Gotham Entertainment Group Llc & ... vs Diamond Comics Pvt. Ltd.
2009 Latest Caselaw 5059 Del

*         HIGH COURT OF DELHI : NEW DELHI


+ IA No.12890/2006, 672/2007 & 4669/2002 in CS (OS) No.229/2002


Gotham Entertainment Group LLC & Ors.           ......Plaintiffs
                   Through: Mr. Gaurav Bahl, Adv.

                      Versus

Diamond Comics Pvt. Ltd.                         .....Defendant
                   Through: Mr. Amarjit Singh, Adv. with
                            Mr. Dhruv Bhagat, Ms. Navneet Momi
                            and Ms. Surpeet Kaur, Advs.

                      Judgment reserved on:   25th November, 2009
%                     Judgment decided on :    8th December, 2009


Coram:

HON'BLE MR. JUSTICE MANMOHAN SINGH

1. Whether the Reporters of local papers may
   be allowed to see the judgment?                 No

2. To be referred to Reporter or not?              Yes

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

MANMOHAN SINGH, J.

1. By this order I shall dispose of three applications, i.e.

two filed by the plaintiffs under Section 151 of the Code of Civil

Procedure, 1908 (hereinafter referred to as 'CPC') and the third

filed by the defendant under Order XXV Rule 1 of the CPC.

2. The brief facts in order to decide these three

applications are as under :

(a) The plaintiffs have filed the aforesaid suit seeking a

judgment and decree of perpetual injunction restraining the

defendant from publishing or printing the copyright character of

the plaintiffs viz. SPIDER-MEN, BATMAN and TARZAN or any

character bearing resemblance to the above copyright character

in any magazine, periodical, journal or any other publication

whatsoever and for infringement of the plaintiff's copyright and

have further sought a decree of perpetual injunction restraining

the defendant from using in relation to any magazine, periodical,

journal, comic book or any other publication or article or

stationery, the trademark SPIDER-MAN and other mark

identical with and/or deceptively similar to the trademark so as

to infringe the plaintiff's trademarks.

(b) The plaintiffs have also sought a decree of perpetual

injunction restraining the defendant from using in relation to

any magazine, periodical, journal, comic book or any other

publication or article or stationery the trademark SPIDER-MAN,

BATMAN and TARZAN or any other mark identical or

deceptively similar to the above said trademarks so as to pass off

such magazine, periodical, journal, comic book as the plaintiffs'

magazine, periodical, journal, comic book bearing the trademark

SPIDER-MAN, BATMAN and TARZAN. The plaintiffs have

further sought rendition of accounts, damages and various other

reliefs in the suit.

3. In the first application IA No.12890/2006, the plaintiffs

have stated that they desired to file the original documents which

are relied upon world wide by them in aid of their rights including

rights forming subject matter of the present suit.

4. In the second application IA No.672/2007, the plaintiffs

have sought the leave of this court to file certain

original/additional documents which are already filed alongwith

the list of documents. It appears from the record that vide order

dated 21st August, 2006 the plaintiffs were granted four weeks' time

to file the original documents subject to cost of Rs.50,000/-.

5. Learned counsel for the plaintiffs has submitted that the

cost has been paid, however, since the plaintiffs are from outside

India, it took some time to file the original/additional documents

and they are filed beyond the period granted by the court. As far as

the additional documents are concerned, learned counsel for the

plaintiffs has argued that these documents are in the nature of legal

proceeding certificate and renewal of trademarks copyright

registration certificate and copies of agreement and licenses etc.,

some of them are already on record, therefore, no prejudice would be

caused to the defendant if the same are taken on record.

6. Both the applications have been strongly opposed by the

learned counsel for the defendant, who has argued that the

order dated 21st August, 2006 is a very specific order wherein the

plaintiffs were only directed to file the original documents

within four weeks.

7. It is stated by him that neither have the documents

been filed on time nor was there was any order by the court for

filing of the additional documents. It has also been argued by

him that these documents were already in power and possession

of the plaintiffs but no valid reason has been assigned by the

plaintiffs as to why these documents were not filed by them

alongwith the plaint.

8. It has further been argued that some of the documents

as alleged by the plaintiffs are actually in the nature of affidavits,

which cannot be treated as documents and are not the original

documents. As per direction of the court vide order dated 21st

August, 2006.

9. Thus, it is pleaded that both the applications are totally

misconceived, and could not have been filed under Section 151

CPC in the presence of the specific provision of Order 7 Rule 14

CPC. Lastly, it is argued that documents referred in the two

applications and filed with the plaint alongwith the list of

documents are not the original documents already filed but these

are, in fact, additional documents which have been filed contrary

to the order dated 21st August, 2006.

10. In support of his contentions, he has referred to the

order passed by this Court in CM (Main) No.231/2009 Haldiram

(India) Pvt. Ltd. & Ors. Vs. M/s. Haldiram Bhujiawala & Anr.

passed on 8.4.2009 by Manmohan, J. and Asia Pacific Breweries

Vs. Superior Industries, 2009 (40) PTC 108 wherein the prayer

of taking the documents on record has been rejected by the court.

11. Now dealing with the submissions of the parties, the

fact of the case is that the plaintiffs have filed the suit for

infringement of copyrights as well as trademarks, which are

being infringed by the defendant as per the case of the plaintiffs.

No ex parte interim order is passed in favour of the plaintiffs.

The interim application being IA No.1009/2002 is pending for

disposal.

12. As regards the documents filed by the plaintiffs, it

appears that the plaintiffs have filed copies of some of the

documents which are photostat copies and some which are

original documents alongwith with the plaint. A second set of

documents was filed alongwith the list of documents dated 30th

October, 2006 i.e. after the expiry of more than six weeks from

the date of the order when time was granted by the court vide

order dated 21st August, 2006.

13. Another set of documents have been filed on 18th

January, 2007 by the plaintiffs which are mostly certified copies

of the registration certificates, renewal certificates and copyright

registration and the same have been filed after the expiry of

about three and a half months. Undisputedly, there are

averments with regard to the registration of copyrights and

trademarks as mentioned in the plaint.

14. The case of Haldiram's (supra) relied upon by the

learned counsel for the defendant is different as compared to the

present matter. In that case, the suit was filed in 1992 and the

application for filing the documents was filed after the expiry of

ten years. Yet another application for framing the additional

issues was filed on 20th January, 2009 despite the direction issued

by Supreme Court to District Judge to dispose of the suit

preferably within six months from 1st October, 2008. Inspite of

the direction issued by the Apex Court, various applications

were filed by the plaintiff with an aim to defeat the spirit of

orders of the Apex Court and to delay the matter. The application

for additional documents under these circumstances was refused

and CM(M) was also dismissed. The order passed in that matter

is based upon its own facts hence cannot be applied to the facts in

the present case.

15. The second order cited by the defendant in the case of

Asia Pacific Breweries (supra) can not be applied to the facts of

the present case as in the first para of the order itself, it is

mentioned that the plaintiffs are seeking to file around 70

documents alongwith affidavit of the witnesses. But in the

present case, no such situation has arisen as the issues in the

matter are yet to be framed. Further, most of the documents

filed by the plaintiffs are certified copies of legal proceeding

certificates, renewal certificates and copyright registration

certificates which are admissible in evidence under Section 137 of

the Trademarks Act, 1999 and under the Copyright Act, 1957

and rest of the documents are in the nature of agreement/licenses

and affidavits alongwith copies of agreement are filed on the

basis of the pleadings.

16. I find no force in the contention of the defendant that the

application is not maintainable as it should have been filed under Order

7 Rule 14 CPC in view of the settled law that it is the substance of the

application that matters and not the nomenclature given in the cause title

of the application. Under Section 151 CPC, the court has inherent

power to consider an application wherein a wrong provision is

mentioned. It cannot be an obstacle for granting the relief made out

from the contents of the application.

17. It is settled law that no party can be permitted to sidetrack the

main issue and be allowed to control the court proceedings, either by

going to elementary procedural law or by pressing hyper-technical

issues with the sole motive of delaying the disposal of the main suit.

18. Under Order 7 Rule 14 CPC, where the plaintiff relies

on any documents in support of his claim, he should enter such

documents in a list to be annexed with the plaint and the court

can allow the production of such documents during the suit on

sufficient cause being shown for non production. (1979 Mah LJ

236). If the suit relates to a document, the furnishing of a copy of

such document is necessary or imperative in the interest of

justice. The court can in exercise of its inherent powers direct the

plaintiff to furnish a copy of the documents (Sreenivas Basudev

V. Vineet Kumar Kothari, AIR 2007 Gau 5).

19. In case the said documents are not taken on record, the

plaintiff will suffer irreparable injury and grave prejudice would

be caused on merits of the case.

20. After thoughtful consideration, I am of the view that in

the interest of justice, equity and fair play, these applications are

allowed and the documents filed by the plaintiffs are taken on

record subject to payment of costs of Rs.10,000/- which shall be

paid by the plaintiffs to the defendant within four weeks from

the date of this order. Both the applications are disposed of with

these directions.

IA No.4669/2002 (under Order 25 Rule 1 CPC by the defendant)

21. As far the present application is concerned, it is stated

that plaintiff Nos.1, 2 and 4 are companies incorporated under the

laws of USA and they have their principal place of business at

USA. None of the plaintiffs have any branch office in India nor

any of the said plaintiffs are residing in India.

22. It is submitted in this application that the plaintiffs

have no assets, tangible or intangible, within the jurisdiction of

this court nor have the plaintiffs provided any evidence in this

regard. It is pleaded that in case the suit is decided against the

plaintiffs, the defendant would not be able to recover the costs of

the proceedings from the plaintiffs.

23. It is argued by the learned counsel for the defendant on

merit that since the plaintiffs have failed to establish their right

and reputation in the comic character SPIDER-MAN, BATMAN

and TARZAN in India, there is every likelyhood that the

plaintiffs would not be forthcoming if the suit is decided against

them and the defendant would not be able to recover the cost of

the proceedings.

24. It is also argued by the learned counsel for the

defendant that the defendant has a strong prima facie case in its

favour. Balance of convenience also lies in favour of the

defendant and against the plaintiffs.

25. During the course of the arguments, the counsel for the

defendant has argued that the copyrights in relation to the

characters have already expired and the said fact has not been

disclosed by the plaintiffs in the plaint. The defendant prayed in

this application that the plaintiffs be directed to deposit a

security amount of Rs.10 lac as estimated cost of the trial

incurred and likely to be incurred by the defendant.

26. In the reply filed by the plaintiffs, it is contended that

the defendant has no valid defence in the suit and the plaintiffs

are world renowned entities with a substantial global presence

and worldwide reputation and goodwill.

27. It is also denied by the plaintiffs that they have failed to

establish their right and reputation for their comic characters

SPIDER-MAN, BATMAN and TARZAN in India.

28. The learned counsel for the defendant has referred to

the judgment reported as S A Brothers & Co. & Anr. Vs. John

Bartholomow & Son Ltd. & Ors., 88 [2000] DLT 425 wherein the

respondent No.1 in that case was directed to furnish a security of

Rs.6000/- in trial court within three months. The said judgment,

however, has been passed as per its own facts. In that case, there

were rival claims and counter claims between the parties and the

said order was passed against the respondent No.1, who was

outside India.

29. Second case cited by the defendant is Revlon Inc. &

Ors. Vs. Kemco Chemicals & Ors. AIR 1987 Calcutta 28 wherein

the High Court of Calcutta directed the plaintiff to furnish

security to the extent of Rs.50,000/- by way of bank draft. In this

case, there was controversy between the parties regarding the

representative capacity of the authorised person and in spite of

repeated demands on behalf of the defendant, inspection of the

original power of attorney was not given to the defendant.

Moreover, the plaintiff was admittedly outside India.

30. In the third judgment referred by the defendant

reported as Hearst Corporation Vs. Dalal Street

Communication, 1996 PTC (16) 133, the Calcutta High Court

while issuing the interim order directed the plaintiff to furnish

security to the extent of Rs.50,000/- by referring the abovesaid

decision of Revlon case (supra).

31. The case of the plaintiffs is for infringement of

copyrights as well as trademarks against the defendant on the

basis of registrations granted in their favour. The plaintiffs are

claiming the relief of rendition of accounts of Rs.20 lac as well as

damages to the tune of Rs.1 crore from the defendant.

Admittedly, the defendant has not filed any counter claim against

the plaintiffs for recovery of any amount nor any suit is stated to

be pending.

32. I agree with the view taken by the Calcutta High Court

in the two decisions referred by the defendant. The rule,

however, does not take away the discretion of the Court with

respect to the quantum of the amount. The amount of Rs.10 lac as

security amount prayed in the application by the defendant

appears to be unreasonable. The defendant is only entitled for the

costs if the suit is dismissed as presumed by the defendant,

therefore, I direct the plaintiffs to deposit Rs.50,000/- within

two weeks with the counsel for the plaintiffs on record as security

who will hold the said amount and will invest the same in a fixed

deposit not exceeding one year with a nationalized bank and file

the photocopy of fixed deposit receipt before this court alongwith

an undertaking by way of affidavit of the counsel on record that

in case any cost is awarded in favour of the defendant, the same

shall be paid accordingly against the said amount.

With these observations, the application is disposed of.

List the matter for disposal of IA No.1009/2002 and

4669/2002 at the end of short cause matters on 22.12.2009.

MANMOHAN SINGH, J.

DECEMBER 8, 2009 sa.