Delhi High Court

M/S Phonographic Performance Ltd vs M/S Hotel Gold Regency & Others on 2 July, 2008

Author: Badar Durrez Ahmed

            THE HIGH COURT OF DELHI AT NEW DELHI

%                                   Judgment delivered on: 02.07.2008

+             IA 334/2005 in CS(OS) 1498/2004 (U/O 7 R 11, CPC)

M/S PHONOGRAPHIC PERFORMANCE LTD                             ... Plaintiff

                                    - versus -

M/S HOTEL GOLD REGENCY & OTHERS                              ... Defendants

Advocates who appeared in this case:
For the Plaintiff                  : Mr Sandeep Sethi, Sr Advocate with
                                     Mr Pragyan Sharma and Ms Kanika Mehra
For the Defendant Nos. 2 & 3       : Mr K.K. Sharma with Ms Arpita
For the Defendant No.5             : Mr Milanika Chaudhury with Mr Sarojanand Jha
For the Defendant Nos. 7, 12 &14   : Ms Pratibha M. Singh with Ms Pema Yeshey
For the Defendant No.10            : Ms Bimla Sharma

CORAM:-
HON'BLE MR JUSTICE BADAR DURREZ AHMED

      1.

Whether Reporters of local papers may be allowed to see the judgment ? YES

2. To be referred to the Reporter or not ? YES

3. Whether the judgment should be reported in Digest ? YES

BADAR DURREZ AHMED, J

1. Defendant Nos. 2 and 3 have filed this application under

Order 7 Rule 11 of the Code of Civil Procedure, 1908 for rejection of

the plaint. As indicated in the order dated 25.02.2008, the counsel

appearing on behalf of defendant nos. 2 and 3 as well as the other

defendants, all of whom supported this prayer for rejection of the

plaint, raised the following two fundamental questions with regard to

the maintainability of the suit:-

1. Whether, in view of the provisions of sections 33 and 34 of the Copyright Act, 1957, a suit for infringement of copyright would be maintainable at the instance of a registered copyright society in the absence of the owner of the copyright?

2. Whether, in view of the provisions of section 61 of the Copyright Act, 1957, inasmuch as the owner of the copyright has not been made a party to the present suit, the same would be liable to be rejected on the ground of non-impleadment of a necessary party?

The parties and the reliefs claimed:

2. Before I consider the two questions, it would be necessary to

indicate who the parties are and what is the nature of the reliefs sought

in the present case. As disclosed in the plaint, the plaintiff is a

company incorporated under the provisions of the Companies Act,

1956. It is also a copyright society registered under section 33 of the

certificate dated 7.05.1996 under section 33 (3) of the Copyright act,

1957 in favour of the plaintiff. By virtue of the said certificate, the

plaintiff is permitted to commence and carry on the copyright business

in sound recordings.

3. It is further stated in the plaint that various owners of

copyrights in different sound recordings in respect of recorded music

have entered into in agreements with the plaintiff being a registered

issuing licences in respect thereof. One such agreement has been filed

at page 20 of the documents file and it is between Saregama India Ltd

and the plaintiff. The agreement is dated 01.04.2003. In the said

agreement it is categorically stated in the recitals that Saregama India

Ltd is the owner of the copyright in various sound recordings and that

by virtue of its membership of the plaintiff society, it has agreed to

authorise/grant to the plaintiff, in respect of its sound recordings, its

rights of communication to the public (including broadcast/telecast and

public performance rights) on the terms and conditions mentioned in

the agreement. By virtue of clause 1 of the agreement, the owner

granted and authorised the plaintiff it's right of communication to the

public in respect of its sound recordings. The owner also authorised

the plaintiff to grant licences, collect and distribute revenue on behalf

of the owner, whether on the plaintiff's own account, or through its

duly appointed agents. The plaintiff was also entitled to realise all fees

and licence fees payable in respect of such recordings (the rights of

communication to the public of which have been granted to the

plaintiff) from any person, authority, firm or company. The owner also

authorised the plaintiff to realise and receive payments of all such fees

and licence fees from All India Radio, any other broadcasting /

telecasting organisation and / or any other person, authority, firm or

company in respect of communication of the recordings to the public.

It was specifically stipulated that the owner shall have no right to claim

such amounts from any of the parties referred to above.

4. Clause 2 of the agreement deals with enforcements. It

stipulates that ancillary to the rights granted in clause 1 to the plaintiff

and/or its agents, in case of any infringement of the right to

communication to the public of any of the recordings which constitute

the subject matter of the agreement, the owner authorises the plaintiff

to, inter alia, swear affidavits, institute, commence or conduct civil,

criminal and/or administrative proceedings, file complaints, notices, or

give evidence in any court, tribunal or relevant authority, and appoint

solicitors to act for the purpose of commencing or conducting

proceedings on the owner's behalf in respect of such infringing/

unauthorised communication to the public, arising out of the said

agreement.

5. The defendants are hotels, lounges, bars and restaurants. It is

alleged that they play the sound recordings in respect of which the

plaintiff has entered into agreements with the owners of the copyrights.

It is further alleged that the defendants play such music without having

obtained any licence from the plaintiff and have therefore infringed the

copyrights of the owners thereof. It is the case of the plaintiff that

because of its position as a registered copyright society and the various

agreements entered into with the owners of the copyrights in the sound

recordings, the plaintiff is entitled to file the present suit seeking relief

of injunction restraining the defendants from playing the sound

recordings without first obtaining annual licences for the same. It is

also averred that the plaintiff is entitled to a money decree against the

defendants jointly and severally for the sum of money as calculated on

the basis of the applicable tariff charts of the plaintiff for using and/or

communicating the sound recording of the plaintiff for the period prior

to the filing of the suit as also after the filing of the suit upto the date of

the decree. Interest has also been claimed on the said amount.

6. It is, therefore, clear that the suit is primarily for

infringement of the copyrights in the sound recordings which are

owned by the members of the plaintiff copyright society. The suit is

also for recovery of money from the defendants for unauthorised

playing of the sound recordings and/or communicating the same to the

public at their respective premises without having obtained a licence

for the same from the plaintiff.

Question 1:

7. It was contended on behalf of the defendants that under the

scheme of the Copyright act, 1957 the plaintiff cannot maintain the

present suit in as much as the plaintiff does not have the right to sue. It

was contended that only an owner of the copyright or an exclusive

licensee can maintain a suit for infringement. And, in a suit filed by the

exclusive licensee, the owner of the copyright has to be made a party to

the suit. It was contended that section 33 of the said act contemplates

the establishment and formation of a copyright society. The first

proviso to section 33 (1) specifically provides that an owner of

grant licences in respect of his own works consistent with his

obligations as a member of the registered copyright society. This,

according to the defendants, clearly demonstrates that the plaintiff

being a registered copyright society does not have exclusive rights to

grant a licence much less an exclusive ownership in respect of the

8. It was further contended that the rights of a copyright society

are limited to issuance of licences and administration of copyrights and

does not extend to the filing of suits for infringement. With reference

to section 34 of the said act, it was submitted that the copyright society,

at best, is a society for administration of rights conferred on the society.

It was also contended that section 34 (3) clearly stipulates that the

any rights under the act; (b) collect fees in pursuance of such

licences;(c) and distribute such fees among owners of rights after

making deductions for its own expenses; (d) perform any other

functions consistent with the provisions of section 35 of the said act.

The submission is that these rights of administration do not include the

right to sue for infringement and therefore a copyright society cannot

bring a suit for infringement of copyright. The present suit is,

therefore, according to the defendants, not maintainable and is liable to

be dismissed.

9. It was also contended on behalf of the defendants that the

legislature in its wisdom has not permitted a copyright society to

maintain a suit for infringement and that this would be clear from a

reading of the provisions of section 55 of the said act which has

reference only to the owner of the copyright. The right to seek civil

remedies for infringement of copyrights has been limited to the owners

thereof. According to the defendants, the copyright society does not

have any such right to seek remedies for infringement of copyright by

way of injunction, damages, accounts etc.

10. On the other hand, the learned counsel for the plaintiff

submitted that section 34 enabled a copyright society to accept from

(3) enabled the copyright society to issue licences which can otherwise

be granted by an owner of a copyright under section 30 as also to

collect fees in pursuance of the licence, distribute fees among owners,

and perform any other functions consistent with the provisions of

section 35. It was contended that section 35 contemplates the control

of owners of copyright over such copyright society and permits a

procedures of collection of licence fee. It was contended that the

powers conferred upon the copyright society includes the power to sue

for enforcement of rights of the copyright owners.

11. It was submitted that the business of a copyright society

under section 33(1) is of issuing/ granting licences in respect of any

rights under the act. Such business would necessarily include the

matter of legal enforcement of such rights. Reliance was placed by the

learned counsel for the plaintiff on the provisions of section 188 of the

Indian Contract Act, 1872 which defines the extent of an agent's

authority. An agent having authority to carry on a business, has

authority to do every lawful thing necessary for the purpose, or usually

done in the course of conducting such business. Illustration(a) to the

section was also referred to. The same reads as under:-

"A is employed by B, residing in London, to recover at Bombay a debt due to B. A may adopt any legal process necessary for the purpose of recovering the debt, and may give a valid discharge for the same."

According to the learned counsel for the plaintiff, the above illustration

puts the matter beyond doubt that an authority to recover debt includes

the power to adopt any legal process to recover the same. In this

context it was also submitted that chapter VII of the Copyright Act,

1957 not only authorises the doing of business by a copyright society

of issuing or granting licences but also authorises such a society to

collect licence fees.

12. It was also contended that the word "business" is a very wide

term, which includes, the right to institute a suit for the enforcement

and protection of rights granted to the plaintiff by its members. The

object of registration is to aid individual copyright owners so that they

are not made to prosecute tortuous proceedings in different parts of the

country for the enforcement of the rights against the same person

violating their rights.

13. The learned counsel for the plaintiff contended that Section

34(1)(a) of the Copyright Act, 1957 uses the words ―authorisation‖ and

―administer any right in any work‖, which are words of wide

amplitude. It was contended that the word ―administer‖ is susceptible

of a broad interpretation so as to include control and regulation on

behalf of others. A reference was also made to Corpus Juris Secundum

which, inter alia, describes the word ―administer‖ as: ―to control or

regulate in behalf of others...‖; ―The word ―administer‖, as used with

respect to a court decree means to execute it, to enforce its provisions,

to resolve conflicts as to its meanings, and to construe and interpret its

language‖; ――Administer‖ has been held to be synonymous with

―conduct‖, ―direct‖, ―distribute‖, ―furnish‖, ―give out‖, and ―manage‖.‖

14. According to the learned counsel for the plaintiff, the said

Section 34 enables the owner of a copyright to empower a copyright

society to institute suits as a part of administration of its rights. It was

further contended that by virtue of the public performance

authorisation agreements executed by owners of the copyrights in

favour of the plaintiff, the plaintiff has been authorised to act as a

collection company. Clause 2 (a) of the agreements was referred to for

submitting that the owners of the copyrights had specifically authorised

the plaintiff to ―... swear affidavits, institute, commence or conduct

civil, criminal and / or administrative proceedings...‖ It was submitted

that such a clause was akin to the powers given under a power of

attorney.

15. Furthermore, it was submitted on behalf of the plaintiff,

Section 34(3)(i) and (ii) of the Copyright Act, 1957 confers on a

the Act and to collect licence fee in pursuance of such licneces. It was

contended that the authority to collect licence fee implies and includes

authority to use the means ordinarily employed for the purpose of

accomplishing a collection and this would, inter alia, mean retaining of

counsel and institution of suits as there is no other legitimate way in

which collection could be compelled. A reference was made to Words

and Phrases (Permanent Edition, Volume 4A, West Publishing Co.),

wherein the expression ―authority to collect‖ has been indicated as

under:-

―AUTHORITY TO COLLECT ‗Authority to collect' implies and includes authority to use the means ordinarily employed for the purpose of accomplishing a collection, and among these are the retaining of counsel and the institution of suit. Indeed, that is generally the only way in which collection can be compelled, and an agent whose duty it is to collect has certainly the implied power to resort to the ordinary and generally the only means of compelling collection. ‗Authority to collect' is broader and more comprehensive than ‗authority to receive payment.' Ryan v. Tudor, 2 P. 797, 798, 31 Kan. 366.‖

16. It was then contended that the authority to institute legal

proceedings in order to enforce such rights of collection of licence fee

etc. is also implicit in the rights of administration granted to a copyright

society under Section 34 by an owner of such rights. In other words,

the power to issue licence and collect licence fee also includes within

it, a power to prosecute any one not taking a licence or not paying a

fee.

17. Section 33 (1) of the Copyright Act, 1957 prohibits any

person or association of persons from commencing or carrying on the

business of issuing or granting licences in respect of any work in which

Act except under or in accordance with the registration granted under

Section 33 (3) thereof. The first proviso to Section 33(1) stipulates that

an owner of copyright shall, in his individual capacity, continue to have

the right to grant licences in respect of his own works consistent with

his obligations as a member of the registered copyright society. These

provisions indicate that the business of issuing or granting licences in

respect of any work in which copyright subsists can only be conducted

by a person or association of persons etc., registered as a copyright

society under Section 33(3). They also indicate that the owner of the

his own works consistent with his obligations as a member of the

registered copyright society. The copyright society, therefore, does not

have the exclusive right to grant licences and owner of the copyright

retains his individual right to grant licences in respect of his own

works.

18. Section 34 of the Copyright Act, 1957 reads as under:-

"34. Administration of rights of owner by copyright society.--(1) Subject to such conditions as may be prescribed,--

(a) a copyright society may accept from an owner of rights exclusive authorisation to administer any right in any work by issue of licences or collection of licence fees or both, and

(b) an owner of rights shall have the right to withdraw such authorisation without prejudice to the rights of the copyright society under any contract.

(2) It shall be competent for a copyright society to enter into agreement with any foreign society or organisation administering rights corresponding to rights under this Act, to entrust to such foreign society or organisation the administration in any foreign country of rights administered by the said copyright society in India, or for administering in India the rights administered in a foreign society or organisation the administration in any foreign country of rights administered by the said copyright society in India, or for administering in India the rights administered in a foreign country by such foreign society or organisation.

Provided that no such society or organisation shall permit any discrimination in regard to the terms of licence or the distribution of fees collected between rights in Indian and other works.

(3) Subject to such conditions as may be prescribed, a copyright society may -

(i) issue licences under Section 30 in respect of any rights under this Act,

(ii) collect fees in pursuance of such licences,

(iii) distribute such fees among owners of rights after making deductions for its own expenses,

(iv) perform any other functions consistent with the provisions of Section 35.‖

19. A plain reading of Section 34 indicates that the copyright

society is entitled to receive from an owner of rights, exclusive

authorisation to administer any right in any work by issue of licences or

collection of licence fee or both. The owner has the right to withdraw

such authorisation without prejudice to the rights of the copyright

society under any contract. The extent of authorisation to administer

any right in any work has been indicated in Section 34(1)(a) to be

issuance of licences or collection of licence fee or both. Section 34(3)

also indicates that a copyright society may issue licences under Section

30 in respect of any rights under the Act; it may collect fees in

pursuance of such licences; distribute such fees among owners of rights

after making deductions for its own expenses; and perform any other

functions consistent with the provisions of Section 35. Leaving aside

the provisions of Section 35 for the moment, it is apparent that the

licences and / or collection of licence fees and consequently

distribution of such fees among owners of the rights after making

deductions for its own expenses. Conspicuous by its absence is the

right to institute an infringement action.

20. Reverting to Section 35 of the Copyright Act, 1957, a

reading of the same would make it clear that the provision merely

stipulates that every copyright society shall be subject to the collective

control of the owners of the rights under the Act whose rights it

administers. The copyright society is required to obtain various

approvals from the owners of rights, such as the approval for its

procedures of collection and distribution of fees; for the utilisation of

any amounts collected as fees for any purpose other than distribution to

the owners of rights. The copyright society is also required to provide

to such owners regular, full and detailed information concerning all its

activities, in relation to the administration of their rights. Section 35(2)

stipulates that all fees distributed among the owners of the rights shall,

as far as may be, be distributed in proportion to the actual use of their

works. Section 35 does not, in any way, amplify the authority granted

to a copyright society under Section 34. On the other hand, Section 35

clearly stipulates that the copyright society would be under the

collective control of the owners of the rights and would have to obtain

approvals from them as well as provide full information to them. The

rights of a copyright society are, therefore, circumscribed by the

provisions of Section 34. Section 34(1)(a) clearly stipulates that the

authorisation to administer any right in any work ―by issue of licences

or collection of licence fee or both‖. The exclusive authorisation to

administer any rights in a work are limited to issuance of licences and /

or collection of licence fee and obviously distribution of such fees [as

entailed by Section 34(3)] among owners of the rights after making

deductions for the expenses of the copyright society.

21. Chapter XI deals with the infringement of copyrights. It

comprises of Sections 51 to 53A. This is followed by Chapter XII

which deals with civil remedies and comprises of Sections 54 to

Section 62. Section 54 defines the expression ―owner of copyright‖ for

the purposes of Chapter XII, to include, inter alia, an exclusive

licencee. Section 55 which provides for civil remedies for

infringement of copyrights reads as under:-

―55. Civil remedies for infringement of copyrights.--(1) Where copyright is 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.

(2) Where, in the case of a literary, dramatic, musical or artistic 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 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 provided, to be the author or the publisher of the work, as the case may be.

(3) The costs of all parties in any proceeding in respect of the infringement of copyright shall be in the discretion of the court.‖

22. This provision makes it clear that when the copyright in any

work is infringed, it is only the ―owner of the copyright‖ who is

entitled to all such remedies by way of injunction, damages, accounts

and otherwise as are or may be conferred by law. Since the expression

―owner of copyright‖ has been defined in Section 54 to include an

exclusive licencee, an exclusive licencee would also be entitled to all

the aforesaid remedies of injunction etc. It is, therefore, abundantly

clear that apart from the owner of the copyright and an exclusive

licencee, no other person is entitled to the civil remedies for

infringement of copyright. The provisions of Section 61 are also

important but they shall be dealt with separately under Question No.2.

For the present, it is sufficient to note that it is the plaintiffs own case

that it is not an exclusive licencee. The plaintiff is admittedly also not

an owner of the copyright. Therefore, going by a plain reading of

Sections 54 and 55 of the said Act, the plaintiff would not be entitled to

the remedies for infringement of copyright. The remedies being by

way of injunction, damages, accounts and otherwise as are or may be

conferred by law.

23. Powerful and attractive arguments have been made on behalf

of the plaintiff to submit that a copyright society having exclusive

authority to administer the rights of grant of licences and collection of

licence fee would in the very nature of such an authority also include

the right to institute civil proceedings for the purposes of collecting

fees. It was also strongly contended that the said exclusive

authorisation would also enable the copyright society to seek the

collection of fees from persons who were using the said works without

a licence.

24. It must be remembered that the owners of the copyrights,

such as Saregama India Ltd have entered into broadcast, telecast, public

performance authorisation agreements with the plaintiff. It is on the

basis of these agreements that the copyright society can grant licences

for the use of the works in respect of which the agreements have been

entered into. It is these agreements which also authorise the copyright

society to collect and distribute the revenue on behalf of the owners of

the rights. The authorisation and grant as per clause 1 of such

agreements also entitles the copyright society to realise fees and licence

fees payable in respect of the works and the owners have authorised the

licence fee from All India Radio and other broadcasting, telecasting

organisations and / or any other person, etc. who uses the said work. It

is true that clause 2 of the said agreements, which deals with

enforcements, permits ancillary rights to the copyright society to

commence, inter alia, civil proceedings in case of any instance of the

infringement of the right on the owner's behalf in respect of such

infringement / unauthorised communication to the public. The exact

expressions used would be relevant, as such, clause 2 of such

agreements is reproduced hereinbelow:-

―2. Enforcements

Ancillary to the rights granted in Clause 1 to the Collection Company and/or its agents, in case any instance of any infringement of the Communication to the Public right of any of the Recordings hereunder is brought to the notice of the Collection Company, the Owner hereby authorizes the Collection Company and/or its duly authorized agents to do the following:-

(a) swear affidavits, institute, commence or conduct civil, criminal and/or administrative proceedings, file complaints, notices, or give evidence in any court, tribunal or relevant authority, and appoint solicitors to act for the purpose of commencing or conducting proceedings on the Owner's behalf in respect of such infringing/unauthorized

Communication to the Public, arising out of this Agreement;

(b) compromise, refer to arbitration or otherwise settle any suit or legal or administrative proceedings commenced under this Agreement, consulting where reasonably necessary with the copyright owner or exclusive licensee as appropriate;

(c) receive property, damages or costs awarded by a court, tribunal or other relevant authority, or as agreed by settlement, in respect of proceedings commenced under this Agreement, to the Collection Company's account for the purpose of contributing towards the costs of undertaking such further proceedings; and

(d) give undertakings to any court, tribunal or relevant authority as to damages and costs and in case damages and/or costs are awarded by a court, tribunal or judicial authority against the Collection Company in respect of proceedings, which have been initiated pursuant to this Agreement, the Owner hereby agrees to pay to the Collection Company the Owner's share thereof.‖

25. Whatever the agreement between the owner of the copyright

and the copyright society may provide, only that which is permitted by

The Copyright Act, 1957 would be permissible and enforceable. I have

already indicated above that Section 34 of the Act only permits the

grant of exclusive authorisation by the owners to the copyright society

for grant of licences, collection of fees and distribution thereof amongst

the owners. The Act does not permit the grant of any authorisation by

the owners to the copyright society to sue for infringement of copyright

and seek injunctions, damages, accounts or other civil remedies as

provided in Section 55 thereof. The parties can only agree to do what

the law permits them to do. If they agree on something which is not

permissible under law, such an agreement to that extent would not be

enforceable.

26. It must be pointed out that the authority that an owner gives

to a copyright society for the collection of fees relates to the fees in

respect of the licences granted by the copyright society. The authority

does not extend to collecting fees from those persons to whom the

let us assume that an owner enters into an agreement with a copyright

society giving exclusive authorisation to the copyright society to grant

licences and to collect fees in respect thereof as per the tariff of the

grants licences to three persons--A, B and C. The copyright society in

such a situation would be well within its rights to demand fees from A,

B and C in respect of the licences granted by it to them. In case, A, B

or C do not pay the fees as contemplated under the licences granted by

the copyright society on behalf of the owner, it may be argued that the

civil suit for recovery of the fees due under the licences granted to A, B

or C. It would, however, be another question, and that is a debate upon

which I shall not enter in this case, as to whether the copyright society

can bring a suit in its own name and not in the name of the owner. So,

it may be possible for the plaintiff to argue and seek refuge under

Section 188 of the Indian Contract Act, 1872 that the authority of the

agent includes the authority to recover the fees by filing a civil suit.

But, this would be limited to cases where the copyright society has

granted licences and is seeking collection / recovery of fees in respect

of those licences. Such actions would be within the scope of the

licence agreements themselves. The situation is entirely different

where persons, to whom no licence has been granted by a copyright

society, use the works, in which the owner has copyrights. The

such persons either for infringement or for recovery of fees or

damages. That right is in the exclusive domain of the owner or an

exclusive licencee. A copyright society is neither. The reason for the

difference can be easily discerned because where the copyright society

seeks to recover / collect fees from persons to whom licences have been

granted, it is doing so in terms of the licences. On the other hand,

where the copyright society would attempt to recover fees / damages

from persons to whom no licences have been granted, it would be

doing so on the basis of infringement. The civil remedy for

infringement is restricted to an owner or an exclusive licencee. The

and, therefore, a copyright society would not be in a position to file a

suit seeking injunction, damages, accounts or other civil remedies in

respect of persons, such as the defendants, who have allegedly

infringed the copyrights of the owners. Consequently, the defendants

are right. Question No.1 has to be answered in the negative. The

present suit is not maintainable at the instance of the copyright society.

It is open to the owners to sue for infringement and other consequential

civil remedies.

Question No.2.

27. Section 61 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.‖

28. It is apparent that the said provision relates to suits or other

proceedings regarding infringement of copyright instituted by an

exclusive licencee. An exclusive licencee can institute such a suit

because of the provisions of Section 55 read with Section 54 which

have been discussed in detail above. When an exclusive licencee

institutes such a suit, Section 61 of the Copyright Act, 1957 mandates

that the owner of the copyright shall, unless the court otherwise directs

be made a defendant.

29. It was contended on behalf of the defendants that since the

owner of the copyright has not been impleaded as a defendant by the

plaintiff, the suit is liable to fail. Reliance was also placed on a

decision of a learned single Judge of this court in the case of ESPN

Star Sports v. Global Broadcast News Limited and Others [CS(OS)

219/2008 decided on 18.02.2008]. In that decision, the learned single

Judge observed that Section 61(1) creates an absolute standard in the

case of civil action for infringement of a copyright; it prescribes that in

every suit for infringement of a copyright filed by an exclusive

licencee, the owner of the copyright has to be, unless the court

otherwise directs, made a defendant and where such owner is so

impleaded, he shall have the right to dispute the claim of the exclusive

licencee. The learned single Judge concluded:-

―For these reasons, it has to be held that the mandate of Section 61(1) applies in case of claims for infringement of broadcast reproduction rights; the non- impleadment of the owner of copyright is fatal to the maintainability of the suit.‖

30. On behalf of the plaintiff, it was contended that Section

61(1) does not at all apply in the facts of the present case. It was

submitted that Section 61 relates to proceedings instituted by an

exclusive licencee. Since the plaintiff is a copyright society registered

under Section 33 and is not an exclusive licencee, this provision would

not apply to a suit instituted by a copyright society, such as the

plaintiff.

31. The plaintiff is right. Section 61 applies to suits filed by an

exclusive licencee. The plaintiff is not an exclusive licencee.

Therefore, Section 61 will not come in the way of the plaintiff. But,

that is only a hypothetical situation because the plaintiff, in any event,

does not have the right to sue for infringement either on behalf of the