Tekla Corporation & Anr vs Survo Ghosh & Anr
2014 Latest Caselaw 2477 Del

            *IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                           Date of decision: 16th May, 2014.

+                            CS(OS) 2414/2011

         TEKLA CORPORATION & ANR                  ..... Plaintiffs
                    Through: Ms. Safia Said, Adv.

                                     Versus

    SURVO GHOSH & ANR                       ..... Defendants
                 Through: Mr. Kaustubh Sinha, Adv.
CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

RAJIV SAHAI ENDLAW, J.

1. The question, whether in a suit for permanent injunction restraining

the defendants from infringing the copyright of the plaintiffs, a defence of

"copyright misuse" is available to the defendants, is for adjudication.

2. The two plaintiffs i.e. Tekla Corporation, Finland and Tekla India Pvt.

Ltd. have sued the two defendants i.e. the defendant no.2 M/s. Caliber Tech

Solutions Pvt. Ltd. and its officer defendant no.1 Mr. Survo Ghosh pleading,

that the plaintiffs have a copyright in software programme known as Tekla

Structures and the defendants, instead of obtaining license thereof from the

plaintiffs, have unauthorizedly installed the same.

3. Summons of the suit were issued and vide ex parte ad interim order

dated 27th September, 2011 the defendants were restrained from reproducing

/ storing / installing and using unlicensed / pirated versions of plaintiffs‟

software or from otherwise infringing the copyright of the plaintiffs and a

Court Commissioner was appointed to visit the premises of the defendants to

verify the infringement if any in the past by the defendants.

4. The defendants have contested the suit by filing a written statement.

On 2nd December, 2013 issues were framed in the suit. The counsel for the

defendants pressed for framing of the following issue as well:-

"Whether the conduct of the plaintiffs constitutes copyright misuse. If in affirmative, whether the plaintiffs are precluded from claiming a relief based on alleged infringement of such misused copyright? (OPD)"

and invited attention to the averments in preliminary objections 4 & 5

in the written statement of the defendants. The counsel for the plaintiffs

opposed the framing of such an issue contending that there is no legal

doctrine of "copyright misuse" on which issue was claimed by the

defendants. Accordingly, the suit was adjournment for hearing arguments on

the said aspect.

5. On 14th March, 2014 the counsel for the defendants referred to the

following judgments:-

"1. Judgment dated 16th August, 1990 of U.S. Court of Appeals, Fourth Circuit titled Lasercomb America Inc. Vs. Reynolds;

2. Judgment dated 6th August, 1997 of U.S. Court of Appeals, Ninth Circuit titled Practice Management Information Corp. Vs. American Medical Ass'n;

3. Video Pipeline, Inc. Vs. Buena Vista Home Entertainment, Inc. 342 F.3d 191 (3rd Cir., 2003);

4. Judgment dated 29th January, 1999 of U.S. Court of Appeals, Fifth Circuit titled Alcatel USA Inc. Vs. DGI Technologies Inc.; and,

5. Judgment dated 25th November, 2003 of U.S. Court of Appeals, Seventh Circuit titled Assessment Technologies of WI, LLC Vs. Wiredata, Inc."

6. Noticing preliminary objections 4 & 5 in the written statement of the

defendants as under:-

"4. It is submitted that the plaintiffs are involved in malpractices and restrictive conduct constituting „copyright misuse‟ and are accordingly precluded from claiming a relief based on that infringement. The Copyright misuse doctrine bars the culpable plaintiffs from prevailing on an action for the infringement of misused copyright. It is submitted that the doctrine of copyright misuse prevents copyright holders from leveraging their limited monopoly to allow them control of areas outside the monopoly and acts as a limitation on licensing restrictions and related

conduct that are either restrictive, anti-competitive or otherwise violate the public policy underlying the copyright law. The copyright misuse defence to infringement of copyright has been recognized as a valid defence across several jurisdictions of the world. The Defendants reserve their right to reply on the corresponding case-laws during the course of their arguments.

5. It is submitted that the terms of use of Tekla Software of the Plaintiffs and their conduct during the course of the license term completely tanatamounts to misuse of their monopoly provided by their copyright. The Plaintiffs have been using their copyright to charge an unreasonable fee (apart from their due license fee) in the garb of providing training and maintenance services and have been forcing their licensees to accept unreasonable conditions which include, but are not limited to following:

            -      Bundled maintenance service agreements for
                   every year,

            -      levying huge penalties for not accepting their

conditions for maintenance service agreements,

- bundling training fee with the license of the software,

- not providing proper training despite taking payment for the same etc.

It is submitted that by forcing the customers to accept these unreasonable conditions as part of its licensing regime, the Plaintiffs have committed

precisely the kind of overreaching in copyright licensing that the copyright misuse doctrine aims to prevent and have accordingly committed an abuse of legal process. The Plaintiffs are accordingly barred by their own misuse from enforcing any of its copyrights by means of any claim for infringement. It is submitted that the present averment is without any prejudice to the claim of the Defendants that no infringement has taken place or as alleged by the Plaintiff herein.",

on 14th March, 2014 inter alia the following order was passed:-

"4. It has been enquired from the counsel for the defendants that the law of copyright, having been codified in the Copyright Act, 1957, whether there is any provision therein, which permits such a defense to be raised and whether in the statutes of the countries where such a defense is held to be permitted, there is any statutory support therefor.

5. The counsel for the defendants states that though there is no provision, neither in the Indian Statute nor in any of the foreign statutes, but the said defense, being an equitable defense, has been entertained. He has further contended that we are only at the stage of framing of issues and since the plea has been raised in the written statement and to which no replication has been filed, the issue necessarily has to be framed.

6. I am not in agreement. This Court is not to frame issues, merely because a plea is taken in the pleadings. Issues are to be framed, only on pleas material for adjudication of the controversy in the litigation. Needless to state that framing of an issue

on a plea which is otherwise not relevant for adjudication of the controversy, delays trial inasmuch as evidence will have to be led on such pleas. I have recently in Kawal Sachdeva Vs. Madhu Bala Rana MANU/DE/1050/2013 had an occasion to deal in detail on this aspect and need is thus not felt to elaborate further.

7. The counsel for the defendants in response states that the plaintiffs will not suffer by such delay, since there is already an interim injunction in favour of the plaintiffs and the defendants also are not opposing the suit insofar as for the reliefs of permanent injunction claimed by the defendants and are wanting to raise the defense as contained in the paragraphs aforesaid, only to the claim of the plaintiffs for damages.

8. In view of the aforesaid statement of the counsel for the defendants, the issues No.(i) & (iii) as framed on 2nd December, 2013 do not survive and a decree for permanent injunction is forthwith passed in favour of the plaintiffs and against both the defendants in terms of prayer paragraph 30(I) of the plaint.

9. Decree sheet to the aforesaid extent be drawn up.

10. The counsel for the defendants has further argued that the plaintiffs are misusing their copyright:

(a) by pricing it very high;

(b) by not rendering the services which they are required to render under the licenses, even if purchased from them;

(c) by bundling up of maintenance services agreement with the licenses and by levying penalties for not accepting the maintenance services; and,

(d) by, though charging for training fee, but not providing any training.

11. It has been enquired form (sic from) the counsel for the defendants as to what can be the measure of price and merely because the owner of a copyright is claiming a price which is felt by others to be on a higher side, can be a ground for allowing the infringement thereof and/or to prevent the said owner/proprietor from claiming damages for infringement thereof.

12. Attention of the counsel for the defendants has also been invited to Sections 31, 31(A), 31(B), 31(C) & 31(D) of the Act, providing for compulsory license for works withheld from public and it has been enquired that the Legislature having provided the grounds on which compulsory license can be granted, can such compulsory licensing, as would the effect of holding that misuse disentitles the owner/proprietor of the copyright from damages for infringement thereof, be on any other grounds.

13. It has yet further been enquired from the counsel for the defendants, whether not the grievance, even if any of the defendants, of the plaintiffs not providing the requisite services under the licensed software, is distinct from the right of the plaintiffs to claim damages for infringement otherwise by the defendants, if established and more so when the defendants have not even sought any relief with respect to the said non-compliance.

14. I am of the view that without the defendants making a claim for such breaches alleged by the plaintiffs of their license terms, no trial on the said aspects is to be ordered inasmuch as the said trial even if established the plaintiffs to be in breach, would not allow the damages, if any to which the plaintiffs are found to be entitled, to be adjusted thereagainst."

and the matter adjourned to 20th March, 2014 for further hearing

whereafter judgment / order on the said aspect was reserved.

7. The counsel for the plaintiffs during the hearing on 20th March, 2014

contended that even if the doctrine of "copyright misuse", as enunciated in

the judgments cited by the counsel for the defendants were to be held to be

available in India, the pleas aforesaid of the defendants do not constitute a

defence of "copyright misuse" as laid down in the said judgments.

8. I have perused the judgments relied upon by the counsel for the

defendants and find:

(i) Each of the said judgments to be holding that uncertainty

engulfs "the misuse of copyright" defense but further observing that a

misuse of copyright defense is inherent in the law of copyright just as

a misuse of patent defense is inherent in patent law.

(ii) Lasercomb America Inc. supra to be holding that the use of a

copyright to violate antitrust law would give rise to a misuse of

copyright defense but all misuse need not be a violation of

antitrust/anti-competition law in order to comprise an equitable

defense to an infringement action.

(iii) In Lasercomb America Inc. supra copyright was found to be

misused, by the copyright holder in its standard licensing agreement

forbidding the licensee for a period of 99 years to develop or assist in

developing any kind of software.

(iv) In Practise Management Information Corporation (supra),

copyright was found to be misused by incorporating a condition, in

the licence to use copyright, to not use any competing system.

(v) In Video Pipeline, Inc. supra it was held that the misuse

doctrine extends from the equitable principle that the Courts may

appropriately withhold their aid where the plaintiff is using the right

asserted contrary to the public interest and that misuse is not cause to

invalidate the copyright but instead preclude its enforcement during

the period of misuse;

(vi) In Video Pipeline, Inc. supra it was further held that misuse

exists where the copyright holder is engaged in some form of

anticompetitive behavior as anti-competitive licensing agreements

may conflict with the purpose behind the copyright protection by

depriving the public of the would be competitors creativity. Finding

the licensing agreement in this case to be not restricting creativity, the

defense of copyright misuse was held to be not available.

(vii) In Alcatel USA Inc. supra it was held that the doctrine of

copyright misuse has its historical roots in the unclean hands doctrine

and it forbids the use of the copyright to secure an exclusive right or

limited monopoly not granted by the Copyright Office and which is

contrary to public policy to grant. The condition in the software

license, of the same to be used only in conjunction with hardware

manufactured by the same supplier was held to constitute misuse as it

was found to be indirectly seeking patent law protection of its

hardware through the enforcement of the software copyright.

(viii) In Assessment Technologies of WI, LLC supra it was held that

the doctrine of misuse prevents copyright holders from leveraging

their limited monopoly to allow them control of areas outside the

monopoly.

(ix) In Ticketmaster L.L.C. Vs. RMG Technologies, Inc. 536 F.

Supp. 2d 1191 (2008), also cited by the counsel for the defendants, it

was held that copyright misuse is an affirmative defense to a claim of

copyright in infringement and does not support an independent claim

for damages.

9. Per contra, the counsel for the plaintiffs has argued:

(a) that copyright is a creation of a statute and the statute gives a

list of defenses that a defendant has in a suit for infringement;

copyright misuse is not a defense under the Act nor has the doctrine

been ever applied in India;

(b) that even if the misuse doctrine were to be taken into

consideration, there is no misuse in the present case;

(c) that with regard to the plea of the defense of unreasonableness

of the fee charged by the plaintiffs, reliance is placed on Federation

of Hotels & Restaurants Association of India Vs. Union of India

(2011) 46 PTC 169 Delhi (DB) laying down that for non-essential

commodities, in a laissez faire economy every person is entitled to

claim any price for utilization of rights or services and it is argued,

that if anyone is dissatisfied with the quantum of charges on the

ground of the same being excessive or extortianate, he can approach

the Registrar of Copyrights for grant of compulsory license;

(d) that the end-user license agreement of the plaintiffs‟ software

program nowhere mandates that a licensee will have to compulsorily

avail either training or maintenance services to be able to use the

software of the plaintiffs but the same is optional;

(e) that the plaintiffs‟ copyright is in the software program. Once,

the defendants have purchased the same, they have the full right to use

the same without any conditions;

(f) that the training and maintenance are additional services

provided subject to the requirement of the defendants and if the

defendants wish, they can purchase the software of the plaintiffs and

have a third party train him on how to use it; and,

(g) that the copyright misuse doctrine has thus been wrongly

invoked.

10. Having considered the rival contentions, I am of the view that in our

legal frame work, the defence of "misuse of copyright" by the holder thereof

is not available, neither to an action for infringement of copyright nor to an

action for damages for infringement of copyright, for the following reasons.

11. None of the judgments aforesaid having defined copyright misuse, I

researched to find if any existed. Even, Nimmer on Copyright, also referred

to during the hearing, is found to be giving various instances of copyright

misuse rather than putting the „misuse‟ in any jacket. I find Tom W. Bell,

Professor of Law, Chapman University School of Law in his Article titled

"Codifying Copyright‟s Misuse Defense" published in Utah Law Review to

have proposed definition of copyright misuse as "contractually limiting any

use of a copyrighted work if that use would qualify as non-infringing under

the statute relating to copyright". The said Article advocating codification of

copyright misuse further proposes that "no holder of copyright in any work,

misusing the said work shall have copyright therein during that misuse i.e.

during the misuse of a copyrighted work, the work affords its owner no

copyright rights and a copyright owner can regain those rights only by

ending the practices that constitute misuse". The principle behind denying

damages for infringement during the period of misuse is stated to be that

since during that time there is no copyright, there would be no infringement

and resultantly no damages. The justification given for allowing such a

defense is, the public policy to ensure that fair use continues to protect

freedom of expression.

12. Our Law of Copyright is codified in the form of The Copyright Act,

1957, preamble whereof describes the same as an Act to amend and

„consolidate‟ the law relating to copyright. The statement of objects and

reasons of the said law also describes the same as "an independent self

contained law on the subject of copyright....". The position is made further

clear by Section 16 of the Act which provides that no person shall be entitled

to copyright or any similar right in any work otherwise than under and in

accordance with the provisions of the said Act.

13. Section 14 of the Copyright Act defines copyright as the exclusive

right to do or authorize doing of the acts mentioned therein in respect of a

„work‟. „Work‟ as defined in Section 2 (y) thereof as a literary, dramatic,

musical or artistic work or a cinematograph film or a sound recording.

Section 14, while defining the exclusive rights of a copyright owner does not

place any restriction / condition on the owner. It does not say that the owner

will have such exclusive rights only if does not misuse the copyright.

Similarly, Section 51, while describing what constitutes infringement of

copyright does not carve out any exception in the event of misuse by the

owner of the copyright. Yet further, Section 52, while describing in detail,

the acts which shall not constitute infringement, does not provide that

misuse of copyright by the owner thereof would not constitute infringement,

even if any within the meaning of Section 52.

14. To entertain a defence of copyright misuse as has been entertained as

aforesaid in the American Jurisprudence would, in my opinion, tantamount

to making copyright a conditional right i.e. a right subject to being not

misused and / or a right enforcement whereof can be suspended upon the

right being found to be misused and which is not as per its definition in

Section 14 and would further tantamount to adding to / subtracting from the

definition in Sections 51 and 52 of what constitutes and what does not

constitute infringement. The same, in my view in the light of Section 16

supra is impermissible as it would amount to entitling / disentitling a person

to copyright otherwise than in accordance with the provisions of the said

Act.

15. Copyright misuse, even in American jurisprudence has no statutory

support. Reference in this regard can also be made to the judgment of Atari

Games Corp. Vs. Nintendo of America Inc. 1992 U.S. App. LEXIS 21817.

The American Courts, in the judgments aforementioned, in the absence of

any definition of copyright misuse applied their own tests to hold whether

the holder of copyright was misusing the same or not. However the

common thread running through the said judgments and as noticed by TOM

W. BELL also in the Article aforesaid is, interference by the holder of

copyright in creativity and enforcement of the public policy of permitting

and ensuring fair use and creativity.

16. It is however not as if the Copyright Act does not deal with the said

aspect. Clauses (a) to (zc) of sub-section (1) of Section 52 describe in detail

the acts which shall not constitute an infringement of copyright. Clauses (a),

(aa), (ab), (ac), (ad) thereof inter alia exempt fair use as described therein of

copyrighted works. Similarly, Clause (p) thereof provides that reproduction

for the purpose of research or private study to be not amounting to

infringement of copyright therein. Section 52, in my opinion, in the light of

Section 16 is exhaustive and inflexible and does not permit me to hold that

an action of the defendant, though falling in confines of Section 51 as

infringement and not saved by Section 52, can still be held to be not

amounting to infringement. Allowing a defence of copyright misuse would

tantamount to the Court adding to the Clauses of Section 52 and constituting

an act, otherwise of infringement of copyright as not infringement of

copyright for the reason of the holder of copyright being in misuse thereof.

The Supreme Court, in National Insurance Co. Ltd., Chandigarh Vs.

Nicolletta Rohtagi (2002) 7 SCC 456, in the context of the Motor Vehicle

Act, 1988 held that a right which is a creature of and contents whereof

depend on provisions of, a statute, can be asserted in accordance with the

provisions of the statute only and if permitted otherwise, it would mean

adding more grounds than what the statute has specifically provided for.

17. I am also of the opinion that even if the holder of a copyright, though

not entitled in law to impose any restrictions curtailing the fair use thereof or

in the nature of curbing creativity (and which is against public policy), still

contractually or otherwise imposes such restrictions or prohibits doing of

anything permitted by Section 52 or any other provision of the Copyright

Act or any other law, the same would not bind anyone or be enforceable in

law and thereby not effect anyone. The legal action even if any taken by

holder of copyright against any other person for violating the conditions

illegally imposed by the holder of copyright, would thus fail and it cannot be

said that there was any misuse. I am for this reason also of the opinion that

no purpose would be served in entertaining such a defence.

18. I am further of the view that if a holder is misusing a copyright, the

remedy of the aggrieved party is to take action to prohibit him from such

misuse. I am unable to appreciate the reasoning given in the judgments

aforesaid of the American Courts that such misuse can only be pleaded as a

defence to an action for copyright infringement and not support an

independent action. It is unpalatable to me that an action of copyright

owner, while in law can be a defence to an action by him for infringement,

would not furnish a independent cause of action to the affected persons. The

broad proposition is that whatever right a party in the position of defendant

could assert as plaintiff, is available to him as a ground of defence. I am in

this regard tempted to quote the observations of Justice Bhagwati in M.C.

Mehta Vs. Union of India (1987) 1 SCC 395 that "though the Court should

be prepared to receive light from whatever source it comes but it has to build

up its own jurisprudence".

19. There is another very interesting aspect. As aforesaid, even in the

American jurisprudence copyright misuse has been held to be a equitable

defence to an infringement action. I have wondered whether such a

equitable defence can be said to be open to an infringer of copyright. Can a

defendant, who is himself violating the right of the plaintiff, be permitted to

say that though he is in violation but the plaintiff is not entitled to take action

against him because the plaintiff is also in violation of some other law or has

asserted a right beyond what he is entitled to. In my opinion, no.

20. This principle was accepted by this Court in Ansul Industries Vs.

Shiva Tobacco Company 2007 (34) PTC 392 (Del) by holding that the

defence of laches or inordinate delay being a defence in equity, is available

only to a party to a litigation who has acted fairly and honestly and not to a

person who is guilty of violating the law or infringing or usurping somebody

else‟s right and such person cannot by setting up such a defence of laches

and inordinate delay, claim continued misuse of usurped right.

21. Interestingly, I find the defence of copyright misuse to have been

declined in Atari Games Corp. (supra) also on similar grounds. It was held

that a party seeking equitable relief must come to the Court with clean hands

and which doctrine of unclean hands can also preclude a defence. Thus,

even though finding Nintendo to have misused its copyright by imposing a

condition that gave Nintendo control over the games developed by

independent, third party software developers, Atari was held not entitled to

invoke the equitable defence of copyright misuse for the reason of having

lied to the copyright office in order to obtain the copyrighted programme.

Ataris‟ unclean hands were held to prevent it from invoking equity.

22. I am also of the view that a plaintiff, if in law entitled to a substantial

relief, cannot be denied that relief even if he has overstated his case or even

if the plaintiff is in violation of any other law. Our jurisprudence does not

subscribe to retributive justice. A wrong by the plaintiff, is not to be met by

doing wrong to the plaintiff. One wrong cannot be remedied by another

wrong. It was so echoed A.R. Antulay Vs. R.S. Nayak (1988) 2 SCC 602

though in a entirely different context. The same principle was applied by the

Division Bench of this Court in Rajendra Singh Negi Vs. National Capital

Territory 119 (2005) DLT 148 by observing that one wrong will not make

another right and illegality would not provide a sound basis for commission

of another illegality. On the same principle is the doctrine that, negative

equality cannot be pleaded as a defence to any action which is in accord with

law and justified.

23. Reference may also be made to an old judgment of the Division

Bench of Madras High Court in K.S. Rm. Ramanathan Chetty Vs. T.K.V.

Ramasami Chetty AIR 1916 Madras 627 (2) where one of the Judges

observed, however reprehensible the conduct of plaintiff may be, if has

established the right, relief cannot be denied. The said view was accepted by

the majority in the Full Bench in the judgment reported as

MANU/TN/0031/1917. The Supreme Court of United Kingdom also in

Oracle America Inc. (formerly Sun Microsystems Inc.) Vs. M-Tech Data

Limited [2012] UKSC 27 has held that the fact that the claimant may be

engaging in illegal activities which were inconsistent with the principle of

free movement of goods, does not prevent it from enforcing a right which is

entirely lawful. It was further held that it is not a defence to proceeding to

enforce a legitimate right that a claimant by unlawful means prevented the

defendant from carrying out other businesses.

24. Even otherwise, it is the settled position in law that where there is

conflict between law and equity, the law would prevail. Reference in this

regard can be made to Raghunath Rai Bareja Vs. Punjab National Bank

(2007) 2 SCC 230 and followed by me in order dated 1 st April, 2013 in

CS(OS) No.689/2010 titled Aditya Gupta Vs. Ashok Kumar Gupta where it

was held that considerations of fair play and equity, however important they

may be, must yield to clear and express provisions of law. It was held that a

suit for possession of immovable property cannot be dismissed on the

ground of the plaintiff having abused the process of the Court though

separate remedy therefor may be availed. The Full Bench of High Court of

Madras also, as far back as in Kurri Veerareddi Vs. Kurri Bapireddi

MANU/TN/0079/1904 held that the tampering of the letter of the law by

recognizing equities which would take the case out of the statute leads to

uncertainty and enhances the opportunities for violating the law. The words

of the statute i.e. the Copyright Act being clear and unambiguous, it is a duty

of the Courts to give effect to them and not to allow the statute to be

rendered of no effect by introducing what may appear to be equitable

considerations but which in the long run are more likely to lead to inequities

and litigation.

25. To accept the doctrine of copyright misuse as evolved by the

American Courts would tantamount to allowing a person to unilaterally

decide that the owner has lost the copyright for the reason of misuse thereof

and to thereby usurp the rights otherwise exclusively vested in the owner.

Allowing the said defences also has a potential of delaying the judicial

process of enforcing the copyright and of becoming a tool in the hands of

infringers, by raising all kinds of pleas and making all kinds of allegations of

misuse and delaying the decision in an action for infringement. Notice in

this regard may be taken of the fact that the defendants, though claim the

plaintiffs to have indulged in malpractices and restrictive conduct

constituting copyright misuse, did not at any time complain thereagainst and

have taken the said pleas only when caught infringing the copyright of the

plaintiffs. Even now no counter claim has been made in this suit to restrain

the plaintiffs from indulging in the alleged misuse.

26. I am further of the view that the fear, that the copyright owner while

enforcing the copyright and preventing infringement thereof will continue to

misuse the same, is misplaced. The Courts, when approached in such a

situation will not extend their protection to the said misuse and will not

extend the prohibition sought against infringement to allow the misuse if any

of the copyright. Alternatively, it is the settled principle in law (see Delhi

Automobile Ltd. Vs. Economy Sales 55 (1994) DLT 39 and Liberty Sales

Services Vs. Jakki Mull 66 (1997) DLT 506 (DB)) that the Courts while

granting injunction can impose conditions on the parties in whose favour

injunction is being granted. The Courts thus while granting injunction

against infringement of copyright can put a condition on the plaintiff not to

indulge in misuse.

27. Towards the end I may reiterate that as observed in order dated 14 th

March, 2014 reproduced above, the Legislature has made elaborate

provisions for compulsory license to take care of situations on the basis

whereof, the doctrine of copyright misuse has been evolved in American

jurisprudence. Not only so, the legislature, in Section 60 has also provided

the remedy of a suit for declaration that the threats of alleged infringement

are baseless and groundless and of injunction against continuance of such

threats. The legislature has not provided that the same would deprive the

owner from the relief against infringement.

28. There is another aspect of the matter. Infringement of copyright has

vide Section 63 of the Act been also made an offence punishable with

imprisonment of not less than six months and extending to three years. The

test of infringement in a prosecution is not different from that prescribed in

Sections 51 and 52 and which as aforesaid do not provide for or deal with

„Copyright Misuse‟. For this reason also, nothing can be added or

subtracted from infringement of copyright as defined in Sections 51 and 52.

29. I therefore hold that no case for framing an issue on the defence urged

by the defendants, of „copyright misuse‟ is made out. No issue as urged by

the defendants is thus required to be made.

30. Before parting with the case I record my appreciation for the hard

work put in by both Ms. Safia Said, Advocate for the plaintiffs and Mr.

Kaustubh Sinha, Advocate for the defendants who, inspite of being young in

the profession, have shown exceptional clarity, understanding and acumen

on the subject.

RAJIV SAHAI ENDLAW, J.

May 16,2014 pp/bs