Pee Pee Publishers & Distributors ... vs Dr. Neena Khanna & Anr.
2010 Latest Caselaw 3421 Del

*             HIGH COURT OF DELHI : NEW DELHI

+    IA No.12408/2007 & IA No.4402/2008 in CS(OS) No.2157/2007

%                                 Decided on:    July 22, 2010

PEE PEE Publishers & Distributors (P) Ltd.        ...Plaintiff
                    Through: Mr. Jagdish Sagar, Adv. with Mr. Alok Jain,
                               Adv.

                       Versus

Dr. Neena Khanna & Anr.                           ....Defendants
                   Through : Ms. Jyoti Taneja, Adv. with Mr. Shine
                             Joy, Adv.

Coram:

HON'BLE MR. JUSTICE MANMOHAN SINGH

1. Whether the Reporters of local papers may
   be allowed to see the judgment?                                  Yes

2. To be referred to Reporter or not?                               Yes

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

MANMOHAN SINGH, J.

1. This order shall dispose off IA No.12408/2007 and IA No.

4402/2008 filed by the plaintiff in CS (OS) No. 2157 of 2007.

2. The brief factual matrix of the matter can be described as

under:

a) That the plaintiff has filed the present suit bearing no. 4402 of

2008 restraining the infringement of copyright seeking the

prayers for permanent injunction against the defendants from

infringing the copyright of the plaintiffs which the plaintiff

claims to be the owner and also against the defendant no. 1 for

the breach of agreement which the plaintiff claim to have been

done by the defendant no.1.

b) The plaintiff claims to be a private limited company

incorporated in the year 2003 engaged in the business of

publishing books including medical books and other ones of

various kinds. The Defendant no, 1 is stated in the plaint to be

a professor of Dermatology and Venereology at All India

Institute of Medical Sciences. The defendant no. 1 is

described as the author of the book titled as "Synopsis of

Dermatology and Sexually Transmitted Diseases".

c) The grievance of the plaintiff arises out the unhealthy

contractual relations whereby the contract entered between the

plaintiff and defendant no. 1 has been breached and the same

is leading to violation of the copyright of the plaintiff as per

the plaintiff. It is contended in the plaint that the plaintiff had

entered into an agreement with the defendant no. 1 in the year

2003 dated 25th August 2003 in relation to the book titled as

"Illustrated Synopsis and Dermatology and Sexually

Transmitted Diseases" (hereinafter referred to as the subject

work) and the said agreement was superseded by the

agreement dated 1st September 2005. The relevant clause of

the agreement dated 25th August 2003 has been set out in the

plaint which is stated as under:

(i) "3. The copy right of this work rests with the author(s) ant author(s) willingly assign(s) the right to publisher to publish the work, and to reassign the

rights of co-publishing, translation adaption as may be considered necessary by the publisher."

(ii) "4. The author(s) however agree not to assign the copy right to anyone else during the validity of this agreement without the explicit written permission of the publisher."

(iii) "12. Author(s) are free to with draw the book from publisher after two years of publication, if they not satisfied."

The plaintiff alleges that the said agreement dated 2003

and 2005 assigns the copyright more specifically the right to

produce, publish the book, its editions thereof and the

translations of the said book to the plaintiff.

d) The plaintiff describes Defendant no. 2 as a subsidiary of

multinational publisher which induces successful authors to

breach their existing agreements with the publishers and

thereafter enter into agreement with the said authors itself.

The plaintiff has also given one instance of the same to state

that the Defendant no. 2 is not indulging into ethical practices.

e) The plaintiff has based its cause of action by stating that the

defendant no. 1 vide a letter dated 28.3.2007 has withdrawn

the said rights in the book from the plaintiff with effect from

1st April 2007 and the same has been done by invoking the

clause of the agreement which reads as under :

"12. Author/s are free to withdraw the book from publisher after two years of publication if they are not satisfied."

The plaintiff states that the defendant no. 1 has not assigned

the any reason for any dissatisfaction with the work of the plaintiff.

Further, the plaintiff contends that the said withdrawal is unlawful

as the same is based on the wrong interpretation of the clause 12.

f) The plaintiff has averred in the plaint that the clause 12 of the

agreement is to protect the moral rights of the defendant

author and cannot be invoked as enabling the defendant no. 1

to rescind the contract. The plaintiff impugns the said

termination by stating that the clause 12 could not be

otherwise invoked due to the reason that 2 years have not

elapsed after the subsequent agreement dated 1 st September

2005 came into existence. The plaintiff thus states that the

said with drawl is unlawful and there is a clear breach of the

contract.

g) The plaintiff also states that on April 27, 2007, there was a

discussion of the plaintiff with that of the defendant no. 1 to

sign another agreement which enabled the defendant to assign

the rights to anyone after 5 years which the defendant had

accepted at that time but subsequently in the year in October

2007 changed her stand as she is bent upon to infringe the

work of the plaintiff and cause losses to the plaintiff.

h) The plaintiff has stated that the cause of action in the suit first

accrued on 16th October 2007 when the defendant no. 1

informed her intention to breach her agreement with the

plaintiff. The plaintiff has thus filed the present suit and along

with the same, plaintiff has also filed IA no. 4402 of 2008

seeking temporary injunction against the defendants.

i) The suit was first listed on 30.10.2007 when this court had

issued summons in the suit and notice is in the application for

injunction.

3. Upon service of summons, the defendants appeared and have

filed separate written statements in the matter. The defendants have

raised several defenses which can be briefly summarized as under:

a) The defendant no. 1 informed that she is a professor at AIIMS

and a renowned doctor of Dermatology and Sexually

Transmitted Diseases in India. The defendant no. 1 had

entered into the agreement dated 25 th August 2003 for

publication of the book as an encouragement to the newly

established publisher with a right to withdraw the work after 2

years of publication.

b) The defendant stated that the said work titled as "Illustrated

Synopsis of Dermatology and Sexually Transmitted Diseases"

was published by the plaintiff on 31 st March 2005 and the

letter written by the defendant no. 1 to the plaintiff has been

after 2 years of the publication which was on 28th March 2007

calling off the work from the plaintiff by invoking clause 12

of the contract.

c) The defendant has contended that there is no superseding of

the contract dated 25th August 2003 in the year 2005. Rather

the agreement dated 1st September 2005 is related to the

separate work titled as "Sexually Transmitted Diseases (Atlas

and Text). It is wrong to suggest that the agreement dated 25 th

August 2003 was ever superseded by the agreement dated 1 st

September 2005. The chain of events as the first publication

of the subject work is 31st March 2005 which is the date prior

to the signing of another agreement in September 2005

falsifies the contention of the plaintiff. Moreover, as per

defendants, there is no mention of the earlier agreement in the

agreement of 2005. The obligation and period prescribed in

the two agreements make them altogether different

agreements. There is no interconnection between the two.

d) The defendant no. 1 submitted a different story and contended

that the reason for recalling the work from the plaintiff is due

to dissatisfactory services. It is stated that the work of the

defendant could not be made available to the public in a

timely manner and was not done in the manner that it should

have been done. The defendant has alleged that the plaintiff

did not pay the complete royalty, timely royalties, did not pay

royalty on the gross price etc.

e) In contradiction to the plaintiff's pleas in the plaint, the

defendant no. 1 has contended that she had given the notice

dated 28.3.2007 calling upon the plaintiff to refrain from

further publication of the book in view of her withdrawal. The

said letter also gave the time to the plaintiff to phase out the

existing stock lying with the plaintiff as on 31 st March 2007

under intimation by the defendant. The said letter is filed with

the list of the document and the contents of the said letter are

reproduced as under :

"Contents of the letter dated 28.3.2007" are

"In view of the terms of the agreement, I hereby withdraw the rights granted to your company under the said agreement with effect from 1 st April 2007 (vide clause 12 of the said agreement). You are therefore requested to please refrain from publishing, co-publishing, translating and adapting the contents of the stated book either partially or wholly in any form with effect from 1st April 2007".

f) The defendant further submitted that the letter dated

28.3.2007 was received and replied by the plaintiff on

26.4.2007 by counter offering another agreement intended for

second edition and also gave the time for withdrawal of 5

years.

g) The defendant no. 1 had on 22nd May 2007 already entered

into another agreement related to the same title with

Defendant no. 2 for publication in the month of October 2007.

h) The agreement dated 25th August 2003 stands terminated and

all the rights, title and interest in the work reverted back to the

defendant no. 1 and it has been further encumbered by way of

subsequent agreement with the defendant no. 2.

i) The plaintiff is left with no right to sue or seek injunction

against the defendant no. 1 and 2 who has legitimately

withdrawn the work and thereafter entered into the agreement.

j) The agreement dated 25th August 2003 was not an assignment

but a permissive right to publish and sell the work at the

behest of the defendant. The said agreement is a license as per

the defendant and cannot be stated to be an assignment.

k) The defendant counter attacked by stating that the invocation

of clause 12 is proper and appropriate and the interpretation

given by the plaintiff to its convenience is wrong in as much

as the moral rights are only relating to right to paternity,

integrity and rights against the distortion and mutilation. The

said rights do not advert into the question of economic right or

gives any room for withdrawal of the work at the instance of

the author.

l) The plaint is based on the wrong cause of action of 16 th

October 2007 when the defendant has already withdrawn the

work vide its letter dated 28th March 2007.

m) The defendant no.2 supports the stand of the defendant no. 1

by claiming itself to be the leading publisher and has stated to

have published the book of defendant no. 1 on 8 th October

2007 and within two days 3000 copies of the books were sold

and the same are still being continued.

n) The defendant no. 2 claimed that the copyright vests in it after

the subsequent agreement of defendant no. 1 with defendant

no. 2 after the withdrawal of the work from the plaintiff.

Further, the defendant no. 2 relied upon the same defenses

which are mentioned in the written statement filed by the

defendant no.1.

4. After completion of pleadings, the plaintiff has filed

application seeking amendment of the plaint to include certain

additional facts claiming copyright on the line diagrams which are

images of the human body represented in the book. To support the

claim, the plaintiff has filed the affidavit of the person namely Mr.

Avdhesh Kumar Maurya who claims to have created the art work under

the employment of the plaintiff. The plaint has been amended to include

a table showing that the defendants have made infringing use of certain

drawings. The application under Order VI Rule 17 was filed by the

plaintiff to amend the application I.A No. 4401/2008 and the

amendment was allowed vide order dated 08.05.2009.

5. By adding aforementioned paras in the plaint, the plaintiff

has contended that the defendant not merely the infringes the copyright

arising out of the agreement but also the separate copyright of the

plaintiff that vests in the line diagrams which is the independent work of

the plaintiff. The plaintiff has filed some documents to show the pictures

of the diagrams.

6. The plaintiff has also filed the fresh injunction application

bearing IA No. 4402 of 2008 to seek injunction on the basis of the

independent copyright. The Defendants have filed the amended written

statements controverting the pleas of the plaintiff and stating that there

is no copyright of the plaintiff in the line diagrams.

7. Both IA No.12408 of 2007 , and IA No. 4402 of 2008 filed

by the plaintiff came up for hearing and the matter was heard at

length. Mr. Jagdish Sagar Adv appeared on behalf of the plaintiff. Ms.

Jyoti Taneja Advocate appeared on behalf of the defendant.

8. Learned counsel for the plaintiff has made the submissions in

support of the claim of the plaintiff which can be summarized as under:

(i) Mr. Jagdish Sagar, Learned counsel for the plaintiff read

the plaint and argued that the agreement dated 25 th

August 2003 was an assignment of the copyright.

Learned counsel referred to section 19 of the copyright to

state that the assignment is done as per the mode of the

assignment prescribed under the act. The term of the

assignment as stated in the agreement is the "Legal term"

and the learned counsel states that thus, the copyright

vests with the plaintiff and the defendant cannot revoke

the said assignment by invocation of any clause of the

agreement.

(ii) Learned counsel for the plaintiff further argued taking

the submission of assignment forward that once there is

an assignment, the invocation of clause 12 on withdrawal

of the work from the assignee has to be read along with

the whole contract in as much as if there is a withdrawal

of the work given to the defendant as a matter of right,

then the assignment would become meaningless.

(iii) Learned counsel for the plaintiff strenuously argued that

the interpretation of clause 12 cannot be in the manner

done by the defendant. Learned counsel stated that the

clause 12 has been inserted as an exceptional case to

invoke the moral rights of the defendant and if the work

is not satisfactory, only then the defendant can invoke

moral rights clause and not ordinarily for any economic

purpose.

9. Learned counsel has relied upon the Extract from World

Copyright law by J.A.L. Sterling, Sweet and Maxwell, 1998 which are

as under :

"8.06 The retraction right is the right of the author to withdraw his work from publication because of the changed opinion. The 40 years ago an author of a work of criticism may have stated that public interest in Picasso's work would cease on the artist death. In view of the continued interest, the author may wish to withdraw from circulation copies of the previous book. This will not be possible in many cases, but where, for instance, a publisher is still reproducing and selling the old work, the moral right of retraction gives the author the right to prevent further reproduction and sales. However, where this right is recognized, the author must indemnify the publisher and usually give first offer of the revised edition to the same publisher.

The retraction right is recognized in some of the civil systems laws (eg. France) but is not mentioned in the Berne Convention"

"The Right of Reconsideration or Withdrawal . Article L.121.4(French Code) provides that even where the author has ceded the right of exploitation and even after the publication of the work, the author enjoys the right of the reconsideration or withdrawal (Repentir ou retrait) in so far the person to whom the exploitation right has been ceded is concerned. This however is subject to indemnity for the damage caused by the exercise of the right, and for the obligation to give first

offer of the assignee (cessionnaire) concerned."

10. Learned counsel also relied upon another literature with one

report commissioned by European commission's internal market,

Directorate General titled as "Study Contract concerning moral right in

the context of the exploitation of works through digital technology" by

Mrs. Marjut Salokannel and Mr. Allan Strowel in April 2000 to state the

moral rights are recognized in various European States and also in

England.

11. Learned counsel for the plaintiff also relied upon the dicta of

Amar Nath Sehgal v. Union of India, 2005 (30) PTC 253 wherein the

learned counsel for the plaintiff sought to contend that the moral rights

are recognized by this court and thus the right of retraction is a moral

right analogous to other ones, this court should interpret the clause 12

correctly which is a moral right as against the economic right.

12. Learned counsel for the plaintiff thus stated that the

assignment thus remains a valid one and the withdrawal of the same is

bad and the plaintiff is entitled for injunction against the defendant no. 1

in terms of the prayers as she is intending to create the third party

interests. The learned counsel for the plaintiff submitted that the

agreement dated 1st September 2005 has actually superseded the earlier

agreement by which, the termination at all or the previous one is not

material. The counsel also argued that the date of accrual of any such

right to withdrawal would be 2 years from the agreement dated 2005 and

not from the previous one in view of the contention that the agreement

was actually superseded. The learned counsel for the plaintiff also

argued on the aspect of subsequent development that there are

categorical averments as to the creators/ authors of the line diagrams by

filing the affidavits of the Shri Avdhesh Kumar Maurya. The counsel

submitted that the plaintiff has become the owner of the said line

diagrams by way of the work in the course of employment by virtue of

section 17 of the Copyright. Accordingly, the counsel for the plaintiff

submitted that the reproduction of the said line diagrams amounts to

infringement of the plaintiff's copyright and is liable to injunction by

the orders of this court.

13. The counsel thus summed up his submissions that the prima

facie case lies in favour of the plaintiff as the plaintiff is the owner of

the copyright in right to publication by way of assignment and line

diagrams being the owner of the copyrighted work. The balance of

convenience also lies in favour of the plaintiff as the plaintiff will be

more inconvenienced if the defendant no. 1 enters into the publishing

contract with another publisher when the defendant no. 1 is continuing

with the plaintiff since the year 2003 as against the defendant no. 1 who

is trying to enter into contract recently till filing of the suit. The

irreparable loss would be caused to the plaintiff as against the

defendant. Thus, this court as per the plaintiff's counsel should grant the

interim orders restraining the defendants from infringing the plaintiffs

copyright and also restraining the defendant no. 1 to entering into any

contract with defendant no.2.

14. Per Contra Ms. Jyoti Taneja, learned counsel for the

defendant has made her submissions which can be outlined in the

following manner:

a) Learned counsel for the defendant submitted that the

agreement dated 25th August 2003 and the agreement dated 1 st

September 2005 are different agreements meant for separate

and distinct work and thus there is no question of any

superseding the earlier agreement. She has supported her

submission due to following reasons :

i) The agreement dated 25th August 2003 mentions the

name of the work " Illustrated Synopsis of

Dermatology and the agreement dated 1st September

2005 mentions the title as Sexually Transmitted

Diseases (Atlas and Text)

ii) That the date of first publication of the work

emanating from first agreement is 31st March 2005 as

against the subsequent agreement which was entered

into in September 2005. The reasoning to this effect is

that the agreement was a publishing agreement to

publish the work which at the time of entering into

agreement was not published. Thus, if the plaintiff's

averment is accepted that the September 2005

agreement superseded the 2003 agreement, then the

publication date ought to be later than the subsequent

agreement which is after 1st September 2005. But it is

not so, which clarifies that they are distinct

agreements.

iii) The 2005 agreement does not make any reference to

the 2003 agreement.

iv) The time period for furnishing the manuscripts in both

the agreements is different.

v) Then subject wise also in addition to title the earlier

work covered the areas of dermatology and sexually

transmitted diseases as against the later work which

covered only sexually transmitted diseases.

The counsel for the defendant thus submitted that the

plea of the plaintiff that the 2005 agreement superseded the

2003 agreement is false and there is no correlation between

the two agreements therefore the termination of the agreement

after 2 year of the publication is not bad.

b) Counsel for the defendant further argued that the date of

accrual of the right to withdraw has to be seen from the date

of the publication of the work which is published on 30 th

March 2005 and thus the agreement is rightly terminated by

the letter dated 28th March 2007

c) The counsel for the defendant submitted that the defendant

no.1 was completely dissatisfied with the plaintiff's execution

of the publication and several reasons were stated including

non publishing of work in a timely manner, non-payment of

complete royalty etc.

d) Learned counsel for the defendant further argued that the

plaintiff's submission to interpret clause 12 as a moral right

which cannot be invoked in the present case is wrong. It is

submitted that the moral right does not require any recognition

in the form of clause 12 of the agreement. Further, it is

submitted that the moral right include right to paternity and

integrity and not the other rights as stated by the plaintiffs.

e) It was argued by the counsel for the defendant that the

agreement between the plaintiff and defendant was that of

publisher and author and the whole agreement has to be read

to in order to understand the real intent of the parties. The

agreement according to the defendant counsel is one of

licensing arrangement and not the assignment and the

nomenclature or usage of the word assignment is immaterial

till the time the intention of the parties is clearly emanating

from the whole reading of the agreement.

Learned counsel relied upon the judgment passed

by Hon'ble Apex court in Vimlesh Kumari Kulrestra vs.

Sambharajrao and Anr. 2008 (I) UJ 0264 at para 13, where

it was held that the agreement has to be read as a whole in

order to infer the real intent of the parties behind the

agreement.

Learned counsel also relied upon the dicta of

Vani Prakashan vs. Abhinav Prakashan, 1991 (1) ARBLR

119 para 9 to support this contention, the relevant para of

judgment is extracted as under:

"We are fortified in this conclusion by the following observation in Copinger Shone James on Copyright 9 th edition at p. 384..But whenever continuous obligations on the part of the publisher - for instance, the payment of royalties to the author - the tendency of the court is to construe the agreement as conferring upon the publisher a conditional license to publish rather than as giving him an equitable title to the copyright."

Further judgment passed in Japee Bros Medical

Publisher V. Dr. Ramaya Raghu & Others, 2008 (38) PTC

212 Delhi is also relied to substantiate the argument that while

interpreting the agreement this court will make an enquiry as

to the nature of the agreement and real intent of the parties by

looking into the essential ingredients of the agreement which

includes the obligations, relation between the parties,

consideration etc.

f) Lastly, Learned counsel for the defendant has made

submissions on the plea of the plaintiff regarding the Line

diagrams in the following manner:

Learned counsel for defendant stated that the

manuscript of the work was submitted by the plaintiff

by a letter dated 18th October 2004 which contained

249 Coloured photographs, 75 coloured and black and

white line diagrams and 171 tables, all these were

submitted prior to the alleged creation of the line

diagrams in the month of November 2004. It is the

case of the defendant that the line diagrams were

already forming a part of the manuscript and thus there

is no question of the piracy or independent creation.

Learned counsel argued that the alleged line diagrams

have been taken from a common source to illustrate

the work. The said representation of human body both

male and female has been taken from Leprosy clinic of

Department of Demato Venerology of the AIIMS. The

said Line diagrams have thus been taken from the

research work of AIIMS namely Leprosy Performa and

not from the plaintiffs. The plaintiff cannot claim any

copyright over another's work.

The counsel also argued that in medical field, there are

very few ways of representing human body and thus

none can claim copyright on the same. The doctrine of

merger of idea with expression shall be applicable in

the present case.

The counsel also submitted that the alleged line

diagrams by the plaintiff have been completely

replaced in the third edition of the book published by

the defendants. Thus, the grievance of the plaintiff

does not survive.

15. The counsel thus summed up the arguments by stating that

there is no prima facie case of the copyright infringement in the absence

of the assignment and there is no irreparable loss to the plaintiff as the

agreement stands terminated and the stocks of the books are already

exhausted and irreparable loss will be cause to the defendants if they are

directed to discontinue the publication of the book which is now being

sold in huge volume and balance of convenience also lies in favor of the

defendants.

16. Before adverting to the submissions of the parties, I deem it

appropriate to discuss the law on the subject.

17. Copyright is a bundle of rights which is meant to encourage

creativity. The author of the book enjoys several rights under the

copyright which include right to publish the work, right to communicate

the work to the public, right to translate the work, right to abridge the

work and many others as stated under the provisions of section 14 of the

copyright Act.

18. The copyright subsists on its creation, however the owner of

the copyright is distinct from the author to whom copyright belongs on

its creation. The author is normally the first owner of the copyright

unless the copyright is created under the circumstances enumerated

under section 17 of the Act which provides for the first owner of the

copyright in different situations.

19. The copyright can be owned by way of the assignment and

the owner by way of assignment can assert the copyright claim. In this

case the plaintiff asserts the copyright more specifically as the right to

publish has been assigned to him by way of the agreement dated 25th

August 2003 and basing upon the same claims the infringement by the

assignor after the assignment.

20. The copyright law is a special law and thus provides for the

mode of the assignment. Section 19 of the Indian Copyright Act

provides for the mode of assignment of the copyright which reads as

under:

"Mode of assignment.-

(1) No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly authorised agent.

(2) The assignment of copyright in any work shall identify such work, and shall specify the rights assigned and the duration and territorial extent of such assignment.

(3) The assignment of copyright in any work shall also specify the amount of royalty payable, if any, to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.

(4) Where the assignee does not exercise the right assigned to him under any of the other sub-sections of this Section within a period of one year from the date of assignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry of the said period unless otherwise specified in the assignment.

(5) If the period of assignment is not stated, it shall be deemed to be five years from the date of assignment.

(6) If the territorial extent of assignment of the rights is not specified, it shall be presumed to extend within India.

(7) Nothing in Sub-section (2) or Sub-section (3) or Sub-section (4) or Sub-section (5) or Sub-section (6) shall be applicable to assignments made before the coming into force of the Copyright (Amendment) Act, 1994."

21. There are various essential ingredients of the valid

assignment which can be briefly summarized as under:

          (i)    The assignment must be in writing;

          (ii)    The assignment must identify the work and specify the

assigned rights, duration and territorial extent;

(iii) The Assignment must provide for royalty payable to the author;

(iv) The period if not stated in the assignment shall be deemed to be 5 years;

(v) The territorial extent if not stated shall be deemed to be India; and

(vi) If the assignee does not exercise the rights assigned within 1 year from the date of the assignment, the same shall be lapsed.

These are certain prerequisites for the valid assignment

prescribed by the Act for the determination of the valid assignment.

Besides the aforementioned essential features, the covenant has to be

read as a whole in order to arrive at conclusion whether the agreement is

an assignment or license.

22. The copyright is the law which was enacted for the

protection of the authors. The same has also been highlighted by our

Hon'ble Supreme Court in dicta of Eastern Book Company and Ors v.

D. B. Modak & Anr, (2008) 1SCC 1 wherein the Hon'ble Court

recognizes the main object of the copyright law is also the protection of

the authors. The apex court observed as under:

"8. The copyright, protection finds its justification in fair play. When a person produces something with his skill and labour, it normally belongs to him and the other person would not be permitted to make a profit of the

skill and labour of the original author and it is for this reason the Copyright Act, 1957 gives to the authors certain exclusive rights in relation to certain work referred in the Act. The object of the Act is to protect the author of the copyright work from an unlawful reproduction or exploitation of his work by others. Copyright is a right to stop others from exploiting the work without the consent or assent of the owner of the copyright. A copyright law presents a balance between the interests and rights of the author and that of the public in protecting the public domain, or to claim the copyright and protect it under the copyright statute"

23. The law of copyright also recognizes the maximum

exploitation of the creativity by providing for several rights and their

modes to assignment and licensing of the rights. The Act thus balances

the two competing interests one is the interest of the author which has to

be protected and side by side is the interest of the publisher or the

assignee which also need not to be hampered.

24. The object of the copyright law has also been discussed by P.

Naryanan in his Book titled "Copyright and Industrial Designs" Third

Edition in the following words:

"1.15 The object of copyright law is to protect the author of the copyright work from an unlawful reproduction or exploitation of his work by others. The long period of copyright encourages authors and artists to create works of the literature, music and art."

25. The object of the law being the protection of the author

makes it a beneficial piece of legislation. It becomes the duty of the

court especially in the cases involving the agreements between the

author and publisher to be mindful and circumspect to infer the true

intent of the parties so that the interest of the author may not be

adversely affected and the correct interpretation to the agreements may

be given.

26. This is the reason for which the courts are time and again

faced with the situations where the courts have to indulge into scrutiny

of clauses of the agreements between the author and publishers and

interpret the agreements accordingly.

27. The principle of construction when the courts are faced with

the situation of looking at the agreement as a whole for the

determination of license or assignment has been elucidated in Copinger

& Skone James on Copyright (Fourteenth Edition by Kevin Garnett

M.A., Jonathan R. James, MA. LLB, Gillian Davies, Ph.D., 1999

Edition, London, Sweet & Maxwell) which is an authority on the

subject, the said author observes:

"5-198 Principle of construction. In each case it is a matter of construction of the instrument in question whether the parties intended that there should be transferred a proprietary interest in the copyright or merely that there should be given permission to exploit the work, coupled perhaps with contractual restraints on the grantor as to his own exploitation. The distinction is often a fine one. The position is made complicated by the fact that the rights of the copyright owner are defined in terms of the exclusive right to d various acts restricted by the copyright. A grant of "exclusive" or sole and exclusive right is therefore ambiguous being equally consistent with an assignment or a license. Where such an expression is used, as it often is, the other terms of the agreement must be considered to determine whether the grant was intended to operate as assignment or license"

28. From the afore mentioned principle of construction, it is clear

that not merely the court has to look into the validity of the assignment

from the principles of section 19 of the Act but the court has to look at

the other terms of the agreement and do the meaningful reading of the

same in order to come to the conclusion as to whether agreement will

operate as assignment or license.

29. The guiding principles from the several decided case laws

have been extracted by Copinger (supra) which are enumerated as

under:

"5-199 a) An assignment need not use the word assign or grant provided the intention to assign appears from the context. Obviously, however the use of the words such as assign or license helps to indicate the party's intention one way or the other but even then they are not conclusive.

b) The commercial significance to either party of the grant operating either as a license or an assignment will be a relevant factor.

c) If the word "Copyright" is used elsewhere in the agreement but not in the words of the grant, this may point to a license on the principle that since the parties had the concept of the copyright in mind they would have used the word in the grant if the copyright was intended to pass.

d) Sometimes the fact that the agreement has continuing obligations for example to pay royalties as opposed to a one - off lump sum, has influenced a decision that the agreement was a license but again this is not conclusive.

e) Agreements for profit sharing generally indicate license.

f) The fact that the circumstances show that the grantor relied on the personal skill and discretion of the grantee points to a license. Nevertheless, agreements of this kind often contain an unambiguous assignment.

g) The fact that the agreement provides for the reversion of the rights contain in certain events indicates the assignment but the absence of such a clause is not fatal to an assignment, since, if necessary, it can be implied.

h) Assistance can sometimes be obtained if the agreement provides for who is to sue in case of an infringement.

Since, however, the parties often do not understand the principles involved, this can be of limited help."

30. Let me now examine the agreement dated 25 th August, 2003

by applying these guiding principles and principle of construction which

read as under :

a. The agreement dated 25th August 2003 begins with the

obligation of the defendant/ author to supply the

complete typed script of the book with all illustrations to

the publisher within 60 days of the agreement.

b. The agreement describes the title of the work as

"Illustrated synopsis of Dermatology".

c. The clause 2 of the agreement provides for the publisher/

plaintiff to produce and publish the above title at their

own risk and shall during the legal term of the copyright,

the exclusive right of producing the book or any portion

of it and their subsequent edition throughout the world as

also the general control of the publication and the right to

publish translation.

d. The clause 3 and 4 of the agreement are worth

mentioning and are reproduced herein after:

"Clause 3-The copyright of this work vests with the author and the author (s) willingly assign(s) the right to publishers to publish the work and to reassign the rights of co publishing, translation, adaption as may be considered necessary by the publisher.

Clause 4-The author however agree not to assign the copyright to anyone else during the validity of this agreement without the explicit written permission of

the publisher."

31. The conjoint reading of clause 3 and 4 makes it apparent that

although the agreement uses the word "assigns" but the copyright still

vests with the author. This is more so, when in clause 3 the expression

"assign" is used but in clause 4 the author can still assign the copyright

with the permission of the publisher during the currency of the

agreement which means that the title/ copyright still vests with the

author.

32. Further, the use of the expression "legal term" is not used

along with the word "assign" but rather in a separate clause which says

that the publisher shall produce and publish the above title at their own

risk and shall have during the legal term of copyright exclusive right of

producing the books. The usage of expression "Legal term" along with

the words "exclusive right" as in contradistinction with that of "assign"

makes it prima facie doubtful as to whether there is any such assignment

of right or it is an exclusive right at the will of the author.

i. Clause 7 of the agreement provides for the royalty of 15 %

on the printed gross price of all copies sold during

accounting year (1st April to 31st March).

ii. Clause 11 refers that the publisher can pay fixed royalty to

the author at the end of 2nd year of publication.

iii. Clause 12 is a relevant one which I shall also discuss later

in detail also gives the author right to withdraw the book

from the publisher after two years of publication if they are

not satisfied which again signifies that the copyright vests

with the author.

33. The above were certain relevant clauses which are indicators

of the intent of the parties. The following situation emerges from the

above analysis of the clauses:

a) That the agreement although uses the word assign but gives

the author power to assign the copyright with permission of

the publisher and also gives power to withdraw the work. In

other words, there is an indication that the copyright is

retained by the author.

b) The agreement also provides for continuous obligation of

providing royalty.

c) The agreement provides for royalty on profit sharing which

15% sales of gross sales rather than lump sum payment.

d) The agreement also leaves it to the author to withdraw the

work from the publisher after 2 years from publication

subject to dissatisfaction.

34. It is trite that where in a publishing agreement, the author

grants to the publisher the sole and exclusive license to print, publish

and sell his work but reserves the copyright to himself, it is only a

publishing agreement and not an assignment of copyright (Kindly see

William Butler v. Eric Dickinson, AIR 1938 Lah 173).

35. Likewise, the Learned Single Judge of this Court in Jaypee

Brothers Medical Publishers v. Dr. Ramya Raghu & Others, 2008

(38) PTC 212 in a similar circumstances observed:

"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) DLT139 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. "

36. If the abovementioned position emerged from the agreement

is tested on the principles which have been laid down to determine the

intent of the parties in the agreement, it becomes prima facie doubtful

whether the agreement dated 25th August 2003 if at all be called as

complete assignment and it becomes merely a publishing agreement

which gives the permissive rights. The doubts can be expressed that it is

an assignment and prima facie it appears to be a publishing agreement.

37. Now I shall deal with the following rival contentions of the

parties on the aspect of the assignment.

(i) The first argument of the plaintiff stands answered that the

plaintiff is owner of the copyright on the basis of the

assignment by way of agreement dated 25th August 2005, as

I have expressed my doubts on the assignment aspect, it

would be difficult at this to prima facie hold that the

agreement dated 25th August, 2005 is a valid assignment.

(ii) The second submission of the plaintiff is that clause 12 of

the agreement has to be read harmoniously with that of the

other clauses of the agreement. I have examined the

submission and have read clause 12 along with the other

clauses of the agreement. Rather, not merely clause 12 is

indicating the intent that the agreement is merely a

publishing agreement and not assignment. I have already

arrived at my prima facie opinion expressing doubts on the

assignment while examining other clauses of the agreement

also. Thus, the meaningful reading of the agreement also

leads to the same conclusion and clause 12 has to be read as

such and not otherwise.

(iii) Thirdly, it was contended by the plaintiff that the clause 12

has to be read only recognizing the moral right of the author

and not otherwise. To support its submission, several

literatures as well as the judgment passed by learned Single

Judge in Amar Nath Sehgal (supra) has been relied upon by

the plaintiff. I have examined this submission and I find no

merit to the submission of the plaintiff and the reasons for

the same are:

a) The moral rights of the author are the special rights

author the basis of which is that they exist despite of

the assignment. The moral rights do not require any

special recognition in the covenant and the same exist

independent to that of the agreement. Thus, it would

be incongruous to say that only one clause in the

agreement is the recognition of the moral right of the

author which would be incorrect.

b) The dictum of Amar Nath Sehgal(Supra) does not

recognize the right of retraction or withdrawal. The

observation quoted by the plaintiff counsel is merely

an obiter dictum and not the ratio of that case. This is

so because in Amar Nath Sehgal (supra), the learned

Single Judge was concerned with the special/ moral

right of the author against the distortion, mutilation

and modification of the Mural of the plaintiff in that

case. The said right of the distortion, mutilation and

modification is a statutorily recognized moral right

which has been enforced by the learned single judge of

this court in Amar Nath Sehgal. The Learned Single

observed in Amar Nath Sehgal (Supra) :

"35. Copyright law in India was thus brought at par with the Berne Convention. In conformity with the Berne Convention, Section 57 of The Copyright Act 1957 protects the author's right of paternity as also the right of integrity. Distortion, mutilation or modification if established to be prejudicial to the author's reputation or honor is actionable"

38. The learned single judge recognizes that the copyright law is

made at par with Berne convention. The said rights mentioned in Berne

convention are right to paternity and integrity. The literature relied upon

by the counsel for the plaintiff itself states that the right of retraction as

a moral right is not even mentioned in Berne Convention. That being so,

the dicta of Amarnath Sehgal (Supra) does not come to the aid of the

plaintiff. The right of retraction or withdrawal in case of dissatisfaction

is nowhere recognized under the Act and thus the judgment is not an

authority on right to retraction or withdrawal which does not exist under

the act. Section 57 of the Act recognizes only few moral rights which

includes right to claim authorship, right to paternity and integrity and no

other right. Section 57 reads as under:

''57. Author's special rights. -(1) Independently of the author's copyright, and even after the assignment either wholly or partially of the said copyright, the author of a work shall have the right -

(a) To claim the authorship of the work; and

(b) To restrain, or claim damages in respect of any distortion, mutilation, modification or other act in relation to the said work which is done before the expiration of the term of copyright if such distortion, mutilation, modification or other act would be prejudicial to his honor or reputation.

Provided that the author shall not have any right to restrain or claim damages in respect of any adaptation of a computer

program to which clause (aa) of sub Section (1) of Section 52 applies.

Explanation - Failure to display a work or to display it to the satisfaction of the author shall not be deemed to be an infringement of the rights conferred by this section.

(2) The right conferred upon an author of a work by sub- section (1), other than the right to claim authorship of the work, may be exercised by the legal representatives of the author.''

39. From the bare reading of section 57, it is discernible that

there is no recognition of right to withdrawal/ retraction on account of

non satisfaction of the author. Rather, there is an explanation appended

to the section which is clarificatory in nature. The said explanation

expressly states that the failure to display the work or to display it to the

satisfaction of the author shall not be deemed to be infringement of the

right conferred by this section.

40. The said explanation is indicator of the legislative intent

which is that the non satisfaction of the author is no infringement of the

moral right. Moreover, the right of retraction is recognized

internationally only with the condition of the author to indemnify the

publisher and also gives the right of first preference to the existing

publisher. No such exception or condition exists in section 57. Thus,

the right to retraction is not in consonance with the legislative intent.

The same would mean that if clause 12 of the agreement gives power to

author to withdraw in case of non satisfaction, the same is not the moral

right but rather it indicates the intention of the parties was never to

assign the right and but to enter into permissive right controlled by the

author. This can be the only possible interpretation of the clause 12.

41. In Association for Development v. Union of India and

Ors. 167 (2010) DLT 481 DB this Court while approving literal rule

observed that "it is not the duty of the court to enlarge the scope of the

legislation when the language of the provision is plain and

unambiguous. The court cannot recast or reframe the legislation for the

very reason it has no power to legislate. The court cannot add words to a

statute or reads words into it which are not there." Thus this court

cannot add words into the statute or recast or reframe the statute in order

to enlarge its scope. Applying the plain rule of interpretation, the right

of retraction if not existing under the Act cannot be recognized by

adding words to section 57.

42. The international literature relied upon by the plaintiff further

makes it abundantly clear that the right of the retraction or withdrawal

as a moral right as contended by the plaintiff operates in civil law

jurisdictions including France. It needs no mention that Indian Legal

system is based on common law system which akin to England and not

on civil law which operates on codified law is a separate and distinct

from common law system. Thus, it would be incorrect to hold that the

right of retraction can be inserted into Indian system when it operates in

a country based on different legal system.

In Vishakha and Ors. v. State of Rajasthan and Ors.: AIR

1997 SC 3011 , the apex Court held as under:

".....The international conventions and norms are to be read into them in the absence of enacted domestic law occupying

the field when there is no inconsistency between them. It is now an accepted rule of judicial construction that regard must be had to international conventions and norms for construing domestic law when there is no inconsistency between them"

43. It is thus well established principle of law in view of Vishaka

(Supra) that the international law can be relied upon in the cases where

the municipal law is silent on the subject and which is not inconsistent

with the municipal law. Where there is a conflict between municipal law

and international law, the municipal law shall have prevail. Applying

the same principle to the facts of this case, even if there is a right of

retraction or withdrawal exist in the international law, the same cannot

substitute or supplant the express provisions of Section 57 of the Act

which does not recognize any such right.

44. Further, the literature filed by the plaintiff itself provides that

such right of retraction or withdrawal does not exists in Berne

Convention which means that the same even does not fall within the

acceptable regime of International Law.

45. In view of the above said reasoning, it can be said easily that

the clause 12 of the agreement cannot be construed to mean that there is

any recognition of moral right. The said clause can be read to mean at

the best that the author/ defendant can withdraw the book after two

years of the publication if the author is not satisfied which indicates that

the author can regulate the publisher.

The plaintiff has stated that the agreement dated 25 th August

2003 is a valid one and has been superseded by agreement dated 2005.

As I have come to the prima facie conclusion that the clause 12 can be

invoked even in ordinary circumstances as against in cases involving

abridgment of moral rights and further that the agreement is doubtful to

be an assignment. Also, the defendant has stated several reasons for

dissatisfaction in the written statement. It is also not quarreled between

the parties that on 26.04.2007 while giving the reply to the letter of

withdrawal dated 28.03.2007 the plaintiff has also made proposal to the

defendant to sign a fresh agreement. In October 2007, the defendant no.

1 has already appointed defendant no. 2 as a publisher and have sold the

copies of books in huge quantities. In these circumstances, prima facie,

it is difficult to hold that the agreement dated 25 th August 2005 still

remains a valid one.

46. Further, the question of superseding of the agreement stands

answered in as much as the agreement dated 01.09.2005 pertains to

separate work and contain different clauses and thus the plea of the

plaintiff about superseding of the agreement is rejected as meritless.

47. Lastly, in relation to line diagram infringement as contended

by the plaintiff, It is disputed by the defendants that the plaintiff has

ever created such line diagrams, further, the defendants contended that

the line diagrams have been taken from the same source which is known

as Leprosy Performa which has been used by leprosy clinic of the

department of Dermatology-Venereology for last 6 years. In a copyright

infringement dispute, the defendant can contend that the plaintiff is

himself not the owner of the copyright and the said work is taken from a

common source. The said factor is a relevant consideration for the grant

or non grant of the injunction in the copyright dispute as against in the

ordinary trade mark dispute where it is not material. (Kindly See Prem

Singh v. Ceeam Auto Industries, AIR 1990 Delhi 233).

48. The plaintiff in the present case has earlier not contended the

line diagram infringement but subsequent amended the plaint and have

filed one affidavit of Shri Avdhesh Kumar Maurya in support of the

same who claims to be in the employment of the plaintiff. The subject

matter of the dispute are the books authored by the defendant no.1 who

is doctor in the AIIMS (All India Institute of Medical Sciences) and it is

her research work which is translated into the form a book. The

defendant no. 1 has contended that she has taken the line diagrams from

the research work of AIIMS which is known as Leprosy Performa which

has been used by leprosy clinic of the department of Dermatology-

Venereology for last 6 years. At prima facie stage, the explanation

accorded by the defendant who is expert in the medical field seems to be

more convincing. It is still a matter of the trial if the plaintiff succeeds in

proving their proprietary rights on the copyright in the line diagrams.

Thus, it is yet to be looked into during the course of the trial as to

whether the plaintiff is the owner of the copyright in the said line

diagrams or the same has been taken from the works of AIIMS.

49. The sum and substance of the present discussion is that the

plaintiff has failed to make out a prima facie case for the grant of the

injunction as there are doubts expressed on the validity of the agreement

dated 25th August 2003 as well as the fact as to whether the same

amounts to an assignment documents and rather contrary intentions

appear from the said agreement. The balance of convenience is in favour

of the defendants as it is defendants who will be put to into

inconvenience if they are directed to stop their new publications of third

edition of the book as against the plaintiff who will be less

inconvenienced who has already given time to exhaust the existing stock

of books by way of letter dated 28.03.2007. The irreparable loss will be

caused to the defendant if they are restrained at this stage as against the

plaintiff who is no longer publishing the new edition of the defendant's

book. Further, the present agreement is determinable in nature and the

same is also hit by Section 14(1) (c) of the Specific Relief Act, 1963.

The contracts which are not specifically enforceable being determinable

in nature cannot be otherwise enforced by grant of the injunction is also

well settled proposition of law. Thus, the same is another reason for non

grant of injunction.

50. Accordingly, the plaintiff claim for grant of interim

injunction fails. Needless to say that the observations made herein are

tentative in nature and will not bind the parties when the matter is heard

after full-fledged trial.

51. IA No.1208/2007 & IA No.4402/2008 are dismissed.

52. List this matter for directions on 13th September, 2010 before

the roster Bench.

MANMOHAN SINGH, J.

JULY 22, 2010 jk