Author Assignment of his Literary Work 

In order to lay a claim of copyright and seek for any order of restraint against any person under the provisions of the Copyright Act, 1957 in particular, Section 17 of the Act, it is stated that the Author of a work shall be the first owner of the copyright therein. Under proviso (a) to Section 17, it is however stated that in the case of literary works made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodicals under a contract of service, the said proprietor in the absence of any agreement to the contrary will be the first owner and Author of the copyright in the work insofar as the copyright relates to the publication of the work in such a newspaper, magazine or similar periodicals.

Under Section 18 of the Act, it is stipulated that the owner of the copyright in an existing work may assign to any person such copyright either wholly or partially or subject to any limitation. Reading Sections 17 and 18 together, one who claims any copyright of a literary work by an author has to establish such conditions contained in the above said provisions, such as the employment of the author in a newspaper publication under a contract of service and assignment of the ownership of such literary work and its copyright in favor of any other person. The only other provision to ascertain the right of the appellant would therefore fall under Section 18 of the Act. As stated earlier, the right under Section 18 of the Act, can be by way of assignment of the literary work by its owner in favor of any other Person. As far as the said aspect is concerned, Mr.A.Thiagarajan, learned senior counsel appearing for the appellant would strenuously contend that such an assignment should be inferred based on the provisions contained in the Memorandum and Articles of Association of the appellant-Institution and its Rules and Regulations. As far as the said materials are concerned, Clause 2 of the Memorandum of Association contains the objects of the appellant-Institution. In Clause 2(b)(v), it is stated that the publication of books and pamphlets and other similar constructive work of copyright to be done to help the activities of the Institution and to provide for its income, a Press will be established for publishing and selling books relating to the aims and principles of the Institution. Thanthai Periyar himself was one of the signatories to the said Memorandum of Association. The said clause 2(b)(v) does not make any specific reference to either Kudiyarasu or any other literary works of Thanthai Periyar. The said Memorandum of Association came into being only in the year 1952, as the appellant-Institution based on such Memorandum of Association and Rules and Regulations came to be registered as a Society under the provisions of Societies Registration Act, (XXI of 1860) on 21.10.1952. It is relevant to keep in mind that the alleged reproduction of the literary works of author Thanthai Periyar were all the publications made by him in the Weekly Kudiyarasu prior to the year 1952 i.e. between 1925 and 1949. Therefore, in the absence of any appeal reference to the articles of Thanthai Periyar by way of published materials in the Kudiyarasu and in particular, such references in writing to the effect that it was only way of transfer of ownership in favor of the appellant-Institution, there was no scope to state based on any clause contained in the Memorandum of Association that such literary works of Thanthai Periyar were owned by the appellant-society.

The above statement of law in regard to a compilation when applied to the facts of this case, in the first place, prima facie while dealing with an application for an interim injunction of copyright, we do not find any legally acceptable material to hold that there was any original work involved in making the compilation. In fact, there is sufficient contract evidence in the form of the printed publications of the years 1925, 1926 and 1930 placed before us on behalf of the respondents to show that there were variations as between the appellant’s compilation and the respondents’ publications. Therefore, there being no prima facie strong case made out on behalf of the appellant in claiming originality in the compilation of the literary works of Thanthai Periyar, it is not safe for this Court to merely rely upon the claim made based on the alleged compilation made in the year 1983 and hold that any copyright ownership was existing in favor of the appellant in order to grant an order of interim injunction. Moreover, having regard to the statutory stipulation contained in Sections 17, 18 and 52 (1) (m) of the Copyright Act, 1957, it will not be appropriate to grant any interim injunction of copyright in favor of the appellant at this stage. It may be that the appellant will have to establish such a claim, even if it exists, at the time of trial of the suit and work out its remedy. Therefore, based on the said decision, we do not find any scope to grant the relief as prayed for.

In this context it will be worthwhile to refer to what has been stated in the ‘Glossary of Legal and Technical Terms’ in the text book of a well-known author Mr.J.A.L.Sterling called ‘World Copyright Law” Second Edition at page 985, where at pages 991 and 992 the meaning of the expressions ‘compilation’ and ‘collective work’ has been set out.

Validity of the assignment – Section 17, 18 and 19 of Copyright Act, 1957

The defendant’s counsel has merely tried to justify the stand of the defendant on all individual features rather overall combination of colors and layout. The defendant main stress was to challenge the rights claimed by the plaintiff of copyright. No justification was given by the defendant as how to hit upon packaging which his similar to the packaging of the plaintiff. It appears to the Court that in case, both packaging used by the parties are compared in meaningful manner, it can easily come to the conclusion that one is designed by placing another. From the placing used by the defendant, it is obvious that all essential features are deceptively similar to the packaging of the plaintiff. The letters used in the packaging are in the same color. Side penal and arrangements and placement of pictorial device of fire are almost similar. One fails to understand, when the defendant had so many packaging’s which were being used by the earlier in the course of its business which includes black color packaging, why the defendant has adopted and used the packaging similar to that of the plaintiff. The said conduct of the defendant cannot be called as a bonafide as the defendant is in the same trade and the defendant must be aware about the packaging of the plaintiff at the time of its adoption. I am of the considered view that in case, the Court come to the conclusion that the infringement is deliberate and intentional, then a party who is infringing the copyrights of the rightful owner normally loses its rights to challenge the validity of the titles on the basis an action is taken, the Court under these circumstances should be more positive in granting protection than in normal cases.

None of the decisions referred by the defendant is applicable to the facts of the present case, as the defendant who is a well-reputed company in the trade has failed to assign any good reasons for adopting and using the new packaging. They are not even ready to modify the packaging even for small extent, rather when the suggestion was given; they tried more in attacking the rights of the plaintiff. Justification given by the defendant is totally unacceptable to the Court as the defendant in the present case has with mala fide made a misrepresentation by using of similar packaging otherwise there was no occasion by the defendant to use the same being a well-known trademark and  trader in the market. I am of the view that as far as other contentions raised by the defendants are concerned, those issues require trial and cannot be gone into at this stage. While deciding the interim applications only prima facie view is taken from the pleadings of the parties and documents placed on record and the law settled on the subject.

Under these circumstances, the plaintiff’s application under Section 39, Rules 1 and 2 is allowed. The defendant is restrained from using the impugned packaging, the details of which are mentioned in para 9 of my order by infringing copyright of the plaintiff and to press off his goods as that of the plaintiff.

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