In the instant ease, the Plaintiff has already filed an application /complaint 19) under Section 31(1)(b) of the Act and thus, invoked the jurisdiction of the Board for grant of compulsory license. No doubt, the said application is pending may be for the last more than two years. However, it is the exclusive jurisdiction of the Board to grant such a license, It is well settled, unless such a license is granted, the Plaintiff has no right to broadcast in the repertoire of the Defendant and if the Plaintiff does so without obtaining the license, such an act would fall within the ambit of Section 51 of the Act i.e. infringement of the Copyright and consequently, it would be an offence under Section 63 of the Act. Any person knowingly infringes or abets the infringement of copyrights in a work 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 be less than fifty thousand rupees but which may extend to two lakh rupees. The Act is a special statute and it is a self-sufficient piece of legislation. Any order passed by the Board under Section 31(1)(b) is appealable before this Court under Section 72 therein. The Board is headed by a retired Judge of the High Court or a person eligible to be appointed as a Judge of the High Court.
The Bench of the Board consisting at least three members and in case of different opinion, a view of majority of the members would prevail. What is prayed by the Plaintiff in the suit filed by it before the learned Trial Judge is nothing short of compulsory the license within the meaning of Section 31(1)(b) of the Act while its application for the very same purpose is pending before the Board, a statutory authority. Thus, the relief prayed for in the suit is impliedly a relief for grant of compulsory license which authority is exclusively vested with the Board. Such a relief cannot be granted by the Civil Court and therefore, in our opinion the learned Trial Judge was right in holding that the suit was not maintainable, as this Court on its original side lacks jurisdiction. The jurisdiction exclusively lies with the Board. At the same time, contentions of the Plaintiff that it has a vested right or a statutory right for a compulsory license cannot be accepted. It has a right to apply for a license under Section 31(1)(b) and in a given case, right to broadcast culminates only after such a license is granted. In a way, it is a contractual right regulated by a statutory authority and by entertaining the suit for the relief prayed for, undoubtedly, the provisions of Chapter IX, XI and XIII and other relevant provisions of the Act would be frustrated. The contentions that the Defendant has been dictating terms or it cannot be allowed to dictate the terms and therefore, the law must step in to the rescue of the Plaintiff cannot be a ground to entertain the suit and the only remedy available to the Plaintiff as per the scheme of the Act is to prosecute its application pending before the Board for a compulsory license. It cannot file a suit for any interim arrangements pending in such an application and the Civil Court will have no jurisdiction to entertain such applications. Seeking such a remedy is to by-pass regulatory provisions as well as the penal provisions as are set out in Chapter XI and XIII of the Act and the Civil Court cannot have such a jurisdiction to grant something which would frustrate the provisions of a statute.
The observations made by the Apex Court in the case of Entertainment Network (India) Limited (Supra) and as reproduced herein above cannot be read as to create a vested right in favor of the Plaintiff or similarly placed the Applicant / Complainant to claim an interim compulsory license by filing a suit before the Civil Court. What is not provided by a Statute which is a complete code of itself, cannot be read in the judgment of the Supreme Court. The jurisdiction of the Civil Court cannot be allowed to be invoked to short circuit the statutory process of licensing and therefore, the Court would lack in its jurisdiction to entertain the suit. In that view of the matter, the learned trial Judge has stated that the relief prayed in the suit was innocuous or may be it is innovative.
Infringement of Copyright
The primary infringement of the copyright under Section 51 (a) of the Act is the violation of the rights conferred upon the owner of the copyright. Infringement of rights under the Act has thus to be seen from the perspective of the rights of the owner and not those of the licensee. There is fine distinction between the limited rights of the licensee and those of the owner. There is another reason for coming to this prima facie opinion. The acts of the defendants are infringing in character and they are not merely confined to doing the acts of the owner of the copyright without permission or license. The doing of unauthorized acts of the owner of the copyright is only one kind of infringement. The other kind of infringement would be to violate the conditions of the licensee and commission of acts going beyond the fetters imposed by the license. This can be better understood by perusing Section 51 which reads as under:
When copyright infringed Copyright in a work shall be deemed to be infringed-
(a) When any person, without a licence granted by the owner of the Copyright or the Registrar of Copyrights under this Act or in so granted or of any conditions 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.
The opening word of the Section 51 categorizes the prerequisites of the infringement which are:
(a) Without a licence granted by owner of the copyright or
(b) Without the license granted by the registrar of copyrights or
(c) In contravention of the conditions of a licence so granted or
(d) Any conditions imposed by a competent authority under the act.
Infringement of copyright – Unauthorized publication of books
The provision pertaining to licensing applies, by reference Section 19 of the Act. It is evident from the above provisions (which have received wide judicial recognition) that in order to set-up a license successfully, the defendant in a suit has to rely upon a written document. That the parties had entered into a written document or documents evidencing the plaintiff’s arrangement towards licensing of publications of its Indian re-print to the defendant is not in dispute. The plaintiff alleges (and the defendant does not deny) that 24 such Agreements existed with a specified life period of 5 years. The plaintiff’s contention that the tenure of the agreements ended in July 2003 is not rebutted. The defendant, however, rests his case upon an implied agreement whereby he was permitted (by way of practice in the trade) to continue to re-print and offer for re-sale publications in which the plaintiff is undeniably the copyright owner. Now the terms of Sections 19 and 19-A are specific. In the absence of a written agreement, authorizing publication or doing of such things would otherwise amount to copyright infringement, under Section 51, this cannot be a case of license. The matter can also be looked at from another perspective. In order to successfully urge a license, the defendant here relies upon certain interest correspondence exchanged with the plaintiff between May 2003 and June 2003. The material portions of such communications (the 20th June 2003 e-mail, denied by the plaintiff significantly) would reveal, on an overall consideration that at best the defendant can urge that the parties were negotiating for the possibility of an extension in respect of certain re-prints. Undoubtedly, the documents of 20.06.2003 suggests that the e-mail had held-out some kind of an assurance that in the event the plaintiff were to re-enter the Indian market in respect of certain reprints or publications, a first offer would be made to the defendant. But then, such a letter or assurance is hardly enforceable. At best it could amount to an assurance that in the event of a particular decision (to enter or re-enter Indian market with special re-prints) – the defendant could be granted a license. There is no firm assurance as is evident from absence of any discussion regarding consideration to be paid by the defendant for the license or the tenure of such agreement. In these circumstances, such assurance can at best amount to the possibility of a future offer but certainly not a concluded contract. The defendant’s contention in this regard has to fail.
The other aspect is whether the defendant can at all set-ups a counter-claim for damages on account of so-called mental agony. Having conceded that the plaintiff is the copyrights proprietor and also that certain publications (allegedly infringing material) were found in his premises, and also given the fact that criminal prosecution is pending and that the Court has taken cognizance and in view of the fact that charge sheet has also been filed in such proceedings, the claim for damages, to this Court’s mind, is untenable. At best, it is pre-mature. It needs no emphasis that any party’s right to enforce its legal remedies – to wit in this case, allegations pertaining to offences relating to Section 63 of the Copyright Act (for unauthorized sale of Indian re-prints by the defendant) are legitimate and in fact a permissible course of action in law.
The tenability of such a complaint is an entirely different aspect which the Court should not in fairness comment upon, while proceedings are pending. It is possible that the plaintiff could succeed in such proceedings. Equally, it could be possible that the defendant may be held guilty or may choose to compound the offence, if permitted in law. Yet, the fluidity of the circumstance persuades this Court to conclude that the mere filing of a complaint cannot in any circumstances be said to result in an actionable claim against the plaintiff. Any other opinion would virtually amount to penalizing a litigant who seeks recourse to the law in the assertion of his legitimate intellectual property rights. On this ground too, the counter-claim, in the opinion of the Court, does not disclose any cause of action.
So far as the third objection is concerned, it would be immediately apparent that the defendant is asserting a technicality. Nevertheless, the Court has to deal with it as it may have some bearing on the merits of the case. The first aspect pertains to the filing of the suit by an authorized person. This issue does not in any way merit consideration at this stage because what the Court is dealing with is the tenability of the counter-claim. The other aspect urged is that the plaintiff suppressed material facts pertaining to its re-organization and takeover by another company. On this aspect, the plaintiff has, in its reply, refuted the averments and filed certain documents, saying that only a part of its shareholding has been acquired by another company but that it (the plaintiff) continues to exist and is, therefore, entitled to maintain the suit. The Court sees no reason to disbelieve this. In any event, any observations made in this regard would amount to prejudging the issue if it were to fairly arise in the trial to the suit. This argument too cannot be, therefore, accepted.
In view of the above conclusions, the Court is satisfied that the counter-claim is not maintainable. As held in T. Arivandandam versus T.V. Satyapal, 1977 (4) SCC 467, the Court is under an obligation to ensure that where claims which are either barred in law or urges frivolous facts are presented before it, the Court is under an obligation to reject them at the appropriate stage. In these circumstances, the Court is satisfied that in the present case, the counter-claim is one such instance. The Counter-Claim 2147/2006 is therefore, rejected. In the circumstances, the counter claimant/ defendant shall pay the costs quantified at Rs. 50,000/- to the plaintiff within four weeks from today. At this stage, it becomes relevant also to examine that the wordings of Section 51
(a) (ii) which provide permitting “any place” for profit. The use of the words “any place” would include common public place or library or any other kind of place. The wordings do not put any embargo of the kind of the place which is required to be permitted for profit in order to establish an infringement of copyrights. But rather the wordings used in the sub section are “any place” so as to subsume physical place or place at the internet or web space. The reference is invited to the provisions of UK Copyright Act, 1956 which are similar in nature to Indian Copyright Act in this respect which brings more clarity on this aspect. The said provisions are reproduced hereinafter:
“Section 5 (5) The copyright in a literary, dramatic or musical work is also infringed by any person who permits a place of public entertainment to be used for a performance in public of the work, where the performance constitutes an infringement of copyrights in the work : Provided that this sub section shall not apply in a case where the person permitting the place to be so used:
(a) was not aware, and had no reasonable grounds for suspecting, that the performance would be an infringement of copyright, or
(b) Gave the permission gratuitously or for a consideration which was only nominal or (if more than nominal) did not exceed reasonable estimate of expenses to be incurred by him in consequence of the use of the place for the performance.
(6) In this section “place of public entertainment” includes any premises which are occupied mainly for other purposes, but are from time to time made available for hire to such persons as may desire to hire them for purposes of public entertainment”.
In the sharp contrast, our Indian Act which has been amended number of times i.e. in 1984, 1994, 1999 which although provided for several crucial amendments including computer programs as a subject of copyright under the head of literary work but has not provided any separate infringement by way of an apparatus under the separate head or separately and the provision relates to the facilitating infringement is the same as it stood in the 1957 Act. In absence of such amendment in the Indian Act and in view of the loosely worded provision which is “any place”, the same can be given a wider connotation so as to include the place on the internet not confining it to place of entertainment but to extend it to other places also.
The act of authorizing infringement is premised on the concept of joint tort teasers wherein the person is held liable for commission of equal wrong when there is apparent clear establishment of his involvement in the wrong along with the other person committing the same. The active participation, inducement, approval or countenance, are thus necessary ingredients of authorization may not be sine qua non for the establishment of permission of place for profit. The knowledge of the fact that the acts are going to be infringing is again different from the active participation or any kind of inducement. For more clarification about copyright or Trademark registration, kindly visit our site and feel free to contact us. Thanks for reading!!!