Nitin Sethi And Anr. vs Frontier Biscuit Factory Pvt. ...
2006 Latest Caselaw 2253 Del

JUDGMENT

Sanjay Kishan Kaul, J.

Page 3916

1. The respondent filed a suit for permanent injunction against the petitioners for restraining infringement of copyright, passing off, rendition of accounts, delivery up, etc. in respect of a mark / label 'FRONTIER'. It was alleged that the petitioners are using the mark / label 'OM FRONTIER'. The respondent claimed to be an established and reputed business organisation of manufacturing and marketing biscuits, namkeens, cakes and various other goods. Petitioner No. 1, being the proprietor of M/s. Om International, is stated to have entered into a dealership agreement with the respondent for selling the products of the respondent under the said label / mark on 26.06.2003 which agreement was terminated by the respondent vide letter dated 08.09.2005. It, however, came to the knowledge of the respondent that petitioner No. 1 had started using deceptively similar / identical trademark / label and trade-name 'OM FRONTIER' and was carrying on business under the name and style of petitioner No. 2.

Page 3917

2. The petitioners entered appearance and filed their written statement inter alia claiming that there was no similarity between the two marks / labels of 'FRONTIER' and 'OM FRONTIER'.

3. The petitioners filed an application under Section 61 of the Copyright Act, 1957 (hereinafter to be referred to as, 'the said Act') praying for impleadment of the author of the copyright. This arose on account of the fact that the respondent had filed along with the suit a certified copy of an extract from the register of copyrights dated 03.05.2005 in which the name of the respondent was shown as owner while the name of the author was stated to be of Shri Kamal Sachdeva. This application had been rejected in terms of the impugned order dated 31.07.2006.

4. Learned senior counsel for the petitioners has referred to the provisions of Section 61 of the said Act, which reads as under:

61. owner of copyright to be party to the proceeding - (1) In every civil suit or other proceeding regarding infringement of copyright instituted by an exclusive licensee, the owner of the copyright shall, unless the court otherwise directs, be made a defendant and where such owner is made a defendant, he shall have the right to dispute the claim of the exclusive licensee.

(2) Where any civil suit or other proceeding regarding infringement of copyright instituted by an exclusive licensee is successful, no fresh suit or other proceeding in respect of the same cause of action shall lie at the instance of the owner of the copyright.

5. Learned senior counsel, thus, submits that since the proceedings before the trial court are one of infringement of copyright, any proceedings instituted by the respondent would necessarily require the owners of the copyright to be imp leaded. In fact, as per Sub-section (2) of Section 61 of the said Act, no fresh proceedings would be capable of being instituted by the owner.

6. Learned senior counsel also refers to the provisions of Section 17 of the said Act in terms whereof the author of the work shall be the owner of the copyright. Learned senior counsel submits that the respondent has placed nothing on record to show as to how the respondent became owner of the copyright. Learned senior counsel submits that the assignment of copyright is provided under Section 18 of the said Act and the mode of assignment under Section 19 of the said Act. Section 21 of the said Act stipulates that the author can relinquish a copyright, but then the procedure prescribed therein has to be followed. Learned senior counsel, thus, submits that the impugned order suffers from patent error and failure of the trial court to exercise the jurisdiction vested in it by law as the author has not been imp leaded as a party.

7. Learned senior counsel for the respondent, on the other hand, has drawn the attention of this Court to Section 48 of the said Act, which reads as under:

48. Register of Copyrights to be prima facie evidence of particulars entered therein - The Register of Copyright shall be prima facie evidence of the particulars entered therein and documents purporting to be copies of any entries therein, or extracts there from certified by the Registrar of Copyrights and sealed with the seal of the Copyright Office shall be Page 3918 admissible in evidence in all courts without further proof or production of the original.

8. Learned senior counsel submits that the certificate dated 03.05.2005 filed by the respondent is prima facie evidence of the particulars entered therein which shows that it is the respondent who is the owner though Mr. Sachdeva may be the author. It is, thus, submitted that the petitioners cannot raise any issue in that behalf. It is further submitted that it is not the case of the petitioners that they have acquired any rights from Mr. Sachdeva. It is alleged that the present application is only a ruse to delay the hearing of the interlocutory application under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908.

9. I have given my thoughtful consideration to the rival submissions advanced by learned senior counsel for the parties.

10. In my considered view, a reading of the aforesaid provisions shows that the mandate of Section 61 of the said Act is that an owner of the copyright must be made a party to the proceedings and as to who is the owner of the copyright is provided under Section 17 of the said Act. The author is the first owner of copyright. Section 17 falls under Chapter IV dealing with ownership of copyright and the rights of the owner. There is a distinction between the author and the owner. Thus, though the author may be the first owner of copyright, the proviso explains the position in respect of different situations and assignment of copyright is permissible under Section 18 of the said Act. The mode of assignment is as per Section 19. In case of any dispute about the assignment of copyright, Section 19A comes into play and that is a matter to be considered by the Copyright Board. Section 21 provides for the right of the author to relinquish the copyright.

11. The most material aspect is that under Section 48 of the said Act, the register of copyright is prima facie evidence of the particulars entered therein. That extracts has been filed and, thus, the prima facie evidence of the respondent being the owner of the copyright is available. The question of Section 61 of the said Act coming into play would not arise as the proposed defendant is not the owner of the copyright as per this prima facie evidence in terms of Section 48 of the said Act.

12. The trial court, thus, did not fall into any error by rejecting the application by the petitioners. It may be noticed that the suit is at the inception stage and the trial has yet to commence. The respondent would have to establish in trial that it is the owner of the copyright and would be entitled to lead evidence in that behalf. This would, of course, arise if an issue in that behalf is framed since the contention of the respondent is that there is no such plea in the written statement nor has any issue been framed in that behalf.

13. I find no merit in the petition and the application and the same are dismissed with costs of Rs. 5,000/-.

14. dusty to learned Counsel for the parties.