Scenes affaire in India

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Author : Priyanka Chakraborty
Published on : November 07, 2016

Priyanka Chakraborty's Profile and details
LL.B (IP), IIT Kharagpur

Scènes À Faire In India

One of the things that has been occurring in copyright law is a slow shift from being a common law subject to a statutory one. There has always been a federal Copyright Act, of course, but until recently, courts took it as an invitation to fill in the gaps rather than an unyielding constraint on their actions.

Large portions of traditional copyright are either nowhere to be found in the statute or are simply codifications of earlier common law. Even within the realm of common law doctrines, copyright shifted over the course of the twentieth century from being an equitable determination of fairness in competition for goods and services — books and plays — to being a legal determination of rights in intangible expression.

In the 1930s, as separate equity proceedings were abolished, courts initially kicked a major part of the hard question there to juries, but then almost immediately began reclaiming various determinations for themselves.

Scènes à faire is an example. The scènes à faire doctrine is an exception to copyright protection. It emerged in the 1940s, not coincidentally only a few years after the merger of law and equity in federal courts after the 1938 adoption of the Federal Rules of Civil Procedure.

When similar features of a work are as a practical matter indespensible or at least standard in the treatment of a given idea, they are treated like ideas and therefore not protected by copyright.

According to Duhaime's Law Dictionary, Scènes à faire is defined as:
“Elements of an original work those are so trite or common that they are not captured by copyright.”

Scènes à faire is a French term meaning “scene to be made” or “scene that must be done”. It is a scene in a book or film which is almost obligatory for a genre of its type.

In the U.S. it also refers to a principle in copyright law in which certain elements of a creative work are held to be not protected when they are mandated by or customary to the genre.

Scènes à Faire provides that certain subject matters like stock images, true story lines, fables, folks, scenes of nature, common visual and cultural reference, all of which fall under the description of scene must be done and are not copyrightable because they are a part of public domain and no one can obtain a monopoly on such image by putting them on a fixed tangible medium of expression.

In a computer programming it is often customary to list variables at the beginning of source code of programme, also in some programming languages it is required to declare the type of variable at the same time. As a result they are not considered protected elements of a programme.

Evolution of The Doctrine

The term itself was first used in an opinion by Judge Leon Yankwich of the Southern District of California, a judge who later played a role in resurrecting the four factor fair use doctrine that we have today. The plaintiff in Cain v. Universal Pictures was James M. Cain, the noted author of “The Postman Always Rings Twice,” “Double Indemnity,” and other hardboiled suspense stories.

Cain had sold the film rights of one of his stories, “Modern Cinderella,” to Universal, which made a movie out of it, “When Tomorrow Comes.” When the film was released, however, it contained a new scene in which the romantically involved lead characters sought refuge in a small church during a storm.

Cain thought that the scene was too similar to one in another of his stories, “Serenade,” which he had not licensed to Universal.

The judge while examining the case, held, “it was inevitable that incidents like these and others which are, necessarily, associated with such a situation should force themselves upon the writer in developing the theme.”

Judge in this case brought out the French term “scènes à faire” for the similarities like:-
· Couple taking shelter from a storm in a church,
· Playing piano in the church,
· Praying and suffering from hunger,

which are natural similarities due to situation.

Separating idea from expression has long troubled the courts. In 1930, Judge Learned Hand summarily explained the impossibility of a universally generalisable solution:

Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his “ideas,” to which, apart from their expression, his property is never extended. Nobody has ever been able to fix that boundary, and nobody ever can.

The well-known doctrines of merger and scènes à faire emerged from the difficulty in managing the idea-expression dichotomy.

The limiting doctrines of merger and scènes à faire are then applied to determine whether the remaining levels of abstraction are protectable by copyright. Once all components have been sifted out through the filtration analysis utilizing merger and scènes à faire, then the substantial similarity inquiry entails determining whether any aspect of the plaintiff’s program was copied by the defendant.

Other Important Judgments of The US Courts

In Walker v. Time Life Films, Inc.:-

· Author Thomas Walker alleged that the movie Fort Apache, The Bronx, was a infringement on his book Fort Apache.

· Court decided that the alleged infringement are only conventional thoughts, and are not protected.

The court ruling stated: “the book Fort Apache and the film Fort Apache: The Bronx were not substantially similar beyond the level of generalized or otherwise non-protectable ideas, and thus the latter did not infringe copyright of the former.”

Connection between idea and expression is not protected under copyright law, because it would contravene the notion of original expression protection by unfairly granting a monopoly to the author and banning all others from expressing the idea. Similarly, the scènes à faire doctrine bars standard phrases that necessarily flow from a common setting or theme from copyright protection.

In Joshua Ets-Hokin v. Skyy Spirits Inc:-

· A photographic artist, Joshua Ets-Hokin, sued Skyy vodka when another photographer made commercials with a considerably comparable appearance to the work he had done previously.

· It was held that the closeness between the works was mainly because of the constrained scope of articulation of the subject matter.

It was established that the similarity between plaintiff and defendant’s works of the photographer was largely mandated by the limited range of expression possible; within the constraints of a photo shoot for a commercial product there are only so many ways one may photograph a vodka bottle. In light of this, to establish copyright infringement, the two photos would have been required to be virtually identical. The originality of the later work was established by such minor differences as different shadows and angles.

Granting first comer the exclusivity over scenes would greatly hinder other subsequent creation of expressive works, which is against the constitutional mandate of copyright, as it is a hindrance to the public’s enjoyment of such future creative expressions.

It provides that when discussing certain topic, story line or genre, there are certain themes, scenes, incidents, character types or settings which as a practical matter must be used to properly treat the topic. So protection is denied to common elements of work which are essential to the presentation of subject matter of the work.

Position in India
The policy rationale of the doctrine of scènes à faire is that granting a first comer exclusivity over scenes à faire would greatly hinder others in the subsequent creation of other expressive works. That would be against the constitutionally mandated policy of the copyright law to promote progress in the creation of works, and it would be an impediment to the public's enjoyment of such further creative expressions. By the same token, little benefit to society would flow from grants of copyright exclusivity over scènes à faire.

Points to be noted in Indian context are:-
· The doctrine of Scène à faire has not been expressly stated in the Copyright Act in India.
· The doctrine is basically American in origin and the Indian courts have not deviated much from what is the settled law in the US.
· The Act remains silent even on the idea-expression dichotomy.
· The policy rationale of the doctrine of scènes à faire is that granting a first comer exclusivity over scènes à faire would greatly hinder others in the subsequent creation of other expressive works.
· This principle stems from the notion that “ideas are free to the world”.
· Scenes à faire emerged from the difficulty in managing the idea-expression dichotomy.
· The doctrines applied as defence to infringement.
· Indian Courts have indeed appreciated and applied the concept of the idea-expression dichotomy under copyright law.

In a copyright infringement case, the plaintiff must prove two things: (1) the existence of a valid copyright and (2) that the defendant actually copied the work. When merger and scènes à faire are introduced, the courts have inconsistently applied the doctrines in their analyses.

Use of the doctrine are:-
· The Doctrines Applies as Bars to Copyrightability,
· The Doctrines Applies as Defenses to Infringement.

Indian Cases
“Scènes à faire” is a term that refers to characters, places, story elements, language, etc, which are standard to some general theme or topic, and are often an indispensable part of that theme or topic. Such scenes a faire is not capable of being protected by copyright. For example, a science fiction story may have robots, high-tech gadgets, spaceships, a hero fighting adversity against a domineering leader, etc. These are all scenes a faire and not protectable by copyright. However, the application and expression of these elements in any given story would be protectable.

The doctrine was first discussed in India in the case of RG Anand v. M/s Deluxe Films:
· That case dealt with the alleged infringement of the script of a play, arising from the adaption of the same into a cinematograph film
— Infringement was not established, the Court held that copyright cannot be acquired over an idea.
— The principles established in this case form part of the law of the land and holds good even today.

The plaintiff was the writer and producer of a play called “Hum Hindustani” that was

produced in the period of 1953-1955. The play was based on the evils of provincialism. The defendant in 1956 produced a film called “New Delhi”. One of the themes of the film was provincialism, too. While evaluating whether or not the defendant had infringed the plaintiff's copyright, the Supreme Court of India held:

There can be no copyright in an idea, subject matter, themes, plots or historical or legendary facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyright work.

Therefore, the court held that there is a standard way of dealing with the theme of provincialism, and there can be no copyright over that theme. Consequently, a question of infringement does not even arise.

This doctrine was further discussed in the Indian case of NRI Film Production Associates v. Twentieth Century Fox Film Corporation wherein it was held that:-

“There can be no copyright in an idea, subject-matter, themes, plots or historical or legendry facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyrighted work.”

The concept of Scènes à faire was passively implemented in the cases like:-
— Twentieth Century Fox Film Corporation v. Zee Telefilms Ltd. And Ors
— K.R. Ravi Rathinam v. The Director General of Police
— Narendra Mohan Singh and Ors. v. Ketan Mehta and Ors

Form the cases it can be observed that:-
· Infringement in India is normally established through comparison of the two works from a holistic perspective.
· Similarity in the ideas are considered by the court.
· The law in India prescribes more of a total “look and feel” of the work involved, as seen from the perspective of the viewer / audience.
· Indian courts apply subjective test.

One of the elements necessary to have a work be copyrightable is “originality.” Generally speaking, the bar is set quite low in determining such originality. However, where there is no other way of saying, photographing or otherwise creating an idea, the Courts prevent the monopolization of that idea through the application of the above doctrines. Thus, while “substantial similarity” may be a basis for infringement where originality is high, in these instances a claimant has to show that the copy is virtually identical.

Just because writers, artists, web designers and other creators as well as publishers and other acquirers of rights claim a copyright and file a copyright application, does not mean that everything as to which they claim copyright protection is in fact protected.

The doctrine of Scène à faire creates a balance between freedom of expression and copyright law. On the one hand it protects the rights of the artist whereas on the other hand it gives another individual a freedom to create on a particular theme which has been used earlier by another artist. This doctrine has been created considering both law and equity in mind.

As popularly described by Prof. Nimmer in his book, “this doctrine does not limit the subject matter of copyright; instead, it defines the contours of infringing conduct”.

In order to best serve the interests of copyright law, in light of the ever increasing statutory protection afforded to copyright owners and the plain language of the copyright statute itself, courts should require plaintiffs to show that their work is protectable despite the doctrine of scenes a faire.


The doctrine of scenes a faire is used by the courts to distinguish copyrightable material from those which cannot be copyrighted. Its purpose is to ensure that what belongs in the public domain stays there, and what deserves protection gets it.

Thus, scenes a faire is a concept invoked to promote the very same public policy that copyright law itself promotes, namely, the progress and public dissemination of knowledge

# What’s a Scènes à Faire?, By Bruce Boyden , March 1, 2013
# 47 F. Supp. 1013 (1942)
# Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930)
# Altai, 982 F.2d at 710.
# 784 F.2d 44 2d Cir. 1986
# Pruning Paracopyright Protections: Why Courts Should Apply the Merger and Scènes à Faire Doctrines at the Copyrightability Stage of the Copyright Infringement Analysis, Sandro Ocasio
# 225 F.3d 1068 (9th Cir. 2000)
# RG Anand v. M/s Deluxe Films, AIR 1978 SC 1613
# NRI Film Production Associates v. Twentieth Century Fox Film Corporation, ILR 2004 KAR 4530
# 2012(51)PTC465(Del)
# MANU/TN/2783/2014
# 2015(64)PTC260(Bom)
# Nimmer on Copyright, Vol. III, 1993.
# Feist Publications v. Rural Tel. Service, 499 U.S. 340, 348 (1991)