Jaypee Brothers Medical ... vs Dr. Ramya Raghu & Ors
2008 Latest Caselaw 1677 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

+     IA.Nos 4247/2007& 6613/2007 in CS(OS)677/2007

%                                   Date of decision: 18.09.2008


JAYPEE BROTHERS MEDICAL                          ....... Plaintiff
PUBLISHERS (P) LTD

                    Through: Mr. Jagdish Sagar and Mr Bhagwati Prasad,
                            Advocates

                                 Versus

DR. RAMYA RAGHU & ORS                           ....... Defendants
                     Through: Ms Pratibha M Singh with Mr Sudeep
                     Chatterjee, Mr Deepak Gogia and Mr J.P.
                     Karunakaran, Advocates.

CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

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          YES
      in the Digest?


RAJIV SAHAI ENDLAW, J.

1. The plaintiff has instituted the suit for declaration that the

plaintiff is the owner of copyright in a book, authored by the

defendant No.1 with the assistance of the defendant No.4 and

published by the defendants No. 2 and 3, for the reason of the

defendant No.1 having assigned copyright therein to the plaintiff

even before the book had come into existence and on the plea that

such assignment has taken effect on the book coming into existence.

The plaintiff has also sought consequential relief of injunction

restraining the defendants from distributing, selling or in any

manner exploiting the said book and for damages etc. On

IA.No.4247/2007 filed by the plaintiff alongwith the plaint for interim

relief, vide ex parte order dated 23rd April, 2007 the defendants were

restrained from selling, distributing or exploiting the book.

2. IA.No. 6613/2007 has been filed by the defendants under

Order 39 Rule 4 CPC. Vide order dated 27th February, 2008 the said

ex parte order was modified permitting the defendants to go ahead

with the sale of the book, subject to keeping accounts. The plaintiff

preferred an appeal to the Division Bench which vide order dated

27th May, 2008 set aside the order dated 27th February, 2008 and

restored the ex parte injunction dated 23rd April, 2007 till the

disposal of the applications.

3. The plaintiff has based its case on the plea of assignment of

copyright in a future work by the defendant No.1 and the plaintiff

consequently being the owner of the copyright on the work coming

into existence. The plaintiff thus claims the defendants to be in

infringement of the plaintiff's copyright. The plaintiff has not sued

for specific performance of the agreement with the defendant No.1

or for preventing breach of the same, save with respect to the

assignment of copyright as aforesaid.

4. The defendants have contested the suit denying that there was

any assignment of copyright in favour of the plaintiff. The

defendants contend that the agreement between the plaintiff and the

defendant No.1 was at best an agreement between the author and a

publisher and which agreement by its very nature is not specifically

enforceable (and for which reason only the plaintiff has not sued for

specific performance of a publishing agreement). It is further

contended that the agreement of assignment is without any

consideration and hence void; that the agreement is in restraint of

trade and void for the said reason also; that the contract, if any,

stood abandoned by the plaintiff; that the contract is onerous to the

defendant No.1 and ought to be set aside by the court for the said

reason. It is finally contended that the book authored by the

defendants No 1 and 4 and published by defendants No 2 and 3 is

different from the book (to be brought out in future) with respect to

which the plaintiff and the defendant No.1 had entered into the

agreement.

5. Besides the aforesaid pleas with respect to the ingredients of

prima facie case, arguments were also addressed on the ingredients

of irreparable loss and balance of convenience.

6. The plaintiff having approached the court for declaration that

the copyright stood assigned to the plaintiff and consequentially

seeking injunction, has to make out a prima facie case of assignment

of copyright. For the said purposes I find the plaint itself states that

the plaintiff is engaged in the business of publishing, distribution and

sale of medical books; the plaintiff has opened up new opportunities

to previously unknown academics and other professionals in the field

of medicine by encouraging them to author books in the field of

medicine; that the plaintiff is involved in identifying and developing

new authors; the plaintiff for the said purposes identifies potential

authors and then arranges meetings with the potential authors by

holding authors meet; that during the said meetings, the proposed

books are discussed and thereafter the prospective authors and the

plaintiff enter into the agreements, inter alia, of a future assignment

of copyright in consideration of the plaintiff's commitment to

produce and publish the book at its own risk and to pay the author

suitable royalty of 10% of the printed price as per the norms in the

publishing industry; that the defendant No.1 is Professor and Head,

Conservative Dentistry & Endodontics at the Bangalore Institute of

Dental Science at Bangalore and was one of the invitees to the

authors' meeting arranged by the plaintiff on 7th September, 2003 at

a hotel in Bangalore; sample copy of the invitation is filed before the

court; the defendant No.1 attended the said meet and thereafter

executed an agreement with the plaintiff in September 2003 itself

which was sent by the defendant No.1 from Bangalore to Delhi; the

plaintiff accepted the defendant No.1 proposal by signing the

agreement at Delhi.

7. That since there is a written document between the parties,

the clauses thereof relevant to determine whether the same is an

assignment of copyright or a publishing agreement are quoted

hereinbelow. It is significant that the plaintiff in the said agreement

is described as the publisher and the defendant No.1 as the author.

"1. The author(s) to deliver to the publishers the complete typed script of the book with diagrams, pictures, transparencies, maps, etc. at present entitled `Art & Science of Operative Dentistry' within 365 days of this agreement. He/She/they also agree(s) to help in the preparation of the publication. The author(s) agree(s) to correct, approve and pass for printing the final page proofs of the book without in anyway delaying or inconveniencing the printers.

2. (a) The publishers shall at their own risk and expense produce and publish the above book and shall have during the legal term of copyright the exclusive right of producing the book(s) or any portion of it and its/their subsequent editions throughout the world, as also the general control of the publication(s) and the right to publish a translation.

(b) The copyright of this work vests with the author and the author(s) willingly assign(s) the right to the publishers to publish the work, and to reassign the rights of co-publishing, translation, adaptations, as may be considered necessary by the publishers.

(c) The author(s), however, agree not to assign the copyright to anyone else without the explicit written permission of the publishers.

(3) The author(s) hereby guarantee(s) that the book is in no way an infringement of copyright and does not contain any matter of libelous nature and that he/they shall indemnify the publishers against all losses and expenses arising out of such infringement of copyright or on account of matter of libelous/objectionable nature contained in the book(s).

9. The author(s) agree(s) to edit and revise, if necessary, with additions and alternations every subsequent edition of the book(s). In case the author(s) refuse(s) to do so or is/are unable to do so on any account, the publishers may get it revised by somebody else and the charges will be borne by the author(s).

10. The author(s) shall not be directly or indirectly interested in any other similar book(s) or in anyway so act that the sale of the books(s) may be adversely affected and if at any time he/she/they does/do so he/she/they will be responsible for all losses the publishers may be put to through such action of the author(s)."

8. Prior to the signing of the agreement aforesaid, the plaintiff

had made the defendant No.1 to fill up "Manuscript Information

Questionnaire" at the authors meet. A copy of the same has been

filed by the plaintiff. The particulars of the defendant No.1 and the

proposed and alternative title of the proposed book have been filled

up by the defendant No.1 in the same. Against column No.3 : "Is it

to be multi-authored or single authored book: In case it is multi

authored book, please give the number of contributors," the

defendant No.1 has filed up "3 - 4". The defendant No.1 had therein

disclosed the current position of the script as "initial stage of

preparation" and had given the approximate number of typed script

pages as 400 with 1000 diagrams and 50-75 illustrations. The

defendant No.1 had in the said form disclosed that the proposed

book was meant for undergraduate reference and had also listed the

competing titles, in her view. Most important for the present

purpose, the defendant No.1 had filled in the said form that the

proposed book would need revision for subsequent editions within 3-

5 years. The plaintiff in the said form had also sought information

from the defendant No.1 of the ways to boost the sales of the book.

Needless to state that the aforesaid questionnaires as well as the

agreement are standard form printed contracts got prepared by the

plaintiff and blanks whereof were filled in by the defendant No.1.

9. Section 18 of the Copyright Act, 1957 provides that the owner

of the copyright in an existing work or the prospective owner of the

copyright in a future work may assign to any person the copyright

either wholly or partially and either generally or subject to limitations.

The proviso thereto states that in the case of the assignment of

copyright in any future work, the assignment shall take effect only

when the work comes into existence. Section 18(2) provides that the

assignee of a copyright is to be treated as the owner of the

copyright. Section 2(j) of the Act defines an exclusive licence as a

licence which confers on the licensee to the exclusion of all other

persons including the owner of the copy right, any right comprised in

the copyright in a work. Publication is a right comprised in the

copyright of the work. The question which arises is whether on the

basis of the agreement aforesaid, there was an assignment of

copyright in a future work which has come into effect upon the book

coming into existence (if it is the same book) or the plaintiff had

merely agreed to give right of publishing the book to the defendant

No.1.

10. On this aspect, in my view, besides the language of the

agreement in determining the aforesaid question, the manner in

which the plaintiff itself has described the agreement to have come

into existence has a bearing. The invitation card issued by the

plaintiff for the meet aforesaid itself described the meet as an

"Authors - Publisher Meet 2007." The list prepared by the plaintiff

of the doctors who were invitees for the said meet and which was

signed by attending authors also described the meet in a similar

fashion. The Chairman and Managing Director of the plaintiff in his

letter to the defendant No.1 after the meet also thanks the defendant

No.1 for attending the Authors-Publisher Meet. The questionnaire

which the defendant No.1 was needed to fill up at the meet, also

does not give any inclination of the proposed relationship between

the plaintiff and the defendant No.1 being intended to be anything

other than of an author and a publisher. Though the defendant No.1

described her proposed work to be a multi-authored book with 3-4

persons contributing to the same, no inquiry of the said contributors

was made nor were they required to be signatories to the agreement.

There do not appear to have been any discussions or negotiations

between the parties. Prima facie, it appears that the defendant No.1

at the said meet having evidenced interest to author a book was

made to fill up the questionnaire and was left with a printed form

agreement. Thus, it is not as if there was any discussion between

the plaintiff and the defendant No.1 as to whether the defendant

No.1 was to assign her copyright to the plaintiff or the plaintiff was

to merely publish the book to be written by the defendant No.1. No

such discussion or negotiation have been pleaded.

11. The clauses aforesaid of the standard form agreement have to

be interpreted in the aforesaid light. It becomes important to note

that the plaintiff was described as a publisher. It appears that the

subject book is the first book of the defendant No.1. In any case

there was no prior relationship between the plaintiff and the

defendant No.1. The defendant No.1 appears to have taken the

plaintiff merely as a publisher of her proposed book and there is

nothing to indicate that the defendant No.1 intended to assign

copyright in her work to the plaintiff. For an author, copyright is of

immense value, monetarily and more so otherwise, and without the

author being made aware that the agreement which the author is

signing would divest the author of the copyright itself, thereby

leaving no rights whatsoever in the author, I, prima facie, find it

difficult to believe that the agreement between the parties can be

construed as an agreement of assignment. Had the agreement

described the plaintiff as an assignee, it could still have been argued

that it had been made abundantly clear to the defendant No.1 that it

was assignment of her copyright which was the subject matter of the

agreement. The counsel for the defendants has shown the other

publications of the plaintiff' in those, the copyright is shown to be

vesting in the author. At this stage nothing has been shown to

suggest that the agreements entered into by the plaintiff with such

other authors were different from the standard form agreement

entered into with the defendant No.1. If on similar agreements the

plaintiff itself has treated copyright to be vesting with author, the

plaintiff appears to be now contending the same agreement to be of

an assignment of copyright only for the purpose of specific

enforcement thereof, which otherwise does not lie in law.

12. In my view, even the language of the agreement does not

support the case of the plaintiff of assignment of a copyright. Clause

2(a) of the agreement refers to the plaintiff during the legal term of

copyright having the exclusive right of producing the book. Section

22 describes the term of copyright as within the life time of the

author until 60 years. Had the intention been of assignment of the

copyright, there would have been no need to so provide in clause

2(a) inasmuch as then the copyright itself would have vested in the

plaintiff.

13. Clause 2(b) further makes the position clear. The same

operates as assignment by the author only of a right to publish the

work and to reassign the rights of co-publishing, translation,

adaptation as may be considered necessary by the publisher. This

language can be contrasted with the language of the agreement in

Oxford University Press V Orient Longman Private Limited and

Ors 103(2003) DLT 139 relied upon by the counsel for the plaintiff,

as under:

"The Author hereby assigns to the Publisher during the legal term of copyright including any renewals thereof the entire copyright in the Work subject to the terms and conditions thereinafter mentioned."

In the aforesaid state of the agreement, this court had prima facie

held the agreement to be of assignment of copyright. However, the

plaintiff in the present case in its standard form agreement was

satisfied in receiving the assignment only of the right to publish the

work and not of the entire copyright in the work.

14. Clause 2(c) of the agreement makes the position unequivocal.

Had the agreement been of assignment, the question of the plaintiff

incorporating therein a covenant that the author shall not assign the

copyright to anyone else without the written permission of the

publisher would not have been required inasmuch as in that case the

author, upon coming into existence of the work would not have been

left with any copyright in the same and consequentially there would

have been no occasion for the author to so assign the copyright to

anyone else.

15. Having reached a prima facie conclusion, that the agreement

was not of assignment of copyright, even if the book which had come

into existence is the same book with respect to which the agreement

was entered into by the defendant No.1 with the plaintiff, the

plaintiff would have no right as the assignee of the copyright to

restrain the defendants.

16. Another important feature, in my view for construing the

agreement as not of assignment of copyright, is that while the

defendant No.1 had declared that the book was to be co-authored by

3-4 others besides her, the plaintiff did not deem it necessary to

make any further inquiries and to have the agreement signed from

the other co-authors also. There could be no assignment of

copyright without the signatures of all the co-authors/contributories

of the defendant No.1. An assignment of copyright under Section 19

is valid only if it is in writing signed by the assignor or his authorized

agent. This is a strong indicator of the plaintiff also at the relevant

time having merely intended acquisition of rights to publish the book

and having not intended to take assignment of copyright in the

future book. Nothing prevented the plaintiff in the agreement which

if itself had got printed to use the same language as in Oxford

University Press. The counsel for the defendants relied on K.P.M.

Sunderam v Rattan Prakashan AIR 1983 Delhi 461 to contend

that, prima facie, without downright payment, no assignment of

copyright can be inferred. This was followed in Deshmukh & Co v

Avinash Vishnu Khandekar 2006(32) PTC 358 (Bom). However,

since I have on prima facie reading of clause of agreement found the

same to be a publishing agreement, I do not advert to this aspect.

17. The plaintiff has not pleaded and argued that as a publisher it

is entitled to so restrain the defendant No.1. The old Specific Relief

Act, 1877 in Section 21 thereof contained an illustration of an

agreement between an author and a publisher as of agreements not

specifically enforceable.

18. There is, of course, a negative covenant in the agreement

between the plaintiff and the defendant No.1 whereunder the

defendant No.1 had agreed not to be directly or indirectly interested

in any other similar book as may adversely affect the book subject

matter of the agreement. However, the plaintiff has neither pleaded

nor argued for enforcement of the said negative covenant under

Section 42 of the Specific Relief Act. In fact, the counsel for the

plaintiff on initial inquiry had denied that there is any such negative

covenant. The plaint in para 12 does not even refer to the negative

covenant while setting out therein the key terms of the agreement

relevant to the suit.

19. Though the plaintiff, on my aforesaid prima facie finding,

would not be entitled to sustain the interim relief but nevertheless

prima facie findings have to be given with respect to the competing

claims of the parties as to whether the book which had come into

existence is the same book with respect to which the agreement was

entered into.

20. Arguments had been addressed on this aspect with respect to

the index, format and content of the book. It is difficult for persons

not acquainted with the subject to give a finding with respect to

whether the work which has come into existence is the same as the

work with respect to which the agreement was entered into.

However, in my view, the said questions in a matter such as the

present one are irrelevant. When an author in a specialized field

enters into an agreement say of assignment of copyright in a future

work, the author cannot be heard to say that the work which has

been produced is different from the work with respect to which the

agreement was entered into. Assignment of copyright cannot be

permitted to be defeated on such pleas. The description of the work

at the time of entering into the agreement can never be precise and

has to be general in nature inasmuch as then the concept, format

and contents are all in the mind of the author and which cannot be

gazed by another. When such an author instead of producing the

work for the person with whom he has entered into the agreement,

produces a work claiming it to be different from the work for which

he had entered into the agreement, it has to be generally believed

that the work produced is the same as the work for which the

agreement was entered into. It would be a different matter if the

author was at the time of entering into the agreement itself notify

the other party that besides the future work subject matter of the

assignment, the author had conceived or was in the process of

producing some other work also. The defendant No.1 in the

present case did not make any such disclosure. Not only so the

defendant No.1 did not even intimate to the plaintiff that she had

abandoned the work with respect to which the agreement was

entered into or had thought of something different. In the absence

of the same, the conduct of the defendant No.1 in collusion with the

defendant No.2 which is none other than an ex employee of the

plaintiff and with whom the defendant No.1 was in touch as a

representative of the plaintiff, was dishonest. The agreement in the

present case as well as in Oxford University Press (supra)

contained a negative covenant as aforesaid. The said negative

covenants are incorporated in the agreement for this reason only

that it is difficult to describe the future work with precision, and to

prevent the author from taking any advantage of lack of such

precision and which in turn is also attributable to the author. Thus, I

hold that if the agreement had been of assignment of copyright, the

plaintiff would have had a prima facie case restraining the

defendants notwithstanding the pleas of the work being different.

The authors on specialized subject such as the defendant No.1 can

write on their subject only and no other and cannot be heard to take

such pleas.

21 I also do not find any prima facie case in favour of the

defendant No.1 on its plea of the agreement being without

consideration or having been abandoned or of having expired.

Reciprocal promises can form consideration for each other. In the

present case the promise of the plaintiff to bear the publication cost

and to pay royalty as mentioned to the defendant No.1 was the

consideration for the defendant No.1 to have agreed to assign

publishing rights to the plaintiff. I also do not find that the time was

the essence of the agreement or that on the expiry of 365 days

mentioned in the agreement for the book to come into existence, the

agreement came to an end. Even otherwise, under the law, no

agreement comes to an end merely by expiry of time and requires

cancellation/revocation by the parties. The nature of the agreement

is such so as to not make the time the essence of the agreement.

22. Without any express conduct having been shown on the part of

the plaintiff, it cannot also be urged that the plaintiff had abandoned

the agreement. The plaintiff under the agreement was not required

to do anything till the defendant No.1 intimated the plaintiff of the

completion of the work. The period of one year in the present case

expired in September, 2004. In my view, the period of about two

years thereafter when the book was published cannot be,

considering the nature of the contract and the work to be done there

under, be described as the period in which the agreement would

become stale. The publishers who have entered into such agreement

without any financial commitment cannot be expected to breathe

down the neck of the authors or to push the authors into publishing

within the time of 365 days. In any case the plaintiff has filed

affidavits of its employee to the effect that they were in touch with

the defendant No.1 and the defendant No.1 was always intimating

that the work was in progress. These aspects are to be subject to

trial.

23. I having found the agreement between the parties to be of an

author and not of an assignment of copyright do not consider it

necessary to deal with the argument of the defendants of the

agreement been onerous or inconceivable. I may notice that the

counsels have relied on plethora of case law and other literature with

respect to such contracts and practice of trade, on the question of

time being of essence of contract, on onerous contracts and on the

aspect of contracts in restraint of trade. I do not consider it

necessary to burden this order with the same, in view of my findings

above. The counsel for the defendants has also addressed the

arguments on as to how the claim of the plaintiff is in restraint of

trade. In my view, the said arguments are also not relevant for

adjudication of this application. If it had been found that there has

been an agreement of assignment of copyright, there would have

been no question of restraint of trade inasmuch as the plaintiff would

then have been entitled to protect its copyright. Moreover, the

injunction in the present case is claimed on the basis of infringement

of copyright only and not on the basis of the actions impugned of the

defendants 2 and 3 and for which a separate suit for damages is

pending.

24. Even on the ingredients of irreparable loss and injury

and balance of convenience I do not find the plaintiff to be entitled to

sustain the injunction. It is the admitted position that the book

authored by the defendant No.1 is ready and has been published. It

is the allegation of the plaintiff that the defendant No.1 has violated

the order of injunction of this court. The injunction has already been

in operation for the last one and a half year. The documents filed by

the plaintiff themselves show the life of the book to be of 3-5 years.

If the injunction is to be continued, considering the normal time

taken in disposal of such suit, the effort of the defendant No.1 of

authoring the book would be rendered useless. On the contrary for

the plaintiff the agreement with the defendant No.1 was a

commercial transaction in connection with its business. Of course, it

can be urged that with a successful book in its kitty, the future

prospects of the plaintiff would have stood to benefit. But the same

can also be gathered from the success of the book published by the

defendants No 2 and 3. If it is found that the book has done well and

would have made value addition to the plaintiff as a publisher, the

same can be taken into consideration while computing the damages,

if the plaintiff ultimately succeeds in the suit. During the pendency

of the suit, several efforts to settle the matter appear to have been

made though they do not bear fruit. Thus, it is not as if, instead of

defendants No 2 and 3, the plaintiff can be permitted to publish and

sell the book. It is the case of the defendants that plaintiff has

already published a competing book. The effect of injunction if

continued would be to make the book valueless in another one and

half to two and half years from now. The balance of convenience is

thus not in favour of grant/continuance of injunction.

25. The counsel for the plaintiff has also argued that the defendant

No.1 being in breach of the injunction order ought not to be heard.

However, in view of the order of the Division Bench in Appeal

(FAO(OS)164/2008) the said argument is no longer available to the

plaintiff.

26. I, therefore, find that IA.No.4247/2007 of the plaintiff is liable

to be dismissed and IA.No. 6613/2007 of the defendant is entitled to

succeed. However, seeing the contentious nature of the litigation

and further considering the fact that the ex parte order has been in

force for one and a half years and with a view not to change the

ground situation if the plaintiff decides to take the matter in appeal, I

deem it expedient to make this order effective w.e.f. 26.09.2008.

Nothing contained herein shall be deemed to be an expression on

merits at the time of final adjudication.

                                            RAJIV SAHAI ENDLAW
September 18, 2008/M                             (JUDGE)