation to whether it adopts the Feist or the CCH standard. The present understanding of originality must therefore depend on the cases which interpret EBC – Reckweg, Scrabulous and Oxford. Reckweg and Scrabulous have been discussed here and here respectively, and a guest post on Oxford is available here. In Oxford, the Court affirms that the Indian position is the same as the Canadian CCH position, and states, “It is noteworthy that our Supreme Court noticed that the two positions i.e. the sweat of the brow on the one hand, and “modicum of creativity” were extreme positions; it preferred a higher threshold than the doctrine of “sweat of the brow” but not as high as “modicum of creativity”. Thus, our law too has recognized the shift, and mandates that not every effort or industry, or expending of skill, results in copyrightable work, but only those which create works that are somewhat different in character, involve some intellectual effort, and involve a certain degree of creativity.” So, Indian law does follow the CCH standard.

And what exactly is the CCH standard? For a work to satisfy the requirements of originality, there should be an exercise of skill and judgment. ‘Skill’ may involve the “use of one’s knowledge, developed aptitude, or practised ability”. The exercise of skill and judgment must necessarily involve intellectual effort. This intellectual effort must not be so trivial that it could be characterized as a purely mechanical exercise. In settling upon this standard, the Canadian Supreme Court relied on (1) the plain meaning of the word ‘original’; (2) the history of copyright law; (3) more recent jurisprudence; (4) the purpose behind copyright protection; (5) a workable yet fair standard. The following paragraph is particularly interesting, where the Court states, “Requiring that an original work be the product of an exercise of skill and judgment is a workable yet fair standard. The “sweat of the brow” approach to originality is too low a standard. It shifts the balance of copyright protection too far in favour of the owner’s rights, and fails to allow copyright to protect the public’s interest in maximizing the production and dissemination of intellectual works. On the other hand, the creativity standard of originality is too high. A creativity standard implies that something must be novel or non-obvious – concepts more properly associated with patent law than copyright law. By way of contrast, a standard requiring the exercise of skill and judgment in the production of a work avoids these difficulties and provides a workable and appropriate standard for copyright protection that is consistent with the policy objectives of the Copyright Act.”

Summary

To sum up, three points may be made:

1. The “prima facie” standard in injunction law requires the plaintiff to show that he has some possibility of success and that his claim is not vexatious. The probability of success and the relative strengths of the parties arguments are not relevant factors at this juncture.
2. The “originality” standard in copyright law requires that in order to be original, a work must involve some intellectual skill and judgment.
3. From these two points, it follows that while pronouncing upon an application for temporary injunction in copyright cases, the plaintiff would have met the “prima facie” standard if his claim is not vexatious and if he shows that he has some possibility of success in demonstrating that his work involves intellectual skill or effort.

It is worth noting that the plaintiff does not have to show that his work actually meets the intellectual skill and effort standard; neither does he have to show that he will probably succeed in showing that is meets the standard. All that matters at this stage is possibility and not probability. After the plaintiff shows this, he must be held to have established a “prima facie” case. After that will come in the demonstration of irreparable injury and balance of convenience. In my opinion, Justice Bhat in Oxford applied the correct standard of originality wrongly; he looked at not just the possibility of success, but also at the probability of success. This aspect will be further explored in Part II of this note.