The Indian Performing Right ... vs Sanjay Dalia & Anr.
2008 Latest Caselaw 2026 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

+           FAO(OS) 359/2007 & CM 12471/2007

#     THE INDIAN PERFORMING RIGHT SOCIETY LTD.
!                                        ..... Appellant
                    Through: Mr. A. S. Chandhiok, Sr. Adv.
                             with Mr. J. Sagar, Ms. Sweta
                             Kakkad & Mr. Arjun Pratap,
                             Advs.
               versus

$     SANJAY DALIA & ANR.                  ..... Respondent
^                   Through:      Mr. Rajiv Nayyar, Sr. Adv.
                                  with Mr. Rishi Agrawala,
                                  Adv.

                       Date of Hearing : November 14, 2008

%                      Date of Decision : November 19, 2008

      CORAM:
*     HON'BLE MR. JUSTICE VIKRAMAJIT SEN
      HON'BLE MR. JUSTICE S.L. BHAYANA
      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 the Digest?                             Yes

VIKRAMAJIT SEN, J.

1. This Appeal has been filed against the Order of the

learned Single Judge by which he has directed that the Plaint be

returned to the Plaintiff for presentation before the proper

Court. The Plaintiff is a Society registered under Section 33

read with Rules 13 and 14 of the Copyright Rules, 1958. It is

also a company limited by guarantee registered under the

Companies Act, 1950. On a perusal of the Plaint, it is evident

that its Registered Office is at 208, Golden Chambers, New

Andheri Link Road, Andheri (W), Mumbai; it also has an Office

at B-317, Som Dutt Chamber-I, Bhikaji Cama Place, New Delhi.

Learned counsel for the Defendants/Respondents has not

disputed the locus standi of the Plaintiff for filing the suit for

permanent injunction restraining infringement of copyright,

damages etc.

2. The precise legal status of Defendant No.2, M/s. Cineline

Cinemas, is not known, as pleaded in the Plaint itself. It is

debatable whether Defendant No.1, the Chief General Manager,

M/s. Cineline Cinemas, can at all be impleaded; but we are not

called upon to decide this question. Broadly stated, the

ventilated grievance against the Defendants is that "Defendant

No.1 is personally liable for his acts of encouraging and actively

directing the infringing acts of Defendant No.2 by virtue of him

having assured the Plaintiff of obtaining a license from the

Plaintiff in respect of the Plaintiff‟s works being communicated

to the public by Defendant No.2 and at Defendant No.2‟s

premises". So far as is relevant for the present purposes, the

Defendants have underscored the fact that they own Cinema

Halls only in Maharashtra and Mumbai and that the entire

cause of action, as alleged in the Plaint, has arisen in Mumbai.

In fairness to Mr. A.S. Chandhiok, learned Senior Counsel for

the Appellant, it has been conceded before us that no part of the

cause of action has arisen in Delhi. What he has vehemently

contended is that Section 62 of the Copyright Act, 1957 grants

absolute discretion and freedom of choice to the Plaintiff to

institute a suit wherever it voluntarily resides, or carries on

business or personally works for gain. Mr. Chandhiok has

stressed on the uncontroverted assertion of the Plaintiff having

an office in Delhi. Therefore, according to him, the requirements

of Section 62(2) of the Copyright Act has been met; the

provisions of Section 20 of the Code of Civil Procedure, 1908

(CPC for short) are wholly irrelevant; and the Plaint should be

entertained by the Courts in Delhi, as they sufficiently possess

territorial sway over the dispute. Mr. Nayyar, learned Senior

Counsel for the Defendants, has supported the dialectic of the

learned Single Judge, which gives eminence also to the situs

where the cause of action has arisen.

3. We have carefully cogitated upon the contentions

articulated before us on behalf of the litigating adversaries.

Intas Pharmaceuticals Ltd. -vs- Allergan Inc., 132(2006) DLT

641(DB) lays down an important principle of law in that it

interprets Section 134 of the Trade Marks Act as not whittling

down the provisions of Section 20 of the CPC but providing an

additional forum and a place for filing a suit in case of an

infringement of a trademark. The Division Bench presided over

by Dr. Mukundakam Sharma, J. (as his Lordship then was) has

also opined that the words "notwithstanding anything contained

in the CPC" are indicative of the position that Section 134 of the

Trade Marks Act has to be read conjointly with and in addition

to the provisions of Section 20 of the CPC. To those

observations we may add that it is only in the event of a conflict

between the provisions of Section 20 of the CPC and those of

Section 134 of the Trade Marks Act that the latter would

prevail. The effort of the Court must be, so far as is possible, not

to curtail the role that can be played by either of the provisions

acting conjointly or simultaneously. This Court in Intas had

predicated its decision on the opinion of the Supreme Court in

Dhodha House -vs- S.K. Maingi, (2006) 9 SCC 41 in which it has

been enunciated that Section 62(2) of the Copyright Act

provides an additional forum to enable the holder of a copyright

to file a suit at the place of his residence, thereby insulating him

from the tedium or vexatiousness of taking the fight to the

doorstep of the violating Defendant. The Trade and Merchandise

Marks Act, 1958 did not contain a provision akin to Section

134(2) of the Trade Marks Act, 1999 enabling the Plaintiff to

enjoy the convenience of filing a suit at the place where he

resides or carries on business etc. The extant provisions are

indeed salutary in purpose and effect, since otherwise the legal

remedy available for a breach of copyright or an infringement of

trademark often remains illusory. It appears to us that the Court

would be acquiescing in an assault on a general principle of law

prevalent at least in all common law systems if it were to allow a

lis to continue at a place where neither has the cause of action

arisen nor has the Defendant have a residence or place of

business. This legal principle attempts to obviate the use of

litigation as a device of harassment calculated to force an

adversary into succumbing into a settlement for fear of fighting

a lis at an inconvenient venue. Having made this observation,

we see no impediment in extrapolating this impeccable reason

onto an interpretation of Section 62(2) of the Copyright Act and

Section 134(2) of the Trade Marks Act, (which are verbatim to

each other), by requiring the Plaintiff to file a suit at the place

where it has its principal or subordinate place of business if the

cause of action has arisen there. Alternatively, the Plaintiff may

take recourse to the provisions of Section 20 of the CPC.

4. Let us analyse the amplitude of Section 20 of the CPC. It

enjoins that a suit must be instituted in a court within the local

limits of whose jurisdiction the Defendant actually and

voluntarily resides, or carries on business, or personally works

for gain, or where the cause of action wholly or in part arises.

The Explanation to that Section is important; it prescribes that a

corporation shall be deemed to carry on business at its sole or

principal office, or, in respect of any cause of action arising at

any place where it has also a subordinate office, at such place.

Since this provision primarily keeps the Defendant in

perspective, the corporation spoken of in the Explanation,

obviously refers to the Defendant.

5. A plain reading of Section 20 of the CPC apparently allows

the Plaintiff a multitude of choices where it may institute its

suit. Corporations and partnership firms, and even sole

proprietorship concerns, could well be transacting business

simultaneously in several cities. If sub-sections (a) and (b) of

Section 20 are to be interpreted disjunctively from sub-section

(c), as the use of the word „or‟ appears to allow, the Plaintiff

could file a suit where the cause of action may have arisen,

regardless of whether the Defendant has even a subordinate

office at that place. However, if the Defendant‟s location is to

form the fulcrum of jurisdiction, and it has an office also at the

place where the cause of action has occurred, the Plaintiff is

precluded from instituting the suit anywhere else. Obviously,

this is because at every other place would constitute a forum

non conveniens.

6. It is noteworthy that the Supreme Court has dwelt on the

various hues of this problem of the place of suing in several

cases and has gone to the extent of laying down that it should

be court‟s endeavour to find out the place where the cause of

action has substantially arisen and reject others where it may

have incidentally arisen. We need not delve further on this point

beyond making a reference to Oil & Natural Gas Commission

-vs- Utpal Kumar Basu, JT 1994 (5) SC1 and South East Asia

Shipping Co. Ltd. -vs- Nav Bharat Enterprises Pvt. Ltd., (1996) 3

SCC 443. This is for the reason that with regard to the dispute

before us the question of the place where the cause of action

has incidentally or substantially arisen does not arise. The

conundrum rather is whether the plaintiff is free to file a case at

a place where the cause of action has not arisen despite the fact

that it has its principal or subordinate place of business etc. at a

place where the cause of action has arisen. Instead, the decision

in M/s. Patel Roadways Limited, Bombay -vs- M/s. Prasad

Trading Company, AIR 1992 SC 1514 is apposite, the ratio of

which is that if a corporation has a subordinate office in the

place where the cause of action arises, litigation must be

commenced at that place alone regardless of the apparently

wider enabling provisions in Section 20 of the CPC. Their

Lordships opined that - "it would be a great hardship if, inspite

of the Corporation having a subordinate office at the place

where the cause of action arises (with which in all probability

the plaintiff has had dealings), such plaintiff is to be compelled

to travel to the place where the Corporation has its principal

place. That place should be convenient to the plaintiff; and since

the Corporation has an office at such place, it will also be under

no disadvantage".

7. We have perused the Parliamentary Debates relating to

the amendments carried out to the law of copyright and

trademark. One of the Objections that was raised was that the

new jurisdictional dispensation would favour multinational

corporations as they would be able to initiate litigation

according to their choice and secondly that a poor holder of a

trademark will be at a disadvantage. In the context of the first

Objection it was clarified that the new provisions would be to

the advantage of the petty trader incidentally doing his trade on

the basis of a registered trademark, and that if this purpose was

not achieved, an amendment would be brought in. If the

interpretation of Section 62 which we intend to impart, (which

would also apply to Section 134 of the Trade Marks Act) is

accepted, both these apprehensions would be addressed and

resolved. Plainly, if the cause of action has arisen at a particular

place where the plaintiff has its principal or subordinate office,

and it is restricted to filing a case in that place alone, the

Defendant would not be put to any unfair disadvantage. The

intendement of Section 62 of the Copyright Act and Section 134

of the Trade Marks Act is to enable the Plaintiff to initiate

litigation at a forum convenient to it. It is not intended to allow

the plaintiff to choose a territorial forum which is not

convenient to either of the parties, as is demonstrated by the

case in hand. Bill No.XV of 1955 sought to "amend and

consolidate the law relating to copyright". The Parliamentary

Committee was of the opinion that "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 Committee feels that this impediment should be

removed and 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 ordinarily resides, carries on

business, etc." This is a manifestation, in reverse, of what we

have assessed as a general principle of law, viz., that the

intendment behind prescribing the place of suing is to ensure

that litigation should be as best possible not a weapon of

harassment. Since experience had exposed the reality that if a

plaintiff in an action for infringement of copyright or trademark

may not be able to enjoy the fruits thereof if he was compelled

to file at the transgression‟s place of business, the amendment

was brought about. It could not have been the intention of

Parliament to enable the Plaintiff to choose the place of suing on

the basis of what would be the inconvenience to the Defendant.

8. The learned Single Judge is unassailably correct in opining

that "the plaintiff would be deemed to carry on business at a

branch office only if a cause of action has arisen in Delhi". In

doing so he has extracted and infused the rationale of

Section 62 of the CPC into the Copyright Act. As we have

already recorded above, it is the uncontrovered case of the

parties that the cause of action has not arisen in Delhi. The

neat question is whether a court of law is proscribed from

introducing the aspect of cause of action merely because it

has not been prescribed in the legislation. Alternatively, in

the absence of an Explanation as is to be found in Section 20

of the CPC can the pragmatic and equitable principles not

be injected into the relevant Section. It is beyond cavil that

the concept of cause of action is inseparably intertwined in

each and every litigation. Without it the lis would be liable for

rejection under Order VII Rule 11 of the CPC. The cause of

action, therefore, permeates every sinew of the suit and all

procedural provisions, which are but handmaidens of justice.

9. In S. Sundaram Pillai -vs- V.R. Pattabiraman, AIR 1985 SC

582 their Lordships observed that - "it is manifest that the

object of an Explanation to a statutory provision is (a) to explain

the meaning and intendment of the Act itself, (b) where there is

any obscurity or vagueness in the main enactment, to clarify the

same so as to make it consistent with the dominant object which

it seems to subserve, (c) to provide an additional support to the

dominant objet of the Act in order to make it meaningful and

purposeful, (d) an Explanation cannot in any way interfere with

or change the enactment or any part thereof but where some

gap is left which is relevant for the purpose of the Explanation,

in order to suppress the mischief and advance the object of the

Act it can help or assist the Court in interpreting the true

purport and intendment of the enactment, and (e) it cannot,

however, take away a statutory right with which any person

under a statute has been clothed or set at naught the working of

an Act by becoming an hindrance in the interpretation of the

same". The following observations in Keshavji Ravji -vs-

Commissioner of Income-tax, AIR 1991 SC 1806 are in similar

vein:

14. An „Explanation‟, generally speaking, is intended to explain the meaning of certain phrases and expressions contained in a statutory provision. There is no general

theory as to the effect and intendment of an Explanation except that the purposes and intendment of the „Explanation‟ are determined by its own words. An Explanation, depending on its language, might supply or take away something from the contents of a provision. It is also true that an Explanation may ....be introduced by way of abundant caution in order to clear any mental cobwebs surrounding the meaning of a statutory provision spun by interpretative errors and to place what the legislature considers to be the true meaning beyond controversy or doubt. Hypothetically, such can be the possible purpose of an „Explanation‟ cannot be doubted.

10. So far as Section 20 is concerned, the Explanation is

clarificatory in nature. The problem that is presented is that

Section 62 of the Copyright Act does not have any similar

Explanation. Strictly speaking, an Explanation found in one

statute cannot be read into another statute. The CPC, however,

constitutes a grundnorm, the ethos and essence of which

percolates through all other statutes. If any doubt persists in the

context of the provisions of Copyright Act or the Trade Marks

Act, we would not hesitate to dispel them with the aid of this

Explanation found in the CPC. In Harshad S. Mehta -vs- State of

Maharashtra, AIR 2001 SC 3774 it has been held that if two

Acts are similar an external aid of statutory interpretation

contained in one and omitted in another can be read into the

latter. This course has also been favoured in Shri Narakesari

Prakashan Ltd. -vs- Employees‟ State Insurance Corporation,

AIR 1984 SC 1916.

11. The intention of the legislature is evident, inter alia, in the

non-obstante clause pertaining to the CPC. The word

"notwithstanding" in ordinary parlance means „inspite of‟ or

despite. (See Concise Oxford Dictionary as well as Black‟s Law

Dictionary). This word does not indicate that the CPC has no

role to play. In the factual matrix before us the word

„notwithstanding‟ connotes that in addition to Section 20 of the

CPC, by virtue of Section 62(2) of the Copyright Act, the plaintiff

is free to choose a forum convenient to it, that is, wherever it

actually and voluntarily resides or carries on business or

personally works for gain, provided the cause of action arises

there. This is in contradistinction to that of the defendant as

prescribed by Section 20 of the CPC. It is difficult for us to

conceive of a situation where the ameliorative advantage

bestowed on the plaintiff by virtue of Section 62 of the Trade

Marks Act or Section 134 of the Trademarks Act could be

frustrated if this interpretation is given effect to. Let us assume

that the cause of action has arisen in Kanyakumari. It is

axiomatic that in the case of a violation of a trademark or

copyright the Defendant would have some presence, that is,

actual and voluntary residence, or carrying on of business or

working for gain, in Kanyakumari. If the Plaintiff also carries on

business etc. in Kanyakumari there would be no justifiable

reason not to bring the suit only at Kanyakumari. Assuming,

however, that the Plaintiff does not carry on business in

Kanyakumari but in Delhi or in Bombay or Calcutta, he would

face the disadvantage of having to file his suit at a hostile or

inconvenient place. Section 62 would then enure to his benefit

and enabling it to file the action in any of the three cities.

However, if the Plaintiff were to be free to choose from any of

the places where he is carrying on business etc. with no

correlation to the cause of action, the consequence would be

that his choice would create for the Defendant the very

disadvantage which the legislation has sought to alleviate for

the Plaintiff. In that event, no useful purpose would be served

for the plaintiff except for additional harassment to the

Defendant. This could never have been the intention or purpose

of Parliament and if this pragmatic and commonsense

interpretation is not imparted to the Section, the comment of

Hon‟ble Minister, Mr. Murosoli Maran that an amendment

would be brought in would become imperative. Since the cause

of action is an integral, inseparable and inevitable part of any

litigation, by reading it into Section 62 of the Copyright Act and

Section 134 of the Trade Marks Act, the law is made meaningful

and expedient. This is the bounden duty of any Court which is

called upon to interpret a provision of law.

12. We have already mentioned the landmark and oft-quoted

judgment of the Supreme Court in Patel Roadways and Oil &

Natural Gas Commission. We must also refer to a more

comparatively recent decision in Kusum Ingots and Alloys

Limited -vs- Union of India, (2004) 6 SCC 254 where it has been

enunciated that if only a small part of the cause of action has

arisen within the territorial jurisdiction of a particular High

Court, it is not bound to entertain the petition. It would be

sufficiently empowered to refer the petition to the court where

substantially the cause of action has arisen as it would be more

convenient to adjudicate the matter in that court. Although it

was Section 20 of the CPC which was in focus in all those cases,

it is the legal rationale behind it that had compelled the court to

render a purposive interpretation thereto. This approach is

exactly what is called for even where the Court is to interpret

other statutes such as the Copyright Act and the Trade Marks

Act.

13. In this analysis, we find the Appeal to be devoid of merits.

So far as the facts of the present case are concerned, the cause

of action, as laid out in the Plaint, has arisen in Maharashtra

only, where the Plaintiff‟s principal office is located. Had it

allegedly arisen at a place where the Plaintiff does not have its

principal or subordinate office, the suit could have been filed in

any Court holding territorial jurisdiction over any of its offices.

Thus, it is evident that we are, in no wise, whittling down the

provisions of either the Copyright Act or the Trade Marks Act.

We hold that if the cause of action has arisen at a place where

the Plaintiff actually and voluntarily resides or carries on

business or personally works for gain, that place is not only the

appropriate but also the only place where a suit can be

instituted ventilating a grievance of violation of copyright, (and

since the provisions are similar) to an infringement of the

trademark. In holding so we are not ignoring the provisions of

either the Copyright Act or the Trade Marks Act; we are only

imparting a pragmatic interpretation to them.

14. We, however, make no order as to costs.

                                          ( VIKRAMAJIT SEN )
                                                JUDGE



November 19, 2008                         ( S.L. BHAYANA )
tp                                               JUDGE