Fair Use Guide Books!

THE CHANCELLOR MASTERS AND SCHOLARS OF THE UNIVERSITY

OF OXFORD v. NARENDRA PUBLISHING HOUSE & ORS, I.A. 9823/2005,
51/2006 and 647/2006 in CS(OS) 1656/2005
Introduction: The doctrines governing Copyright Law often compete against each other to
enable determine disputes involving various aspects. The idea-expression dichotomy is often
balanced against the fair-use provision in the Indian copyright regime. Explicating the same
and also visualizing the dispute while drawing from the standpoint of the American
transformative theory is the case of The Chancellor Masters and Scholars of The University
of Oxford v. Narendra Publishing House and Ors
Facts:
The Chancellor Masters and Scholars of the University of Oxford, a well-known publisher of
academic books is engaged in publishing in India since 1912. With established show rooms in
different places of India, Oxford claims to be publishing substantial number of school books
for use at all levels of schooling and for all subjects, with the aid of a team of highly trained
and committed editorial, research, production and marketing professionals.
The issue at hand dealing with mathematics text books i.e. ("Oxford Mathematics Part A" and
"Oxford Mathematics Part B" (herein after referred to as "the textbooks"). for the students of
Class XI, following the course structure prescribed by the Jammu and Kashmir State Board
of School Education. Having published the same in collaboration with the Jammu and
Kashmir State Board of School Education (hereafter "the Board"), an agreement had been
entered into and the copyright in the said textbooks vested with Oxford. The textbooks
authored by one Dr. A.K. Roy, assigned the copyright in Oxford through an agreement.
Averring that great skill, knowledge and expertise being invested into the work, they claimed
that no part of the textbooks could be stored in a retrieval system or transmitted in any form
or by any means without the prior permission in writing given Oxford, or as expressly
permitted by law.
Oxford alleged that they learnt of the existence of guide books namely "Teach yourself
mathematics (Fully Solved) Part A" and "Teach yourself mathematics (Fully Solved) Part B"
published by Narendra Publishing House and co-parties in 2005. The infringing books, they
claimed had been published, to help those students who prefer to mug up the
solutions/answers rather than seriously taking the course through text books. It was averred
that the guide books had immensely hampered not only the sale of Oxford' work but had also
"gravely prejudiced the interest of the students at large". Oxford averred that Narendra
Publishing had reproduced the exercises and their solutions/answers from their work and thus
had committed an act of infringement. It was also alleged that such reproduction by Narendra
Publishing showed a deliberate and malicious intent and design on their part to
misappropriate, trade upon and derive benefit from its reputation and goodwill and the
copyright in the subject work, enjoyed exclusively by them, worldwide. In this regard, had

granted an ex-parte injunction in favour of Oxford and Narendra Publishing moved for its
vacation.
Contentions of the Parties:
Oxford contended that Narendra Publishing had indulged in a brazen word-to-word copying
of the questions, in the textbooks, while Oxford stated that they had given answers to the
questions in the exercises, but had not provided detailed step-by-step process to arrive at such
answers. It was argued that the questions formed a valuable and central part of the work, and
their substantial copying amounted to violation of the Oxford's copyright. They further stated
that questions, their arrangement and selection should be considered original literary works
under the Act, and therefore, are entitled to copyright protection.
Reliance was placed on University London Press v. University Tutorial Press [1916] 2 Ch.
601, to assert that question papers are literary works and that copyright could vest in
questions.
Narendra Publishing contended that the present issue was one of fair use, stating that the
preparation of a guide book, which independently contains the working of every
mathematical problem and steps for solving them, cannot be termed as an infringement of the
textbook. Further, it was averred that all students were well aware that the Narendra
Publishing' books are guide books whereas Oxford's publications are textbooks. Further, the
questions appearing in Oxford' books were claimed to be part of the common pool of
questions used and contended that the nature of the subject is such that it would be impossible
for one author to claim copyright over a set of questions.
Reliance was placed on Eastern Book Company v. Modak, (2008) 1 SCC 1, while contending
that Oxford' work, no question of infringement arose. It was contended that Oxford' books
had not been pirated or reproduced. They, also stated that since their books did not constitute
adaptation as under section 2 (a), and therefore, could not be in violation of section 14 (a)
(vi). It was also contended that Section 52(1)(h) was inapplicable to the matter at hand since
the reproduction of the literary work was as a part of answers to those questions. Further it
was argued, placing reliance on RG Anand v. M/s Delux Films, (1978) 4 SCC 118 that there
can be no copyright in ideas and therefore, the questions per se are not subject matter of
copyright
Issues: The Court noted that two primary issues needed to be looked into:Whether that part of the work of Oxford which Narendra Publishing had reproduced, prima
facie merits copyright protection.
Secondly, in case it did, had a case of "fair dealing" or a "fair use" been made out.
Observation on the basis of some Doctrines & Tests: The Court noting that the "doctrine of
merger" being involved in this case, posits that where the idea and expression are

intrinsically connected, and that the expression is indistinguishable from the idea, copyright
protection cannot be granted. The Court took notice of previous instances when on
application of this doctrine the courts refused to protect the expression of an idea that could
be expressed only in one, or in a very restricted manner, because doing so would confer
monopoly on the idea itself. The Court opined that as far as the sequencing and schematic
arrangement of the questions notice of Oxford' admission as to the same being in conformity
of the J and K norms was taken notice of and that Oxford had to depict original effort, unique
to their schematic arrangement or sequencing
The Court further referring to a numerous authorities on the subject observed that the same
idea might be developed in different ways. Reiterating the test for determining
infringement: "One of the surest and the safest test to determine whether or not there has
been a violation of copyright is to see if the reader, spectator or the viewer after having read
or seen both the works is clearly of the opinion and gets an unmistakable impression that the
subsequent work appears to be a copy of the original", the Court, also looked at the
"transformative work" doctrine developed in the United States, which held that: "Where
the theme is the same but is presented and treated differently so that the subsequent work
becomes a completely new work, no question of violation of copyright arises."
The Court in consideration of the wisdom behind Copyright and the various exemptions and
doctrines therein, noted that whether statutorily embedded or judicially innovated, the law
recognized the equally compelling need to promote creative activity while ensuring that the
privileges granted by copyright do not stifle dissemination of information, vide the ideaexpression dichotomy and the doctrine of "fair use" or fair dealing. The Court also opined
that in addition, the transformative character of the use must also be considered, since the
work if transformative, it might not matter whether the copying is whole or substantial.
Further, a transformative work may not act as a market substitute and consequently, will not
affect the market share of the prior work.
High Court Held: Looking at the dictionary meaning of the term "Review", the Court opined
that in the context of a mathematical work a review could involve re-examination or a treatise
on the subject. In that sense, the Court held that Narendra Publishing' revisiting the questions,
and assisting the students to solve them, while providing "step by step" reasoning prima facie
amounted to a review, thus falling within the "fair dealing" provision of Section 52 (1) (a) (ii)
of the Act. Stating this reasoning, the High Court vacated the interim injunction.
Appeal: This 3rd August 2011 judgment of the Delhi High Court by Hon'ble judges Justice
A.K.Sikri and Justice Suresh Kait determined an appeal filed by the Oxford University Press
against Narendra Publishing House concerning two mathematics books of the appellant.
The appeal was dismissed as the learned Court held that the test of creativity in the work of
appellant had not been satisfied and no copyright could be claimed therein. Besides asserting
the work put in by Dr. Roy, and the effort in arranging mathematical questions at appropriate
stages, chapters or units in the textbooks, the plaintiff do not show how such effort is original

to conform to the minimum degree of creativity mandated by Indian law, post Eastern Book
Company. The court held that this is not to suggest that there can be no creativity in such
schematic arrangement, the court merely inferred, that there is no material in support of it. On
the fair use issue the Judge held that the step-by-step manner of solving the problems given in
the appellant's 'works', is not available in the said appellant's work, although it has been given
in the respondents 'works'. It was further held that the revisiting of the questions and assisting
the students to solve them amounted to review, which is fair use of subject works. It was held
that a guide book dealing with the subject matter which is contained in the original book,
with a purpose to help, assist and support the students with the problems given in the text
book, then it would be a work different from the original work and not a derivative work at
all. Therefore, the task would be to ascertain as to whether the purpose served by the guide
book is substantially different from the purpose served by the textbook. If the guide book is
different in character and not a mere substitute of the original work/textbook, it would be
treated as transformative. If this directive work in the guidebook has assumed different
character, it would not amount to infringement of the original work, though it would have
been drawn, to certain extent, from the original work. And, in that sense, it would amount to
fair use.