Delhi High Court
Autodesk, Inc. & Another vs Mr. Prashant Deshmukh & Others on 9 March, 2011
Author: V. K. Jain
THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Pronounced on: 09.03.2011
+ CS(OS) No. 1755/2003
Autodesk, Inc. & Another .....Plaintiffs
- versus -
Mr. Prashant Deshmukh & Others .....Defendants
Advocates who appeared in this case:
For the Plaintiff: Mr. Pravin Anand and Ms. Jaya Negi
For the Defendant: None.
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN
1. Whether Reporters of local papers may Yes
be allowed to see the judgment?
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported Yes
in Digest?
V.K. JAIN, J. (ORAL)
1. This is a suit for permanent injunction, damages
and delivery up of the infringing material.
2. Both the plaintiffs are companies registered in
U.S.A. Plaintiff No.1 is a leading design software and digital
content company having presence in more than 160
countries and providing design software to professionals, to
help them in making, managing and marketing their
designs for hotels, motorways, office buildings and lifts etc.
and its products are stated to be installed on millions of
computers all over the world, including India. Plaintiff No.2
owns softwares such as Microsoft Windows and Microsoft
Office and also manufactures a large range of computer
peripherals. Plaintiff No.1 has a large number of authorized
resellers in India whereas plaintiff no.2 has a subsidiary
company in India having office in New Delhi. It is claimed
that the software developed and marketed by the plaintiffs
are computer programmes within the meaning of Section
2(ffc) of the Copyright Act, 1957 and also covered under the
definition of a literary work as per Section 2(o) of the
Copyright Act. It is further claimed that the rights of
authors of member countries of the Berne and Universal
Copyright Conventions are protected under Indian
Copyright laws since both India as well as U.S.A. are
signatory to both these conventions. Plaintiff No.1 also
claims to be owner of various trademarks in India, including
AUTODESK and AutoCAD. AUTODESK is stated to have
been registered in India in Class 9 vide registration
No.462772. Plaintiff No.2 claims ownership of the
trademarks MICORSOFT and WINDOWS. Plaintiff No.2 is
the registered proprietor of trademarks in India in Clause 9
and 16 vide registration No.430449B and 430450B.
3. It is alleged that in May, 2003, the plaintiff
received information from Mr. Devesh Tiwari, a Service
Engineer for the computers of the defendants, about large
scale use of unlicensed/pirated software by the defendants.
The plaintiffs have accordingly sought an injunction
restraining the defendants from infringing their copyright
and their registered trademarks. The plaintiff have also
claimed damages amounting to Rs.20 lakhs besides
rendition of accounts and delivery up of the
unlicensed/pirated softwares contained in hard disks,
compact disks, floppies etc.
4. The right of the defendant to file the written
statement was closed by this Court vide Order dated 25 th
February, 2005 and the plaintiffs were directed to produce
evidence by way of affidavit.
5. The plaintiffs have filed four affidavits by of
affidavits. In her affidavit by way of evidence, Ms. Rohini
Boaz, who is working with Autodesk India Pvt. Ltd., a
subsidiary of plaintiff No.1, has stated that the Autodesk
India Pvt. Ltd. has access to the license database of plaintiff
No.1 which lists out all licensed software users in India in
order to keep track of authorized licensees at any given
point of time. The data base contains the information of
authorized licensees, particulars of software licenses they
own in India and serial numbers of those software
programmes. She has further stated that license check
dated 19th October, 2004 revealed that defendants 1 and 2
were not holding any license from plaintiff No.1 whereas
defendant No.3 M/s Space Designers Syndicate was holding
a license in respect of AutoCAD LT 2005, which was at
serial No.342-08419184 registered on 19th September,
2004.
6. In his affidavit by way of evidence, Mr. Devesh J.
Tiwari has stated that he was working with M and S
Consultancy Services since January, 2003 as a computer
service engineer. His responsibility was to maintain the
computer software and hardware of his company‟s clients.
He has further stated that he was deputed to maintain the
computer system of Associated Space Designers Syndicate
Pvt. Ltd. When he first visited the premises of this
company, he met one Ms. Poornima Bhide, an employee of
the aforesaid company, who was looking after the
administration and maintenance of their computer systems.
He noticed that the company had around 40 computers at
the time of his visit and came to know that they were not
using genuine/legal software. He claims that the company
did not possess any legal licenced software. He noticed that
all the computers were installed with various softwares
including Microsoft Windows 95/98, Microsoft Office
97/2000 and AutoCAD Versions 12, 14 and 2000. He
further stated that when he discussed this issue with Ms.
Bhide, she stated that they had been using pirated software
for a long time and that she cannot take any decision in this
regard. When he approached Mr. Prakash Deshmukh, a
director of the aforesaid company for purchase of genuine
licensed software, he told him that they had been using
unlicensed/pirated software for many years and assured
him that nothing had happened to them. He claimed that in
the course of service operations, he personally saw the
pirated compact disks that were being used to install the
pirated software. Those disks were unbranded and were
kept in the custody of Ms. Bhide. He further stated that he
never saw any genuine software discs, manuals, end-user
licences etc. in the premises of the aforesaid company till he
last attended their service call on 18th August, 2003.
7. In his affidavit by way of affidavit Mr. Achuthan
Sreekumar, constituted attorney of the plaintiffs has stated
that the plaintiff No.1 is the world‟s leading design software
and digital content company, helping over 5 million design
professionals in over 160 countries in making, managing
and marketing their designs for hotels, motorways, office
buildings and lifts and AutoCAD is flagship product of
plaintiff No.1 company and is extremely popular among
design professionals such as engineers and architects, He
has further stated that plaintiff No.2 company has
developed various computer programmes including
Microsoft Windows 98, Microsoft Windows 2000, Microsoft
Office 97 and Microsoft Office 2000. He has also stated that
word Microsoft has been continuously and extensively used
by plaintiff No.2 since 1975 and has come to be identified
and recognized exclusively with plaintiff No.2 company.
8. Exhibit P-20 is the copy of legal proceedings
certificate issued by the Trade Marks Registry, which shows
that plaintiff No.2 Microsoft Corporation is the registered
proprietor of the word Mark MICROSOFT in respect of
computer programmes prerecorded on tapes, disks,
diskettes, cartridges, cassettes and within ready only
memories, computer programmes and related user manuals
and instructional guides sold as a unit. Exhibit P-21 is the
legal proceedings certificate issued by the Trade Marks
Registry, which shows that plaintiff No.2 Microsoft
Corporation‟s Word Mark MICROSOFT is registered under
Class 16 in respect of Computer Hardware, Software
Manuals, Computer Documentation:- Reference, User,
Instructional & General Utilities Manuals & Data Sheets for
computer hardware and software manufacturers.
9. Exhibit P-7 is the certificate of registration in
respect of the work AutoCAD 2002 and user‟s guide granted
to Autodesk Inc. Exhibit P-8 is the copy of certificate of
registration in respect of the work AutoCAD 2004 and user‟s
guide granted to the plaintiff No.1. Exhibit P-9 is the copy
of certificate of registration in the work Microsoft Windows
2000 Professional granted to the plaintiff no. 2 Microsoft
Corporation in USA. Exhibit P-10 is the copy of certificate
of registration granted to the plaintiff no. 2 in respect of the
work Microsoft Office 2000 Professional. Exhibit P-11 is the
copy of copyright registration granted to the plaintiff no. 2 in
respect of the work Microsoft Word 2000. Exhibit P-12 is
the copy of copyright registration obtained by plaintiff no. 2
in respect of Microsoft Windows 98 whereas Exhibit P-13 is
the copy of copyright registration in respect of Microsoft
Office 97 (Professional Edition). Several other copyright
registrations have been obtained by plaintiff no. 2 with
respect to various software programmes.
10. I see no reason to disbelieve the deposition of Mr.
Devesh J. Tiwari particularly when the defendants have
chosen not to contest the suit by filing written statement
and their right to file written statement was closed by the
Court vide order dated 25th February, 2005. The deposition
of Mr. Tiwari shows that during the course of servicing the
hardware installed in the premises of Associated Space
Designers Pvt. Ltd. He found pirated softwares including
the Microsoft Windows 95/98 Operating System; Microsoft
Office 97/2000; AutoCAD Versions 12, 14 and 2000
installed on their computers. He also noticed pirated CDs
being used to install pirated softwares. Annexure „A‟ to his
affidavit shows that he found AutoCAD 12 on all computers
except 1 or 2, AutoCAD 14 on all computers except 1 or 2,
AutoCAD 2000 on 10 computers, Windows 95 on 20-25
computers, Windows 98 on 2o computers, Office 97
(Professional Edition) on all computers except 1 or 2, Office
2000 on one computer, Adobe Photoshop on one computer
and 3D studio on one computer.
Learned counsel for the plaintiff states that
AutoCAD 12, 14 and 2000 are the older versions of
AutoCAD 2002 and 2004 and in fact, all the software under
the series AutoCAD belong to plaintiff no. 1 company.
11. The plaintiffs have today filed an affidavit of Mr.
Subroto Panda, Head of the IT Department of the Legal
Representatives of the Plaintiff companies, who claims to be
administering various software programmes used at the
premises of the plaintiffs‟ representatives, including
purchasing software on their behalf and installing and
maintaining those softwares. In his affidavit, Mr. Panda has
stated that in his 14 years of experience, he had purchased
various software programmes and had come across a
number of purchase agreements along with End User
License Agreements (EULA) of various software companies,
including the plaintiffs in this suit. He has affirmed that
once a software programme of the plaintiffs is purchased by
the End User, there is seldom a change that the term of the
license would not be in perpetuity. He has further stated
that on visiting the website of the plaintiffs, he had down
loaded one DULA for one of the products of the plaintiff No.1
company and a webpage showing the details of subscription
for Microsoft products and both the documents indicate that
mostly all licenses used by commercial entities can be used
in perpetuity. He has further stated that a software
programme purchased by an entity at any given point of
time in the past should currently reflect in the data base of
the product purchase summary maintained by the plaintiff
companies. He has also stated that the conditions
stipulated in Section 65B of the Indian Evidence Act, 1872
have been complied with in respect to the documents down
loaded by him.
The affidavit of Mrs. Ms. Rohini Boaz when read
with the affidavit of Mr. Panda indicates that had any
license been purchased by defendant No.2 company in
respect of various softwares, which Mr. Devesh J. Tiwari
claims to be pirated softwares, the information in this
regard would have been available in the data base
maintained by the plaintiff companies. As stated by Ms.
Rohini Boaz the data base revealed that defendant No.2 was
not holding any license from plaintiff No.1, when the data
base was searched by her on 19th October, 2004. The
plaintiffs have, therefore, been able to prove that the
softwares found installed in the computers of defendant
No.2 were not licensed by the plaintiff companies.
12. The documents filed by the plaintiff companies,
thus, show that plaintiff no. 2 holds copyright registration
in respect of software being Windows 98, Office 97
(Professional Edition) and Office 2000 whereas plaintiff No.1
company holds copyright in respect of software of AutoCAD
series.
13. Section 40 of the Copyright Act, 1957, to the extent
it is relevant, provides that the Central Government may, by
order published in the Official Gazette, direct that all or any
provisions of the Act shall apply to work first published in
any territory outside India to which the order relates in like
manner as if they were first published within India.
14. Para 3 of International Copyright Order 1999
issued vide S.O. 228(E) dated 24th March, 1999 published in
the Gazette of India, Extra Part II would show that vide
aforesaid order, all the provisions of the Copyright Act, 1957
except those in Chapter VIII and those other provisions
which apply exclusively to Indian works have been extended
to any work first made or published in a country mentioned
in Part I, II, III, IV or VI of the Schedule in like manner as if
it was first published in India. USA is included as one of
the countries mentioned in Part I of the Schedule and its
name appears at number 131 of the list. Paragraph 2 of the
aforesaid order provides that "Berne Convention Country"
means a country which is a member of the Berne Copyright
Union and includes a country mentioned either in Part I or
in Part II of the Schedule. Therefore, USA is a member of
the Berne Copyright Union and all the provisions of the
Copyright Act, 1957 except those contained in Chapter VIII,
and those other provisions which apply exclusively to Indian
works are applicable to the copyrights in respect of any
work which has been published first in USA.
15. Clause (d) of Section 3 of the International
Copyright Order, 1999, to the extent it is relevant, provides
that the aforesaid provisions shall apply to any work first
made or published by a body corporate incorporated under
any law of a country mentioned in Part I, II, III, IV or Part VI
of the Schedule, in like manner, as if it was incorporated
under a law in force in India.
16. The provisions of para 3 however have been made
applicable subject to the provisions contained in para 4 to 6
of the order. Paragraph 4 of the International Copyright
Order, 1999 does not apply in this case. Section 32 of the
Copyright Act, 1957 to which paras 5 and 6 of the aforesaid
order pertains relates to licences in public translations and
therefore, does not apply to facts of the case before this
Court.
17. Thus, in view of the provisions contained in
Section 40 of the Copyright Act read with International
Copyright Order, 1999, the provisions of Chapter XI of the
Copyright Act including Section 51 which deals with
infringement of copyright would apply to the copyright
registrations obtained by the plaintiffs in respect of the
software found to be installed in the computers of defendant
no. 2.
18. Section 51 of the Copyright Act, to the extent
relevant, provides that copyright in a work shall be deemed
to be infringed when any person without a licence granted
by the owner of the copyright or the Registrar of Copyrights
under the Act or in contravention of the conditions of a
licence so granted or of any condition imposed by a
competent authority under the Act does anything, the
exclusive right to do which is by the Act is conferred upon
the owner of the copyright.
Section 14 of the Copyright Act, to the extent
relevant, provides that copyright means the exclusive rights
subject to the provisions of the Act, to do or authorize the
doing of specified acts in respect of a work or any
substantial part thereof, which in the case of a computer
programme would include to reproduce the work in any
material form including the storing of it in any medium by
electronic means. Therefore, by using pirated versions of the
softwares, copyright of which vest in the plaintiff companies,
the defendant no. 2 infringed their copyrights in those
softwares.
19. As noted earlier, the plaintiff no. 2 holds trademark
registrations in the word/mark Microsoft in class 9 and
class 16. By using the software which according to the
learned counsel for the plaintiff bears the registered
trademark „MICROSOFT‟ of plaintiff no. 2, the defendant no.
2 infringed the registered trademark which plaintiff no. 2
company holds in India in respect of the word/trademark
„MICROSOFT‟.
20. Learned counsel for the plaintiff states that he is
confining his prayers to grant of permanent injunction and
punitive damages. Regarding punitive damages in the case
of Time Incorporated v. Lokesh Srivastava & Anr., 2005
(30) PTC 3 (Del), this Court observed that punitive damages
are founded on the philosophy of corrective justice and as
such, in appropriate cases these must be awarded to give a
signal to the wrong doers that the law does not take a
breach merely as a matter between rival parties but feels
concerned about those also who are not party to the lis but
suffer on account of the breach. In the case of Hero Honda
Motors Ltd. v. Shree Assuramji Scooters, 2006 (32) PTC
117 (Del), this Court noticing that the defendant had chosen
to stay away from the proceedings of the Court felt that in
such case punitive damages need to be awarded, since
otherwise the defendant, who appears in the Court and
submits its account books would be liable for damages
whereas a party which chooses to stay away from the Court
proceedings would escape the liability on account of the
failure of the availability of account books.
In Microsoft Corporation v. Deepak Raval MIPR
2007 (1) 72, this Court observed that in our country the
Courts are becoming sensitive to the growing menace of
piracy and have started granting punitive damages even in
cases where due to absence of defendant, the exact figures
of sale made by them under the infringing copyright and/or
trademark, exact damages are not available. The
justification given by the Court for award of compulsory
damages was to make up for the loss suffered by the
plaintiff and deter a wrong doer and like-minded from
indulging in such unlawful activities.
In Larsen and Toubro Limited v. Chagan Bhai
Patel MIPR 2009 (1) 194, this Court observed that it would
be encouraging the violators of intellectual property, if the
defendants notwithstanding having not contested the suit
are not burdened with punitive damages.
Also, the Court needs to take note of the fact that a lot
of energy and resources are spent in litigating against those
who infringe the trademark and copyright of others and try
to encash upon the goodwill and reputation of other brands
by passing of their goods and/or services as those of that
well known brand. If punitive damages are not awarded in
such cases, it would only encourage unscrupulous persons
who actuated by dishonest intention, in the case of a
trademark use the well-reputed trademark of another
person, so as to encash on the goodwill and reputation
which that mark enjoys in the market, with impunity or in
the case of a software use the pirated software thereby
depriving the copyright owner of the revenue to which he is
entitled by sale of licence to use that software and then
avoid payment of damages by remaining absent from the
Court, thereby depriving the plaintiff an opportunity to
establish actual profit earned by him from use of the
infringing mark/pirated software, which, if he is using the
infringing mark/pirated software for business purposes, can
be computed only on the basis of his account books. This
would, therefore, amount to putting premium on dishonesty
and give an unfair advantage to an unscrupulous infringer
over those who have a bona fide defence to make and
therefore come forward to contest the suit and place their
case before the Court.
21. It is difficult to dispute that the use of pirated
softwares of reputed companies such as Microsoft and
AutoCAD is widely prevalent in our country and in fact, use
of pirated software may be far exceeding the use of licenced
software. The companies which invest heavily in
development of such highly useful software, will be
discouraged from making further investments in designing
new softwares and improving the existing ones, if they are
deprived of licence fee which they get on sale of licences,
since it is only from that money that they can develop new
softwares by making substantial investments in research
and development. Also, use of pirated software by a
commercial enterprise needs to be dealt with more strictly
than use by an individual for his personal purposes.
Since defendant no. 2 has been found using the
pirated software of the plaintiff‟s company for its commercial
purposes, there is likelihood of the defendant company
persisting with the use of these pirated softwares. Hence,
the defendant no. 2 is hereby restrained from using any
pirated/unlicensed software of the plaintiff‟s company.
In the fact and circumstances of the case,
particularly considering that defendant no. 2 was found
using the pirated software for its commercial benefit, I also
award punitive damages amounting to Rs. 1 lakh to the
plaintiffs and against it. The suit qua other defendant(s) is
dismissed.
The decree sheet be drawn up accordingly.
CCP (O) 141/2003
Dismissed as not pressed.
(V.K. JAIN)
JUDGE
MARCH 09, 2011
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