ORDER SHEET

IN THE HIGH COURT OF SINDH AT KARACHI

Suit No.2110 of 2016

Glaxosmithkline Services Limited

Versus

Anfords Pakistan (Pvt.) Limited

Date	Order with signature of Judge

For hearing of CMA 13853/2016

Date of hearing: 19.10.2016 and 03.11.2016.

Mr. Farooq Amjad for plaintiff.

Mr. Mansoor Ali Ghanghro for defendant.

-.-.-

Mohammad Shafi Siddiqui, J.- This is an application filed by plaintiff seeking restraining orders against defendants, its officers, employees, agents, partners, directors etc. from airing, broadcasting or publishing the subject advertisement infringing the rights of plaintiff under copyright, in any medium of communication till final disposal of the suit.

          Plaintiff claims to be a group of companies and merger of SmithKline and French of Pakistan Limited, Beecham Pakistan (Pvt.) Limited and Glaxo Wellcome (Pakistan) Limited (hereinafter called GSK). They claim to be owner of a number of branded products which are being marketed by GSK. One such product which is subject matter of this suit is Parodontax, a daily use tooth paste. It is claimed that to promote the Parodontax tooth paste they have commissioned an innovative advertisement in the year 2011. It is claimed to be a simple but unique massage which is being delivered by short frames focusing on the message that bleeding gums lead to tooth decay and other related ailments. It is thus claimed to have been aired in many parts of the countries of the world however it is in the process of being aired in Pakistan soon. Having said that it is argued that the infringement of the copyright of the aforesaid advertisement is irrespective of any broadcast of the subject add in such territory. Such violation stands alone, whether or not the subject advertisement is aired, as long as one is the owner of a copyright in the advertisement to the exclusion of all others. Such can always be protected under Berne Convention to which Pakistan is also a signatory and even no registration or other steps are required. It is contended that the Doctor Toothpaste of the defendant is being marketed through an infringed advertisement made for Parodontax Toothpaste of plaintiff. Such advertisement is being aired on various national TV channels. It is claimed that the Doctor Toothpaste advertisement is an obvious copy of unique concept of underlying GSK’s advertisement including visuals, placement and sequence of items and text/captions, message delivered to the viewers and the events depicted therein. It is thus reproduction and sequential copy of Parodontax’s advertisement’s slides and hence causing infringement of GSK’s copyrights.

          Learned counsel for defendant on the other hand denied the plaintiff to have an exclusive right on the subject, as claimed. It is claimed that the advertisement being aired by the plaintiff are not its own intellectual product and as such are not obvious copy. It is denied that any irreparable loss has been cased to the plaintiff as admittedly the plaintiff is neither marketing nor selling its product Parodontax in Pakistan. Counsel also denied that balance of inconvenience lies in favour of the plaintiff for the grant of temporary injunction. It is contended that in the event the injunction is refused, the plaintiff shall not suffer any irreparable loss or injury since they have no business as far as subject toothpaste Parodontax is concerned.

          I have heard the learned counsel for the parties and perused the material available on record.

          In paragraph 6 of the plaint, plaintiff asserted that to promote its Parodontax marked goods GSK i.e. plaintiff commissioned an innovative advertisement in the year 2011. The advertisement being unique in message consisting of short frames pictures became famous. In paragraph 7 it is claimed that the advertisement soon aired in various countries around the world hence having produced and aired such advertisement consisting of short frames, as available on record, the plaintiff became the lawful owner of copyright to the exclusion of others including the defendant.

The plaintiff has made above pleadings as part and parcel of the affidavit in support of the application, especially in paragraph 2 of the affidavit. The defendant has filed a counter-affidavit denying the contents of the affidavit. However insofar as contents of the plaint are concerned it is claimed to have been denied by filing written statement, which is claimed to be reiterated in terms of paragraph 2 of the counter-affidavit. Surprisingly there is no written statement available on record. There is no specific denial on record as to the commissioning of the advertisement, which is claimed to be innovative. There is also no denial to this fact and there cannot be, that Pakistan is a signatory to Berne Convention and hence question of its registration is not inevitable; by way of it being signatory to Berne Convention. Hence the registration is no more required under the law.

          The only thing that is now left to ascertain is whether the idea and concept behind this advertisement and the sequential arrangement is infringed by the defendant or not. Plaintiff has placed the coloured copies of the subject advertisements which are around six still frames. For the comparison I attach/reproduce the copies of both the advertisements claimed by the plaintiff as well as by defendants as under:-

Plaintiff’s Add:                       Defendant’s Add

          In the first frame the maroon background is shown with some information regarding teeth. In the second frame in both the advertisements the sink is shown with blood spit into it. The third frame shows two dentures in each frame, the first without a missing tooth and the other with a missing tooth. Both the frames of the plaintiff and defendant are identical. In the fourth frame the box of the toothpaste is shown with one hand picking it. In the fourth frame toothpaste was shown to be applied on the brush. In the sixth and last frame the box along with toothpaste tube shown as held by a person. All these six frames appear identical insofar as its idea and concept and sequences are concerned. The defendant only claimed to have denied that the plaintiff has not been able to establish the ownership of the advertisement. These two sets of frames (advertisements) are such that the defendant cannot reasonably claim that it is their own novel idea nor the arrangement of sequences of slides which otherwise is publicly available since 2011, as claimed by the plaintiff and not denied by the defendant. The defendant for the first time aired this add in the year 2016.

In the case of Abbas Husain Farooqui v. Royal Printing Press reported in PLD 1970 Karachi 554, learned Division Bench of this Court held that even a reprint of selected passage from non-copyright work may be an original literary work within the meaning of Copyright Act. Literally work includes the sequential compilation, as is the case here. The title in copyright is not dependent upon registration, the moment an artistic work is created or expressed in any tangible medium of expression, unless otherwise so agreed by the author or creator in terms of contract, if any, with third party. The moment advertisement is shown, the claim based on the registration is founded on fraudulent misrepresentation, such alleged right could be successfully defeated and defended by the author/creator etc. of the work or his representation, which the defendant has failed to substantiate in the instant case.

In view of the above facts and circumstances of the case, it seems that the defendant has intentionally and deliberately infringed the copyright by following not only the exact sequences but the still advertisement itself seems to be an exact replicate. Thus, the plaintiff has been able to make out a prima facie case in its favour and in case the injunction, as prayed, is not granted it shall suffer irreparable loss. The application therefore is allowed as prayed.

Dated: 05.12.2016                                                                      Judge