1. Heard. Admit. Taken up for final disposal
with the consent of the learned Counsel for the rival
parties.
2. This appeal was taken up for final disposal
with the consent of the Counsel for the rival parties
in view of the fact that application under Order VII
Rule 11 of the Code of Civil Procedure filed by the
respondent/defendant was allowed and consequently, the
appellant contended that he stands without any remedy.
3. The appellant is the original plaintiff, who
filed Special Civil Suit No.3/2010 in the Court of
District Judge 5, Nagpur under Section 60 of the
Copyright Act, 1957 for declaration and permanent
injunction. He averred that he developed a software to
facilitate the professionals like Income Tax
Advocates, Chartered Accountants, Sales Tax
practitioners, Accountants in their professional work.
The objective is to facilitate automatic preparation
of return, namely form No.231 to 324, to validate 'E-
software. It was processed since the year 2005 and
finally was launched in the market in the year 2007.
The software became popular in the market and
consequently, the competitors of the plaintiff
including the respondents/defendants started creating
obstacles in the marketing of the said product. As a
result of the intention of the respondents to obstruct
the plaintiff from doing his business of marketing the
said product, the respondents filed F.I.R. with Police
Station Nasik on 30.1.2010 which registered as Crime
No.3007/2010 under Sections 63 and 65 of the Copyright
Act. Acting on the said F.I.R., Nasik police suddenly
visited the premises of the plaintiff on 3.2.2010
without any knowledge or intimation to the plaintiff
and seized various materials from his office and went
away. Even before the said action and thereafter the
respondents started oral campaign about the
plaintiff's said product falsely propagating that the
product was not of good quality and so on and so
forth. The plaintiff having no alternative filed
4 fa1076.11.odt
Special Civil Suit No.3/2010 on 3.3.2010.
4. Thereafter, the respondents/defendants on
29.3.2010 filed a suit under Section 55 of the
Copyright Act in the Court at Nasik vide Civil Suit
No.1/2010 and also obtained ex parte injunction on
15.4.2010 and upon appearance of the present plaintiff
before the Nasik Court and after hearing the parties,
the said Court on 14.10.2010 suspended the said order
of ex parte
ig injunction till the decision on the
application under Order VII Rule 11 of the Code of
Civil Procedure filed by the respondents in the civil
suit at Nagpur. In the civil suit at Nagpur the
respondents/defendants filed an application under
Order VII Rule 11 of the Code of Civil Procedure for
rejection of plaint on the ground that Section 60 suit
filed by the plaintiff was hit by its proviso since
the defendants had already filed a suit in the Nasik
Court with due diligence and in the police action
F.I.R. was filed and now chargesheet has been filed
against the appellant/plaintiff. Another reason to
claim rejection of the plaint was non-disclosure of
true cause of action. The said application was decided
by the District Judge by his order dated 22.6.2011 and
5 fa1076.11.odt
was allowed. The said order of rejection of plaint
dated 22.6.2011 was challenged before this Court in
First Appeal No.667/2011. This Court disposed of the
said appeal on 17.9.2011 and set aside the order of
rejection of plaint dated 22.6.2011 with the consent
of the parties and after framing two questions asked
the trial Court to decide them in accordance with law.
The trial Court heard the parties on the said two
questions framed and decided the application and again
rejected the plaint by allowing the said application
by the impugned order dated 10.10.2011. Hence, this
appeal against the said order dated 11.10.2011.
SUBMISSIONS :
5. In support of the appeal, learned Counsel
for the appellant made the following submissions.
(i) The learned District Judge
committed an error in holding that lodgment of FIR
with Police Station, seizure of the articles from the
office of plaintiff after conducting raid do not
amount to threat or threat to initiate legal
proceeding.
plaintiff including that of lodgment of FIR and that
the plaintiff had not committed any infringement of
any of the legal rights of the respondents and that is
why the suit filed under Section 60 was perfectly
maintainable.
(iv) Section 55 does bar the suit under
Section 60 because Section 60 suit was filed first in
point of time by the present appellant on 3.3.2010
while Section 55 suit was filed by the respondents on
29.3.2010.
(v) As a matter of fact even according
to the respondents on 17.12.2009 complaint was filed
by the respondents with Cyber Crime Department of
Police at Nasik. Long thereafter i.e. on 29.3.2010 the
suit under Section 55 came to be filed, which cannot
be said to be with due diligence. The suit under
Section 60 was filed earlier and therefore, the
7 fa1076.11.odt
subsequent suit filed under Section 55 cannot render
the appellant's suit under Section 60 infructuous as
contended.
(vi) The decisions relied upon by the
trial Court have no application at all in the instant
case because they did not directly relate to the issue
of suit under Section 60 filed earlier than the suit
under Section 55 of the Act.
(vii) The District Judge trying the suit
under Section 60 is definitely having the jurisdiction
to entertain the suit and the suit was not barred as
contemplated by Order VII Rule 11 of the Code of Civil
Procedure.
(viii) The plaintiff/appellant had an
ex parte order of injunction in his favour but because
of the application under Order VII Rule 11 of the Code
of Civil Procedure filed by the respondents/defendants
and rejection of the plaint by the trial Court on both
occasions, the relief of injunction has been taken
away at the behest of respondents/defendants,
resulting into severe financial loss to the
appellant/plaintiff. The trial Court did not at all
undertake the exercise of trying application Exh.5 and
8 fa1076.11.odt
looking to the fact that prima facie strong case has
been made out by the appellant/plaintiff, temporary
injunction is required to be granted in favour of the
plaintiff to save any further loss as it is the
respondents/defendants who are responsible for
prolonging the matter by insertion of frivolous
application under Order VII Rule 11 of the Code of
Civil Procedure and compelling the plaintiff to make
rounds of litigation.
(ix) This Court, therefore, should
issue injunction in favour of the plaintiff, looking
to the vicious conduct of the respondents with
exemplary costs.
He relied the following decision.
(a) Delhi High Court (Super Cassette
Industries Ltd...Versus...Bathla Cassettes India (P)
Ltd. on 4 February, 1993 = 50 (1993) DLT 7).
6. Per contra, learned Counsel for the
respondents vehemently opposed the appeal and made the
following submissions.
(a) The impugned order passed by the
trial Court is perfectly justified and no interference
is required to be made.
the plaintiff has automatically become infructuous no
sooner the suit under Section 55 was filed by the
respondents/defendants before the District Judge at
Nasik.
(c) Merely because the suit at Nasik
Court was filed after about 26 days after filing of
the suit by the plaintiff, it cannot be said that it
was not filed with due diligence.
(d) The defendants took the remedy of
lodgment of FIR with police station which itself shows
that it was an act of due diligence on the part of the
defendants. The fact that the police have conducted
raid on 2.3.2010 and thereafter filed chargesheet on
23.7.2010 against the plaintiff clearly indicates
prima facie evidence against the plaintiff about
piracy.
(e) FIR lodged by the defendants
cannot be called as 'threat' of any legal proceedings
because the complaint was about infringement of rights
of the defendants in respect of copyright and the
cognizable offence under the Copyright Act.
Court in that behalf are legal, correct and proper.
(g) The plaint allegations nowhere
show any cause of action for filing the suit under
Section 60.
(h) The very requirement of Section 60
for filing a suit is that there should be threat of
legal proceeding or liability and such allegations of
infringement of any legal rights were in fact not
true. Proviso to Section 60 is very important inasmuch
as it specifically prohibits the suit, if the
ingredients of threat and legal proceeding are absent
and those are absent in the instant case.
(i) Nothing has been shown by the
plaintiff that the plaintiff received any threat
within the meaning of Section 60 and therefore, the
suit under Section 60 is not maintainable. At any
rate, after filing of the suit by the respondents in
the District Court at Nasik, with due diligence, the
present suit under Section 60 of the Act filed by the
appellant in Nagpur District Court has to be dismissed
as per the proviso to Section 60 of the Act.
software either in the trial Court or before this
Court and in the absence thereof a prayer for
injunction is not at all maintainable.
(k) The demonstration made by the
plaintiff as well as defendants before this Court
about software indicated that there were several
clearly visible items showing piracy made by the
plaintiff and therefore, there is no prima facie case
in favour of the plaintiff to claim any temporary
injunction even for some period.
(l) Since there has been no injunction
in favour of the plaintiff from 2010, he is not
entitled to any injunction as claimed in the instant
appeal.
Finally, learned Counsel for the
respondents/defendants prayed for dismissal of the
appeal.
He relied on the following decisions.
(i) AIR 2002 Bombay 151 (M.V. Sea Success
I ...Versus...Liverpool and London Steamship
Protection and Indemnity Association Ltd. and
another).
12 fa1076.11.odt
(ii) Special Leave Petition (Civil) No.4483
of 1977, Decided on 14.10.1977
(T. Arivandandam...Versus...T.V. Satyapal and Anr.)
MANU/SC/0034/1977 Eq Cit : AIR 1977SC2421, 1977 (O)
KLT965 (SC), (1997)4SCC467, [1978]1SCR742, 1977 (9)
UJ697 (SC).
(iii) 1998 (2) Supreme Court Cases 70
(I.T.C. Limited...Versus...Debts Recovery Appellate
Tribunal and others).
(iv) Calcutta High Court (Montek
Singh...Versus...State of West Bengal
8 October, 2002 = 2003 (2) CALLT 85 HC, 202 Cri LJ
and Anr. on
4617.
Kerala Crime Branch Office and another).
(vi) AIR 1981 Allahabad 200 (Nav Sahitya
Prakash and others...Versus...Anand Kumar and others).
(vii) Bombay High Court (Burroughs
Wellcome (India) ltd...Versus...Uni-Sole Pvt. Ltd. and
another on 3 July, 1997).
(viii) Calcutta High Court (Zahir
Ahmed...Versus...Azam Khan on 21 September, 1995 =
1996 CriLJ 290).
(ix) Delhi High Court (Camlin Pvt.
Ltd....Versus...National Pencil Industries on 7
November, 1985 = AIR 1986 Delhi 444, 1986 (1) ARBLR 86
Delhi).
(x) AIR 2009 Delhi 44 (Rajesh
Masrani...Versus...Tahiliani Design Pvt. Ltd.).
13 fa1076.11.odt
(xi) Civil Appeal No.3637 of 2008 (Arising
out of SLP (C) No.20941 of 2006) Decided on 16.05.2008
(Dabur India Ltd...Versus...K.R. Industries).
CONSIDERATION :
7. I have gone through the entire record so
also the impugned order. I have gone through the
provisions of the Copyright Act, 1957. I have heard
learned Counsel for the rival parties at length on
number of occasions. During the course of hearing
since the learned Counsel for the parties wanted to
demonstrate by exhibition of relevant compact disc
that there was infringement of copyright, they were
allowed by this Court. During the demonstration,
Counsel for the respondents with the help of
respondents started showing similarities or the
copying made in the compact disc marketed by the
appellant. When the demonstration was going on it was
pointed out by the learned Counsel for the appellant
upon instructions from the appellant that the portions
which were being shown from the disc of the
respondents as similar or pirated in the compact disc
of the appellant was not the copyright registered
under the Copyright Act. Learned Counsel for the
14 fa1076.11.odt
respondent was therefore asked to show the
registration thereof but then even after taking few
adjournments learned Counsel for the respondent did
not produce any registration of that disc/copyright
which was being objected to at the time of
demonstration and that is why the learned Counsel for
the respondent then took a stand that it was not
necessary to have copyright registered under the
Copyright Act and in support of the said proposition,
learned Counsel for the respondent showed certain
decisions including the one rendered by the Delhi High
Court. Counsel for the appellant argued that
registration was compulsory or mandatory. Fact,
however, remains that respondents could not produce
the evidence of registration in order to show that
their copyright was registered much less earlier to
than that of the appellant or that their product was
brought into existence before the product of the
appellant was brought into existence. Learned Counsel
for the respondents even filed written note of
argument and referred to the expression of opinion
made by this Court vide paragraph no.5 of the note and
as answer to the said expression, in paragraph no.16
15 fa1076.11.odt
of the written note, took a clearcut stand with
support of the decisions referred in that paragraph
saying that registration is not necessary. In the
entire written note of argument nowhere has been
mentioned that the copyright in question was
registered by the respondents anywhere in the country
with the Registrar. Since the question about
registration has been vehemently raised by both
parties, I am required to decide it. In view of the
above discussion, following points arise for my
determination in this appeal.
constitute 'threat' of legal proceedings or
liability against the appellant ?
...Yes.
(b) Whether averments in the
plaint would constitute 'threat' within the
meaning of Section 60 of the Copyright
Act ?
...Yes.
Section 60 of the Copyright Act, 1957 filed
on 3.3.2010 by the plaintiff-appellant
became infructuous after the respondents-
defendants filed a suit on 29.3.2010 under
Section 55 of the Copyright Act and was
thus liable to be rejected under Order VII,
Rule 11 of the Code of Civil Procedure ?
...No.
ig (4) Whether the
plaintiff is entitled to grant of temporary
appellant-
injunction till decision of Exh.5 ?
...Yes.
8. Copyright Act, 1911 of the United Kingdom as
modified by the Indian Copyright Act, 1914 was in
force before the Copyright Act, 1957 was brought into
force after independence. It is true that Statements
of Objects and Reasons accompanying a Bill cannot be
used to interpret and determine the true meaning and
effect of the substantive provisions of the Statute.
They can not be used except for the limited purpose of
17 fa1076.11.odt
understanding the background and the antecedent state
of affairs leading up to the legislation. I,
therefore, undertake the limited exercise to find out
the several new features when the Copyright Act, 1957
was brought into existence from the Statement of
objects and Reasons, which I quote hereunder :
function of the Copyright Office will be
to maintain Register of Copyrights in
which may be entered, at the option of
the authors, the names and addresses of
authors and owners of copyright for the
time being, and other relevant
particulars. Such Register will easily
make available useful information to
interested members of public in regard to
copyrighted works. In order to encourage
registration of copyrights, provision is
made that no proceeding regarding
infringement of copyright shall be
instituted unless copyright is registered
in the Copyright Office. In addition to
being in charge of the Copyright Office,
18 fa1076.11.odt
the duties of the Registrar of Copyrights
will be to entertain and dispose of
applications for compulsory licences and
to inquire into complaints of importation
of infringing copies. An appeal to the
Copyright Board is provided for against
the orders of the Registrar of
Copyrights.
(2) Provision is made for setting
up a Copyright Board which will determine
the reasonableness of the rates of fees,
charges or royalties claimed by
performing rights societies, consider
applications for general licences for
public performances of works and will
assess compensation payable under the
Bill in certain circumstances. An appeal
will lie to the High Court against the
decisions of the Copyright Board.
various components, namely, story, music
etc.
returns the amount received by him at the
time of the assignment with interest
thereon.
(6) The normal term of the
copyright is fixed to be the life of the
author and a period of 25 years after his
death as against the existing term of the
life of the author, and a period of 50
years after his death. Shorter terms are
fixed for anonymous or pseudonymous
works, cinematograph films, mechanical
contrivances, photograph, etc.
(7) Under the existing law, the
sole right to produce a translation of a
work first published in India is
extinguished after ten years, unless a
translation thereof is produced within
that period. The Draft Bill makes the
right co-extensive with other rights
arising out of copyright.
public performances of any work by means
of a radio-receiving set or a mechanical
contrivance.
(9) A licence may be issued to any
library to make or cause to be made one
copy of any book in which copyright
subsists and which is not available for
sale.
rights societies and also for controlling
the fees, charges or royalties to be
collected by them.
international treaties will be regulated
by specific orders to be made by the
Central Government.
constitute an infringement of copyright.
9. In the year 1983, amendment act 23 of 1983
was brought to amend the said Act of 1957. Thereafter,
the Amendment Act 65 of 1984 was brought but the
provision as to the computer programmes and films was
actually not inserted by the said amendment.
10.
w.e.f.
It appears that thereafter by Act 38 of 1994
10.5.1995 clause (ff) of Section 2 was
substituted to include (ffb) and (ffc) for inserting
entries of computer and computer programme. It,
therefore, appears that the terms computer and
computer programme entered the Copyright Act for the
first time by virtue of the said Amendment Act No.38
of 1994.
11. As to point no.1 : - The provisions of the
Copyright Act and in particular the aspect whether the
registration is mandatory or not was considered by the
Division Bench of Madhya Pradesh High Court in the
case of M/s. Mishra Bandhu Karyalaya and
others...Versus...Shivratanlal Koshal, reported in AIR
1970, Madhya Pradesh 261 (Per Justice A.P. Sen).
before Calcutta High Court in the case of Satsang and
another...Versus...Kiron Chandra Mukhopadhyay and
others, reported in AIR 1972 Calcutta 533, before
Madras High Court in the case of M/s. Manojah Cine
Productions...Versus...A. Sundaresan and another,
reported in AIR 1976 Madras 22, before Allahabad High
Court in the case of Nav Sahitya Prakash and
others...Versus...Anand Kumar and others, reported in
AIR 1981 Allahabad 200, before Kerala High Court in
the case of R. Madhavan...Versus...S.K.Nayar, reported
in AIR 1988 Kerala 39 (D.B.) and before the Delhi High
Court in the case of Rajesh
Masrani...Versus...Tahiliani Design Pvt. Ltd.,
reported in AIR 2009 Delhi 44 (D.B.). The Division
Bench decision of the Madhya Pradesh High Court, cited
supra, was referred before these High Courts but they
dissented therewith and took the view that the
registration under the Copyright Act of a copyright is
not compulsory or mandatory and the prominent reason
for holding so was that Section 45 providing for
registration uses the word may and Section 13 and
Section 17 and the scheme of the said Act does not
23 fa1076.11.odt
provide for any compulsory registration. They also
held that Section 48 providing for presumption was
only to indicate the rule of evidence provided for
rebutable presumption and for prima facie proof and
nothing more. In the case of V. Errabhadrarao (wrongly
described as Veerabhadrayya in decree) and
another...Versus...B.N. Sarma and another, reported in
AIR 1960 Andhra Pradesh 415, the Division Bench with
reference to provisions of Copyright Act II of 1334F
applicable to former State of Hyderabad held
registration as condition precedent. Justice
Jaganmohan Reddy speaking for the Bench in paragraph
11 held thus :
assignees and in so far as British India
was concerned, the statute governing these
matters was by virtue of S. 3 of the Indian
Copyright Act III of 1914, the Copyright
Act of 1911 enacted by the British
Parliament, subject to such modifications
24 fa1076.11.odt
as stated in the Indian Act. Under the
English enactment, (Ss. 1 and 2) copyright
may subsist subject to the provisions of
that Act in every original literary,
dramatic, musical artistic work.
The book Hyderabad Pai Police Charya
will certainly be, as we have already held,
an original work within the meaning of the
English Copyright Act as applied to British
India. We may, however, observe that under
soon
the English Act as applied to India, as
as the contribution of an author
satisfies the requirements of S.2, his
copyright therein is protected without any
registration. While this is so that Act is
not applicable to this case as the former
State of Hyderabad had its own Copyright
Act II of 1334F which would govern this
case. In the circumstances, it will have
to be determined whether under the
Hyderabad Act the 1st respondent acquired a
copyright in his book at the time when the
appellants are alleged to have infringed
it.
Copyright has been defined by cl. (b)
of S.2 to mean the special right which any
person is entitled to enjoy, of printing,
publishing or otherwise utilising or
turning to account, every original
composition, compilation or drawing.
25 fa1076.11.odt
Section 3 provides that every author shall
enjoy the copyright in regard to every book
registered and its subsequent editions,
which no other person shall infringe. The
cases in which no infringement is deemed
to take place have also been set out, but
these are not pertinent for our
discussion. It is clear from the
definition and S.3 that an original
composition or compilation is only
protected
ig if the book
will ensure under S.5 during the lifetime
is registered and
of the author and after his death for a
further period of 50 years.
Section 8 prescribes the method of
registering and preserving a copyright by
providing that every author residing or
carrying on business in His Exalted
Highness's Dominions, may with a view to
reserve the copyright of any book, apply
for its registration to the office of the
Judicial and General Secretary, by
tendering with the application a copy of
the book and a fee of Rs.2 and stating in
the application the name or title of the
book, the author's name, his age,
occupation and residence, the date of the
first edition of the book, the name and
place of the press where it was printed,
and, if its copyright has been sold or
26 fa1076.11.odt
otherwise alienated to any person, the name
of such person, and on these particulars
being furnished the Judicial Secretary who
is required to maintain a register in form
No.1 annexed to the Act will cause the
entry of the necessary particulars therein
and to inform the author by a Fahmaishnama
(memo of information) that the book has
been registered and cause the publication
of the fact of registration in the Jarida
is
(Gazette).
procedure of registering the transfer of a
copyright. These registers are open to
public inspection under S.10. Section 11
provides for criminal prosecution and
punishment of any person who by fraud or
misrepresentation causes an entry under
S. 8 or S. 9 to be incorrectly made in the
register. Section 12 provides for penalties
for infringement of the copyright.
A plain reading of the several
provisions of the Act, to which we have
already referred, leaves no doubt in our
minds that a copyright in a book or drawing
is only secured if it is an original
compilation and has been duly registered
according to the provisions of the Act.
Sri Madhava Reddy, attempted to persuade us
that a person has an inherent copyright in
an original composition or compilation
without the necessity of its registration
and that registration is only meant as a
conclusive proof of that right. Whatever
may be the position in what was British
India, this argument is not warranted by
the clear and specific provisions of the
Hyderabad Act which makes registration a
work.
condition of acquiring a copyright in any
The definition section cannot by
itself give any protection unless that is
read with S.3 which gives protection only
to a book which is registered.
Apart from the registration of the
book, no right is conferred on an author,
but once it is registered, the author is
deemed to acquire property rights in the
book as set out in Section to which we
shall presently refer. The right arising
on the registration of the book can be the
subject matter of civil or criminal remedy,
so that, without it the author can have no
rights, nor remedies in spite of the fact
that his work is an original one. The
infringement of the copyright so
registered, which in Urdu is expressed as a
theft, can most appropriately be said to be
based on the moral principle, as observed
28 fa1076.11.odt
by Lord Atkinson in Macmillan and Co. v.
Cooper, AIR 1924 PC 75 dealing with S.2 of
the Copyright Act of 1911 as resting on the
eighth commandment Thou shalt not steal.
A person whose copyright is protected
cannot only have recourse to criminal
Courts but also sue in a civil Court under
S. 20 to obtain possession of such copies
infringing his right which is deemed to be
a right of property or cause them to be
destroyed or obtain an injunction or call
for an account thereof. This remedy as is
evident from explanation to S.20 is not an
alternative remedy, but is an addition to
the remedy which he may have in criminal
Courts, for, the compensation if any
awarded to him by any criminal Court is to
be taken into consideration in the civil
Court.
In the case of Brundaban Sahu...Versus...
B. Rajendra Subudhi, reported in AIR 1986 Orissa 210,
a Single Judge of Orissa High Court (G.B. Patnaik J.)
held upon going through the provisions of Copyright
Act 1957 and the scheme there under that registration
was mandatory for action for infringement under the
Copyright Act, 1957. Then came the Full Bench decision
of the Madhya Pradesh High Court in the case of K.C.
29 fa1076.11.odt
Bokadia and another...Versus...Dinesh Chandra Dubey,
reported in 1999 (1) M.P.L.J. 33 by which they
overruled the Division Bench judgment reported in AIR
1970 Madhya Pradesh 261 (Supra). The Full Bench held
in the first place that the said Division Bench
decision in AIR 1970 Madhya Pradesh 261 (Supra) was
obiter dicta as the issue for determination before the
Division Bench was never about the optional or
mandatory/compulsory registration and secondly, they
held that the scheme of the Copyright Act, 1957
nowhere shows or mandates compulsory registration and
that the Full Bench would like to agree with the
decisions recorded by the Calcutta, Madras, Allahabad,
Kerala and Delhi High Court but to differ with Orissa
High Court. In the case of R. Madhavan...Versus...S.K.
Nayar, reported in AIR 1988 Kerala 39 a Division Bench
held after agreeing with the view taken by Calcutta
and Allahabad High Court and dissenting with the view
taken by Division Bench of Madhya Pradesh High Court
in the case of M/s. Mishra Bandhu Karyalaya and
others...Versus...Shivratanlal Koshal (Supra) as
under :
Court had occasion to consider this question
in Kumari Kanaka v Sundararajan, 1972 Ker LR
536. In the above decision, this court took
the view that registration of the work under
the Act is not compulsory and that
registration is not a condition precedent for
maintaining a suit for damages for
infringement of copyright.
22. The English Copyright Act of
1862 expressly provided that no proprietor of
any such copyright shall be entitled to the
benefit of that Act until the same has been
registered. This provision was however
repealed by the English Copyright Act 1911
and therefore the registration is not a
condition precedent for action against
infringement even in England now.
23. Sections 44 and 45 of the Act
is only an enabling provision and the
provisions contained therein do not affect
common law right to sue for infringement of
the copyright. In the circumstances, we are
of the view that AIR 1970 Madh. Pra.261 has
been wrongly decided. We therefore agree with
the learned counsel for the appellant that
the suit is not bad for non-registration of
the copyright by the plaintiff in the instant
case.
decision that issue about registration did not fall
for consideration as in that case trial Court had not
said anything about registration. That apart there
appears to be no decision of the Bombay High Court
directly on this point.
12. In the above background, this Court is
required to decide as to whether registration of
copyright is compulsory in order to invoke the
provisions of the copyright act or remedies provided
there under for a person who alleges infringement of
copyright under the Act.
13. Keeping in mind the entire scheme of the Act
and the provisions of the copyright act, I have
herewith undertaken this exercise. Chapter-II of the
Act provides for establishment of copyright office and
copyright board. Chapter-III relates to copyright.
Section 13 in this Chapter deals with literary etc.
cinematograph and sound recording works but does not
32 fa1076.11.odt
deal with any work relating to computer or
computerized programme. section 14 (1) (a) and (b),
however, and in particular in relation to computer
programme reads thus :
Section 14(1) For the purposes of
this Act, copyright means the exclusive
right, subject to the provisions of this
Act, to do or authorise the doing of any
of the following acts in respect of a work
or any substantial part thereof, namely :-
(a) in the case of a literary,
dramatic or musical work, not being a
computer programme,-
(i) to reproduce the work in any
material form including the storing of it
in any medium by electronic means;
(ii) to issue copies of the work to
the public not being copies already in
circulation;
(iii) to perform the work in public,
or communicate it to the public;
(iv) to make any cinematograph film or
sound recording in respect of the work;
(v) to make any translation of the
work;
(vi) to make any adaptation of the
work;
translation or an adaptation of the work,
any of the acts specified in relation to
the work in sub-clauses (i) to (vi);
(i) to do any of the acts specified in
clause (a);
(ii) to sell or give on commercial
rental or offer for sale or for commercial
rental any copy of the computer programme:
Provided that such commercial rental
does not apply in respect of computer
programmes where the programme itself is
not the essential object of the rental.
14. Relevant portion of Section 17 and 21 read
thus :
Section 17. First owner of
copyright.- Subject to the provisions of
this Act, the author of a work shall be
the first owner of the copyright therein:
Provided that -
Section 21. Right of author to
relinquish copyright. - (1) The author of
a work may relinquish all or any of the
34 fa1076.11.odt
rights comprised in the copyright in the
work by giving notice in the prescribed
form to the Registrar of Copyrights and
thereupon such rights shall, subject to
the provisions of sub-section (3), cease
to exist from the date of the notice.
Copyrights shall cause it to be published
in the Official Gazette and in such other
manner as he may deem fit.
(3) The relinquishment of all or
any of the rights comprised in the
copyright in a work shall not affect any
rights subsisting in favour of any person
on the date of the notice referred to in
sub-section (1).
15. Section 17 of the Copyright Act, thus,
provides for first owner of the copyright, while
Section 21 of the Copyright Act provides for right of
author to relinquish copyright whereupon the said
relinquishment is published in the official gazette by
the Registrar. Chapter-V provides for term of
copyright. Chapter-V provides for licences given by
owners of copyright. It enables the owner of the
35 fa1076.11.odt
copyright to grant licences to others so also for
termination of licences. Chapter-X relates to
registration of copyright. Section 44 reads thus :
Section 44. Register of
Copyrights.- There shall be kept at the
Copyright Office a register in the
prescribed form to be called the Register
of Copyrights in which may be entered the
names or titles of works and the names
and addresses of authors, publishers and
owners of copyright and such other
particulars as may be prescribed.
16. It provides for keeping a register in the
prescribed form to be called as register of copyrights
in which names and titles of owners of copyright and
other particulars would be entered. The word 'may'
used in this Section 44 casts a duty on the Registrar
to make entries if everything is in order.
17. Section 45 reads thus :
Section 45. Entries in Register
of Copyrights.- (1) The author or
publisher of, or the owner of or other
person interested in the copyright in, any
work may make an application in the
36 fa1076.11.odt
prescribed form accompanied by the
prescribed fee to the Registrar of
Copyrights for entering particulars of the
work in the Register of Copyrights:
Provided that in respect of an
artistic work which is used or is capable
of being used in relation to any goods,
the application shall include a statement
to that effect and shall be accompanied by
Marks
a certificate from the Registrar of Trade
referred to in section 4 of the
Trade and Merchandise Marks Act, 1958 (43
of 1958), to the effect that no trade mark
identical with or deceptively similar to
such artistic work has been registered
under that Act in the name of, or that no
application has been made under that Act
for such registration by, any person other
than the applicant.
(2) On receipt of an application in
respect of any work under sub-section (1),
the Registrar of Copyrights may, after
holding such inquiry as he may deem fit,
enter the particulars of the work in the
Register of Copyrights.
18. Section 45 (2) thus provides for holding of
an enquiry, if necessary by Registrar for making
37 fa1076.11.odt
entries.
19. Section 47 reads thus :
Section 47. Form and inspection
of register.- The Register of Copyrights
and indexes thereof kept under this Act
shall at all reasonable times be open to
inspection, and any person shall be
entitled to take copies of, or make
extracts from, such register or indexes
on payment
ig of such fee and subject to
such conditions as may be prescribed.
20. Section 48 provides that register of
copyright shall be a prima facie evidence of
particulars entered therein.
21. Section 50-A is an important provision. It
reads thus :
Section 50-A. Entries in
the Register of Copyrights, etc., to be
published.- Every entry made in the
Register of Copyrights or the particulars
of any work entered under section 45, the
correction of every entry made in such
register under section 49, and every
rectification ordered under section 50,
shall be published by the Registrar of
Copyrights in the Official Gazette or in
38 fa1076.11.odt
such other manner as he may deem fit.
22. section 50-a thus shows that public at large
would come to know about every entry made in the
register of copyrights or particulars entered in
Section 45 after its publication and it would be
deemed that they are known to the public at large
after publication. Chapter 9 thus provides for
infringement of copyright.
23. Section 51 reads thus :
Section 51. When copyright
infringed.- Copyright in a work shall be
deemed to be infringed -
under this Act or in contravention of the
conditions of a licence so granted or of
any condition imposed by a competent
authority under this Act-
(i) does anything, the exclusive
right to do which is (by this Act)
conferred upon the owner of the copyright,
or
39 fa1076.11.odt
(ii) permits for profit any place
to be used for the communication of the
work to the public where such communication
constitutes an infringement of the
copyright in the work, unless he was not
aware and had no reasonable ground for
believing that such communication to the
public would be an infringement of
copyright; or
(b)
ig when any person -
(i) makes for sale or hire, or sells
or lets for hire, or by way of trade
displays or offers for sale or hire, or
(ii) distributes either for the
purpose of trade or to such an extent as to
affect prejudicially the owner of the
copyright, or
(iii) by way of trade exhibits in
public, or
(iv) imports (***) into India,
any infringing copies of the work:
Provided that nothing in
sub-clause (iv) shall apply to the import
of one copy of any work for the private and
domestic use of the importer.
work in the form of a cinematograph film
shall be deemed to be an infringing copy.
24. Perusal of Section 51 clearly shows that it
shall be deemed that there shall be infringement of
the copyright when any person does anything, the
exclusive right to do is conferred upon the owner of
the copyright by the Copyright Act or any person makes
sale of copies of such work by infringement of the
copyright in the said work. It is thus clear from the
reading of Section 51 that infringement shall be
deemed when exclusive right to do of the owner of the
copyright is utilized by some other person viz. the
infringer. Now unless such person (the infringer)
knows that there is any particular owner of the
copyright in India or that such owner of copyright has
registered his work under Section 44 of the Act before
he did, attributing infringement by him or on his part
intentionally or unintentionally, would be an
preposterous. Such a person who is infringing the
copyright in a work must be deemed to have knowledge
about the owner of the copyright and such knowledge
cannot be attributed unless the provisions of Chapter
41 fa1076.11.odt
10 regarding registration of copyright, publication
thereof etc. are complied with. Otherwise a person who
is innocent can in that event be easily brought in the
net of infringement under civil law or criminally,
which can never be the intention of the legislature.
Thus, reading of Section 51 which defines infringement
of right conferred by this Act, with Section 45 (1)
and the word 'may' therein to my mind means; if a
owner of a copyright wants to invoke the provisions of
this Act for enforcing civil and criminal nature of
remedies before the special forum, namely the District
Judge rather than a normal civil Court, he must have
the registration. At this stage, it is necessary to
reproduce Section 62 of the Copyright Act, which reads
thus :
Section 62 (1). Every suit or
other civil proceeding arising under this
Chapter in respect of the infringement of
copyright in any work or the infringement
of any other right conferred by this Act
shall be instituted in the district Court
having jurisdiction.
Procedure, 1908 (5 of 1908), or any other
law for the time being in force, include a
district Court within the local limits of
whose jurisdiction, at the time of the
institution of the suit or other
proceeding, the person instituting the suit
or other proceeding or, where there are
more than one such persons, any of them
actually and voluntarily resides or carries
on business or personally works for gain.
It is clear that a Special Forum at the
level of the district Court to try a suit which
otherwise would have been triable by ordinary Civil
Court has been provided, if a suit is brought under
the provisions of this Act. Further an additional
ground over and above Section 20 of the Code of Civil
Procedure has been provided. Provision for
registration is to regulate the business and for the
benefit of registered owner as well as public at large
lest there should be any infringement attracting
Criminal and Civil liability. As to the scope of
Section 62, in the case of Exphar Sa and
another...Versus...Eupharma Laboratories Ltd. and
43 fa1076.11.odt
another, reported in 2004 (3) Supreme Court Cases
688, the Apex Court in paragraph nos.12 and 13 stated
thus :
jurisdiction for the purposes of Section 62
is wider than that of the court as
prescribed under the Code of Civil
Procedure, 1908. The relevant extract of
the report of the Joint Committee published
in the Gazette of India dated 23-11-1956
which preceded and laid the foundation for
Section 62 (2) said :
In the opinion of the
Committee many authors are deterred
from instituting infringement
proceedings because the court in
which such proceedings are to be
instituted is situated at a
considerable distance from the
place of their ordinary residence.
the new sub-clause (2) accordingly
provides that infringement
proceedings may be instituted in
the District Court within the local
limits of whose jurisdiction the
person instituting the proceedings
44 fa1076.11.odt
ordinarily resides, carries on
business etc.
13. It is, therefore, clear that the
object and reason for the introduction of
sub-section (2) of Section 62 was not to
restrict the owners of the copyright to
exercise their rights but to remove any
impediment from their doing so. Section 62
(2) cannot be read as limiting the
jurisdiction of the District Court only to
cases where the person instituting the suit
or other proceeding, or where there are
more than one such persons, any of them
actually and voluntarily resides or carries
on business or presently works for gain. It
prescribes an additional ground for
attracting the jurisdiction of a court over
and above the normal grounds as laid down
in Section 20 of the Code.
If he does not want to register the
copyright, he may omit to do so; but he will not be
entitled to seek remedy under this Act for want of
registration of his copyright. He may have the remedy
elsewhere. At this stage, it is necessary to notice
the provisions of Chapter 13, which deals with
offences. Section 63 reads thus :
45 fa1076.11.odt
Section 63. Offence of infringement
of copyright or other rights conferred by
this Act.- Any person who knowingly
infringes or abets the infringement of-
(a) the copyright in a work, or
(b) any other right conferred by this
Act (except the right conferred by section
53-A)shall be punishable with imprisonment
for a term which shall not be less than
six months but which may extend to three
years and with fine which shall not be
less than fifty thousand rupees but which
may extend to two lakh rupees:
Provided that where the infringement
has not been made for gain in the course
of trade or business the Court may, for
adequate and special reasons to be
mentioned in the Judgment, impose a
sentence of imprisonment for a term of
less than six months or a fine of less
than fifty thousand rupees.
Explanation. - Construction of a
building or other structure which,
infringes or which, if completed, would
infringe the copyright in some other work
shall not be an offence under this
section.
46 fa1076.11.odt
25. Sections 63-B and 64 are relevant for our
purpose, which read thus :
Section 63-B. Knowing use of
infringing copy of computer programme to be
an offence.- Any person who knowingly
makes use on a computer of an infringing
copy of a computer programme shall be
punishable with imprisonment for a term
which shall not be less than seven days but
which may extend to three years and with
fine which shall not be less than fifty
thousand rupees but which may extend to two
lakh rupees :
Provided that where the computer
programme has not been used for gain or in
the course of trade or business, the Court
may, for adequate and special reasons to be
mentioned in the judgment, not impose any
sentence of imprisonment and may impose a
fine which may extend to fifty thousand
rupees.
Section 64. Power of police to seize
infringing copies.- (1) Any police officer,
not below the rank of a sub-inspector, may,
if he is satisfied that an offence under
section 63 in respect of the infringement
of copyright in any work has been, is being
or is likely to be, committed, seize
without warrant, all copies of the work,
and all plates used for the purpose of
47 fa1076.11.odt
making infringing copies of the work,
wherever found, and all copies and plates
so seized shall, as soon as practicable, be
produced before a Magistrate.
(2) Any person having an interest in
any copies of a work (or plates) seized
under sub-section (1) may, within fifteen
days of such seizure, make an application
to the Magistrate for such copies or plates
being restored to him and the Magistrate,
after
ighearing the applicant
complainant and making such further inquiry
and the
as may be necessary, shall make such order
on the application as he may deem fit.
26. Reading of the above penal provisions of
Sections 63, 63-B and 64 of the Copyright Act clearly
show that a person knowingly making use of a computer
by infringing copy of a computer programme shall be
criminally liable. It is well settled that provisions
relating to penal provisions are required to be
interpreted strictly. Now if there is no registration
of copyright by its owner and such owner of a
copyright is not known to the infringer due to non-
registration of the copyright he still would be held
criminally liable under these provisions. To make a
48 fa1076.11.odt
person liable criminally, it will have to be shown
that such a person was fully knowing about the owner
of the copyright and that he indulged in infringing
the said copyright despite knowing the ownership
thereof. If registration is not made and published in
the official gazette such infringer cannot be expected
to be aware nor can he be attributed knowledge about
the ownership of the copyright of a particular
copyright owner and in that event the criminal Court
would not be able to convict such a person. That may
lead to chaotic situations. Similarly, reading of
Section 64 regarding power of police to seize shows
that police officer will have to get himself satisfied
that a particular person (complainant) is the owner of
copyright and he will be so satisfied if such a
copyright is registered. When both the complainant and
the alleged infringer claim that their product was
launched first and that their copyright work was made
first, in the absence of registration under Section 44
of the Act, how the police officer will be satisfied
to proceed to take cognizance. The police officer in
that case would not be able to move an inch to effect
seizure of the alleged infringing copies. After all
49 fa1076.11.odt
the provision regarding seizure is another serious
act, which infringes upon the privacy of a person.
Hence, the word 'may' used in Section 45 of the Act
will have to be read as 'shall' having regard to the
scheme of the Act of which all material provisions
have been quoted and analyzed by me. I am therefore
inclined to agree with and to follow the
interpretation made by the Division Bench of Andhra
Pradesh High Court in AIR 1960 A.P. 415 and Orissa
High Court in AIR 1986 Orissa 210.
27. Thus careful survey of the above provisions
of the Copyright Act, 1957 to my mind clearly denotes
that in the absence of registration under Section 44
of the Copyright Act by the owner of the copyright it
would be impossible to enforce the remedies under the
provisions of the copyright act against the infringer
for any infringement under Section 51 of the Copyright
Act. Thus, I answer point no.1 in the affirmative.
28. As to point no.2 (a) and (b) :- In order to
answer this point, it will be necessary to have a look
at the provisions of Chapter XII of the Act. The
heading of this Chapter is Civil Remedies .
copyright . Section 55 reads thus :
copyright in any work has been infringed,
the owner of the copyright shall, except
as otherwise provided by this Act, be
entitled to all such remedies by way of
injunction, damages, accounts and
otherwise as are or may be conferred by
law for the infringement of a right:
Provided that if the defendant
proves that at the date of the
infringement he was not aware and had no
reasonable ground for believing that
copyright subsisted in the work, the
plaintiff shall not be entitled to any
remedy other than an injunction in
respect of the infringement and a decree
for the whole or part of the profits made
by the defendant by the sale of the
infringing copies as the Court may in the
circumstances deem reasonable.
work, a name purporting to be that of the
author or the publisher, as the case may
be, appears on copies of the work as
51 fa1076.11.odt
published, or, in the case of an artistic
work, appeared on the work when it was
made, the person whose name so appears or
appeared shall, in any proceeding in
respect of infringement of copyright in
such work, be presumed, unless the
contrary is proved, to be the author or
the publisher of the work, as the case
may be.
(3) The costs of all parties in any
proceedings in respect of the
infringement of copyright shall be in the
discretion of the Court.
29. Perusal of Section 55 of the Act shows that
the owner of the copyright is entitled to claim the
remedy of injunction and damages.
30. Section 60 of the Copyright Act, 1957 reads
thus :
Section 60. Remedy in the case of
groundless threat of legal proceedings. -
Where any person claiming to be the owner
of copyright in any work, by circulars,
advertisements or otherwise, threatens,
any other person with any legal
proceedings or liability in respect of an
alleged infringement of the copyright, any
52 fa1076.11.odt
person aggrieved thereby may,
notwithstanding anything contained in
section 34 of the Specific Relief Act,
1963 (47 of 1963) institute a declaratory
suit that the alleged infringement to
which the threats related was not in fact
an infringement of any legal rights of the
person making such threats and may in any
such suit -
(a) obtain an injunction against the
continuance of such threats; and
(b) recover such damages, if any, as
he has sustained by reason of such
threats:
Provided that this section shall not
apply if the person making such threats,
with due diligence, commences and
prosecutes an action for infringement of
the copyright claimed by him.
31. Perusal of Section 60 of the Act clearly
shows that a person who has been threatened with any
legal proceeding or liability in respect of alleged
infringement of copyright can institute a suit under
this provision. In the instant case, it is seen from
53 fa1076.11.odt
the body of the plaint that the appellant averred that
the respondents started writing letters to the
customers of the appellant that his product was not
user friendly and was pirated one and thus started
affecting the image of the appellant. Learned Counsel
for the respondents urged that the pleadings in the
plaint filed by the appellant do not give specific
dates or instances of various aspects. The Court below
has also in paragraph 12 of the judgment impugned made
the same criticism. But that is not correct. In fact,
there are pleadings required to constitute cause of
action. It may be true that these pleadings are not
verbose, or with exact date and time. But in my
opinion, at the stage of evidence, the appellant is
entitled to give details and it is not necessary to
plead the evidence in the suit. In paragraph no.10,
the appellant stated that he introduced the software
in question in the year 2007 and the said fact was
very well known to the defendants but then thereafter
he started threatening the appellant with criminal
action etc.. It is also a matter of record that the
FIR was lodged by the respondents with Police Station
at Nasik on 3.2.2010. FIR was lodged, seizure was made
54 fa1076.11.odt
by the police and now even chargesheet has been filed.
Lodgment of FIR, seizure carried out by the
police against the appellant and finally filing of the
chargesheet is nothing but the initiation of legal
proceeding and criminal liability against the
appellant for the alleged infringement of the
copyright of the respondents. The Court below recorded
a self-contradictory finding in paragraph 11 of its
order. It says that without lodging FIR, no criminal
proceeding under the Act could be initiated, but
suddenly with wrong application of rule of ejusdem
generis it held that lodgment of FIR would not
constitute 'threat' to initiate legal proceedings or
liability. When FIR is lodged, it is certainly a step
to set up or set the wheels of criminal law in motion.
That is done obviously with a view to initiate
criminal proceedings or criminal liability. The
learned District Judge fell in grave error in holding
that lodgment of FIR is not a legal proceeding or a
legal liability and that therefore there was no threat
in the eye of law within the meaning of Section 60 of
the Act. Here it would be profitable to quote
paragraph no.15 from the Apex Court judgment in the
55 fa1076.11.odt
case of Exphar Sa and another...Versus...Eupharma
Laboratories Ltd. and another, reported in 2004 (3)
Supreme Court Cases 688.
and-desist notice was sent to Appellant 2
at its office in New Delhi and in that
notice it was alleged that Appellant 2 had
infringed the copyright of Respondent 2 to
the trade mark Maloxine . Now a cease-and-
desist notice means that the recipient is
alleged to have infringed the rights of the
sender of the notice to the copyright and
as a result of such alleged infringement,
the recipient is liable to institution of
civil and/or criminal proceedings. It is a
threat. The plaint says that this threat
was received within the jurisdiction of the
High Court, a fact which was sufficient to
invoke the jurisdiction of that Court. The
respondents' reliance on the decision of
this Court in Oil and Natural Gas
Commission v. Utpal Kumar Basu and Union of
India v. Adani Exports Ltd. is inapposite.
Those decisions held that the service of a
mere notice may not be sufficient to found
jurisdiction unless such notice formed an
integral part of the cause of action. But a
56 fa1076.11.odt
cease-and-desist notice in a copyright
action cannot, particularly in view of
Section 60 of the Act, be termed to be a
mere notice. Such a threat may give rise
to the right to institute a suit to counter
such threat and to ask for relief on the
ground that the alleged infringement to
which the threat related was not in fact an
infringement of any legal right of the
person making such threat.
I, thus, answer point no.2 (a) and (b) both
in the affirmative.
32. As to point no.3 : - In the instant case,
earlier to 3.2.2010 the respondent was propagating
against the business interest of the appellant in the
market about the product of the appellant and was also
threatening the appellant with legal proceedings as
averred in paragraph 10 of the plaint. Since according
to the appellant in fact, he did not infringe any of
the legal rights of the respondents, the alleged owner
of the copyright but still he was being threatened, he
filed a suit under Section 60 of the Act. Section 60
of the Act is the special provision for a person like
the appellant who is under threat of initiation of
57 fa1076.11.odt
legal proceeding or criminal liability when the
alleged infringer in fact feels that he did not
infringe any of the rights of the alleged owner of the
copyright. Section 55 of the Act provides for remedy
only to the owner of the copyright and except Section
60 there is no other provision for the alleged
infringer, who is of the firm opinion that he did not
infringe any copyright. Thus, remedy under Section 60
has been provided by the Copyright Act so that person
like the appellant should not be without any remedy.
This goes with elementary principle ubi jus ibi
remedium. Indeed, it is a vain thing to imagine a
right without a remedy, for want of right and want of
remedy are reciprocal. The appellant has a right to
protect his interest by showing that the threat
imparted by the respondents by lodging FIR, by getting
the seizure done through police machinery is
groundless since the appellant did not infringe any of
the legal rights of the respondents. The only remedy
for the appellant in that event is under Section 60 of
the Act. Now I shall consider the next question about
the effect of filing of suit under Section 55 of the
Act by the respondents in Nasik Court on 29.3.2010
58 fa1076.11.odt
i.e. after Section 60 suit was filed on 3.3.2010.
Reading of the proviso with main Section 60 of the
Act, which is in aid of the main Section, to my mind
shows that Section 60 cannot be taken recourse to if
the alleged owner of the copyright exercises his
alleged right first in point of time under Section 55
of the Copyright Act. If such alleged owner institutes
proceeding under Section 55 of the Act with due
diligence i.e. before the 'infringer' files Section 60
suit, the alleged infringer shall not be entitled to
file a suit under Section 60 of the Act due to
prohibition provided by the said proviso to
Section 60. However, if the alleged infringer
exercises his right to show that threat given to him
is groundless and therefore, institutes civil
proceeding under Section 60 of the Act before filing
of the suit under Section 55 of the Act by the alleged
owner, he can continue to prosecute suit under Section
60 of the Act since in that case the suit under
Section 55 was not earlier filed with due diligence.
The suit filed by the appellant under Section 60
earlier in point of time than the suit filed by the
respondent under Section 55 would not be therefore hit
59 fa1076.11.odt
because of filing of subsequent suit under Section 55
of the Act later by the respondents. Any
interpretation contrary to the above would result into
doing harm to the main Section 60 and even the main
provision will become otiose. Where the alleged
'infringer' who believes that groundless threats of
legal proceedings are imparted to him for months
together, can he be asked to wait at the mercy of the
alleged owner of the Copyright to file a suit under
Section 55 of the Act? Similarly, if the savvy
copyright owner as a counter-blast files a suit
under Section 55 of the Act after filing of the suit
under Section 60 of the Act by the alleged infringer
with a view to make earlier suit infructuous, it will
in my opinion, making the remedy provided under main
Section 60 nugatory or meaningless. The only function
of the proviso to Section 60 is to prevent filing of
suit by the alleged infringer when owner of the
copyright has already and earlier filed a suit under
Section 55 of the Act. In this case, suit under
Section 60 was filed on 3.3.2010 while suit under
Section 55 was filed on 29.3.2010. In that view of the
matter, I am inclined to hold that the suit filed by
60 fa1076.11.odt
the plaintiff under Section 60 does not become
infructuous. Hence, I answer point no.3 in the
negative.
33. As to point no.4 : - On the question of
grant of injunction by this Court, learned Counsel for
the respondents vehemently opposed issuance of any
order of temporary injunction even for a limited
period till the date of hearing on Exh.5 before the
District Judge. Even in the written note of argument
there is opposition to that effect. However, I do not
agree with the learned Counsel for the respondents for
the following reasons.
The suit under Section 60 of the Act was
filed on 3.3.2010 and even the status quo order was
obtained by the appellant in the District Court in
that suit. The respondents, however, came with an
application under Order VII Rule 11 of the Code of
Civil Procedure for rejection of the plaint. The
plaint was rejected and the said order was put to
challenge in First Appeal No.667/2011 before this
Court which was decided on 17.9.2011 and the said
order with the consent of the learned Counsel for the
parties was set aside and the District Judge was again
61 fa1076.11.odt
asked to decide the question in a proper manner, which
he decided by the impugned order on 10.10.2011. It may
be true that the appellant did not apply for
injunction in the second round when the matter was
remanded by this Court to the trial Court but then
this Court had made the matter time bound and
therefore, one can understand that filing of temporary
injunction application would have delayed the main
matter. Be
ig that as it may, the question of
jurisdiction and rejection of plaint have now been
decided under this judgment in favour of the
appellant. That apart, the respondents though were
given enough opportunity to show the factual
infringement of copyright but that was not shown by
the respondents and on the contrary, it was found that
the copyright of the respondents itself was not
registered. It is clear that the respondents have been
guilty of not allowing detailed hearing on Exh.5
application for temporary injunction but the
respondents indulged in taking objections on the
question of jurisdiction and prayed for rejection of
plaint under Order XII Rule 11 of the Code of Civil
Procedure for no justifiable reasons and on a totally
62 fa1076.11.odt
ill-founded and unwarranted legal advice. There is no
reason why the appellant should suffer for the
frivolous objections about jurisdiction taken by the
respondents. At any rate, following tests by the Apex
Court in the case of R.G. Anand...Versus...M/s. Delux
Films and others, reported in AIR 1978 Supreme Court
1613 have also been considered by me and found no
material infringement as claimed from the pleadings
and documents and even in the unregistered disc of the
respondent.
1. 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.
similarities are bound to occur. In such a
case the courts should determine whether
or not the similarities are on fundamental
or substantial aspects of the mode of
expression adopted in the copyrighted
work. If the defendant's work is nothing
63 fa1076.11.odt
but a literal imitation of the copyrighted
work with some variations here and there
it would amount to violation of the
copyright. In other words, in order to be
actionable the copy must be a substantial
and material one which at once leads to
the conclusion that the defendant is
guilty of an act of piracy.
3. 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.
4. 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.
are clearly incidental no infringement of
the copyright comes into existence.
amounts to an act of piracy it must be
proved by clear and cogent evidence after
applying the various tests laid down by
the case law discussed above.
7. Where, however, the question is
of the violation of the copyright of stage
play by a film producer or a Director the
task of the plaintiff becomes more
difficult to prove piracy. It is manifest
broader
that unlike a stage play a film has a much
perspective, wider field and a
bigger background where the defendants can
by introducing a variety of incidents give
a colour and complexion different from the
manner in which the copyrighted work has
expressed the idea. Even so, if the viewer
after seeing the film gets a totality of
impression that the film is by and large a
copy of the original play, violation of
the copyright may be said to be proved.
34. That apart, even prima facie it has not been
shown by the respondents that their product was
registered under Copyright Act. To say that
respondents would show the same later on during the
course of trial and hence, no injunction should be
granted, would be doing injustice to the appellant,
65 fa1076.11.odt
who has been marketing his product since the year 2007
and has now been suddenly prevented from doing so.
Even the offence has been registered against the
appellant and his property has been seized.
35. In my opinion, application Exh.5 is required
to be heard in details by the District Judge, who
never undertook the said exercise but then the
appellant has made out a strong prima facie case in
his favour for an order of injunction till Exh.5 is
decided by the District Judge at least now. In that
view of the matter, I had expressed in the open Court
and which I do here that the order of temporary
injunction should operate for a period of two months
only and within that period Exh.5 should be decided by
the District Judge by giving full opportunity to both
sides. I follow the same course and therefore, I am
inclined to grant temporary injunction against the
respondents and in favour of the appellant only for a
period of two months. The balance of convenience is,
obviously in the above background, in favour of the
appellant. Hence, I answer point no.4 in the
affirmative.
frivolous objection and claimed rejection of plaint
and thus resulting into two rounds of litigation
before this Court. Hence, the appellant will have to
be compensated by an order of costs. I direct the
respondents to pay costs of Rs.30,000/- (Rupees Thirty
Thousand Only) to the appellant within a period of
four weeks.
37.
The upshot of the above discussion is that
this appeal will have to be partly allowed. Hence, I
make the following order.
O R D E R
(i) First Appeal No.1076/2011 is partly
allowed with costs quantified at Rs.30,000/- (Rupees
Thirty Thousand Only) payable by the respondents to
the appellant within a period of four weeks from
today.
(ii) There shall an order of temporary
injunction against the respondents in terms of prayer
clause (2) and (3) of application Exh.5 in Special
Civil Suit No.3/2010 for a limited period of two
months from today.
application (Exh.5) for temporary injunction within a
period of two months from today.
(iv) Parties to appear before the trial
Court on 16th March, 2012.
JUDGE
Advocate Shri Deshmukh prays for stay of the
judgment for a period of six weeks.
Advocate Shri Vyas opposes the request.
Prayer for stay of the judgment is rejected
for the reasons stated in the judgment itself.
JUDGE
ssw