Delhi High Court
Novex Communication Pvt. Ltd. vs Lemon Tree Hotels Ltd. & Anr. on 11 January, 2019
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ RFA No. 18/2019 & CM Nos. 786-789/2019
% 11th January, 2019
NOVEX COMMUNICATION PVT. LTD. ..... Appellant
Through: Mr. Chander M. Lall, Sr. Adv.
with Mr. Jasdeep Singh
Dhillon, Mr. Rupin Bahl, Mr.
Rajpal Singh and Ms. Priti
Naik, Advocates (9650414406)
versus
LEMON TREE HOTELS LTD. & ANR. ..... Respondents
Through: Mr. R.K. Aggarwal and Ms.
Disha Gulati, Advocates
(9899488890)
CORAM:
HON'BLE MR. JUSTICE VALMIKI J. MEHTA
To be referred to the Reporter or not? YES
VALMIKI J. MEHTA, J (ORAL)
1. This Regular First Appeal under Section 96 of the Code
of Civil Procedure, 1908 (CPC) is filed by the plaintiff in the suit
impugning the Judgment of the trial court dated 07.08.2018 by which
the trial court has decided the preliminary issue as regards the
maintainability of the suit partially in favour of the appellant/plaintiff
and partially against the appellant/plaintiff. The trial court has partially
rejected the entitlement of the appellant/plaintiff to sue for the
infringement of copyright by referring to Section 33 of the Copyright
Act, 1957 (hereinafter „The Act‟), but the trial court has allowed the
appellant/plaintiff to sue for infringement of the copyright as an agent
of only one party, being the defendant no. 2 in the suit, namely Yash
Raj Films Private Limited. The trial court has held that the
appellant/plaintiff cannot sue for infringement of copyright, although
the appellant/plaintiff is the assignee and owner of the sound
recordings in terms of the Assignment Deeds executed by Zee
Entertainment Enterprises Ltd. (hereinafter „Zee‟), Eros International
Media Limited (hereinafter „Eros‟) and Shemaroo Entertainment
Limited (hereinafter "Shemaroo"), because as per Section 33(1) of the
Act only a copyright society is to legally license copyright works of
sound recordings and it is this finding of the trial court that is
impugned in the present appeal.
2. I may note that the impugned judgment decides the legal
issue as a preliminary issue i.e. the impugned judgment is not passed
at the stage of final arguments after trial, and this is because the
limited issue is a legal issue as to whether or not the suit pleading
infringement of copyright and seeking damages filed by the
appellant/plaintiff is or is not barred by law as per the provisions of
the Act, especially Section 33(1).
3. As per the plaint, the appellant/plaintiff pleads to be the
owner of the copyright work in the sound recordings on account of
Assignment Deeds executed in favour of the appellant/plaintiff by Zee
on 11.08.2015, by Eros on 09.01.2017 and by Shemaroo on
09.03.2017. The appellant/plaintiff further pleads in the plaint that
without obtaining any licenses, the respondent no.1/defendant no.1
was using the sound recordings/copyright works, and therefore, the
respondent no.1/defendant no.1 is liable/injuncted from using the
copyright work without obtaining any licenses from the
appellant/plaintiff. The appellant/plaintiff has also claimed damages of
Rs. 5,00,000/- on account of infringement by the respondent no.
1/defendant no. 1 of the copyright works in the sound recordings
owned by the appellant/plaintiff, and on account of the respondent
no.1/defendant no.1 using the same without obtaining any licenses
from the appellant/plaintiff.
4. The issue which is argued before this Court, and was also
argued before the trial court, is as to whether the provisions of
Sections 33 to 35 only entitle a copyright society to collect the license
fee, and the appellant/plaintiff not being a copyright society hence
cannot file the present suit alleging infringement of copyright because
the appellant/plaintiff is not entitled to collect the license fee. The
case of the respondent no.1/defendant no.1 is that only a copyright
society, registered under the provision of Section 33 of the Act, is one
which is entitled to grant licenses and collect license fee/royalty with
respect to the copyright works which are the subject matter of the Act,
and since the appellant/plaintiff is not a registered society, hence, it
cannot claim license/royalty, and therefore, it also cannot sue for
infringement of the copyrights and claim damages because the causes
of action of injunction against infringement of copyright with the
claim of damages is predicated on the aspect that the respondent
no.1/defendant no.1 must make payment of license fee/royalty to the
appellant/plaintiff which is not a registered copyright society under
Section 33 of the Act.
5. In order to appreciate the controversy at hand, various
provisions of the Act are to be referred to, and these provisions are as
under:-
"Section 2
2. Interpretation.-- In this Act, unless the context otherwise
requires,--
(c) "artistic work" means,--
(i) a painting, a sculpture, a drawing (including a diagram,
map, chart or plan), an engraving or a photograph, whether or
not any such work possesses artistic quality;
(ii) a work of architecture; and
(iii) any other work of artistic craftsmanship;
(d) "author" means, --
(i) in relation to a literary or dramatic work, the author of the
work;
(ii) in relation to a musical work, the composer;
(iii) in relation to an artistic work other than a photograph, the
artist;
(iv) in relation to a photograph, the person taking the
photograph;
(v) in relation to a cinematograph film or sound recording, the
producer; and
(vi) in relation to any literary, dramatic, musical or artistic
work which is computer-generated, the person who causes the
work to be created;
(dd) "broadcast" means communication to the public--
(i) by any means of wireless diffusion, whether in any one or
more of the forms of signs, sounds or visual images; or
(ii) by wire, and includes a re-broadcast;
(f) "cinematograph film" means any work of visual recording and
includes a sound recording accompanying such visual recording and
"cinematograph" shall be construed as including any work produced
by any process analogous to cinematography including video films;
(ff) "communication to the public" means making any work or
performance available for being seen or heard or otherwise enjoyed by
the public directly or by any means of display or diffusion other than
by issuing physical copies of it, whether simultaneously or at places
and times chosen individually, regardless of whether any member of
the public actually sees, hears or otherwise enjoys the work or
performance so made available.
Explanation.-- For the purposes of this clause, communication
through satellite or cable or any other means of simultaneous
communication to more than one household or place of residence
including residential rooms of any hotel or hostel shall be deemed to
be communication to the public;
(ffd) "copyright society" means a society registered under sub-section
(3) of Section 33;
(h) "dramatic work" includes any piece for recitation, choreographic
work or entertainment in dumb show, the scenic arrangement or
acting, form of which is fixed in writing or otherwise but does not
include a cinematograph film;
(m) "infringing copy" means,--
(i) in relation to a literary, dramatic, musical or artistic work, a
reproduction thereof otherwise than in the form of a
cinematographic film;
(ii) in relation to a cinematographic film, a copy of the film
made on any medium by any means;
(iii)in relation to a sound recording, any other recording
embodying the same sound recording, made by any means;
(iv) in relation to a programme or performance in which such
a broadcast reproduction right or a performer‟s right subsists
under the provisions of this Act, the sound recording or a
cinematographic film of such programme or performance,
if such reproduction, copy or sound recording is made or
imported in contravention of the provisions of this Act;
(o) "literary work" includes computer programmes, tables and
compilations including computer databases;
(p) "musical work" means a work consisting of music and includes
any graphical notation of such work but does not include any words or
any action intended to be sung, spoken or performed with the music;
(q) "performance", in relation to performer‟s right, means any visual
or acoustic presentation made live by one or more performers;
(xx) "sound recording" means a recording of sounds from which such
sounds may be produced regardless of the medium on which such
recording is made or the method by which the sounds are produced;
(y) "work" means any of the following works, namely:--
(i) a literary, dramatic, musical or artistic work;
(ii) a cinematograph film;
(iii) a sound recording;
Section 13
13. Works in which copyright subsists.-- (1) Subject to the
provisions of this section and the other provisions of this Act,
copyright shall subsist throughout India in the following classes of
works, that is to say,--
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films; and
(c) sound recording.
(2) Copyright shall not subsist in any work specified in sub-section
(1), other than a work to which the provisions of section 40 or section
41 apply, unless,--
(i) in the case of a published work, the work is first published in India,
or where the work is first published outside India, the author is at the
date of such publication, or in a case where the author was dead at that
date, was at the time of his death, a citizen of India;
(ii) in the case of an unpublished work other than a work of
architecture, the author is at the date of the making of the work a
citizen of India or domiciled in India; and
(iii) in the case of work of architecture the work is located in India.
Explanation.-- In the case of a work of joint authorship, the
conditions conferring copyright specified in this sub-section shall be
satisfied by all the authors of the work.
(3) Copyright shall not subsist--
(a) in any cinematograph film if a substantial part of the film is an
infringement of the copyright in any other work;
(b) in any sound recording made in respect of a literary, dramatic or
musical work, if in making the [sound recording], copyright in such
work has been infringed.
(4) The copyright in a cinematograph film or a sound recording shall
not affect the separate copyright in any work in respect of which or a
substantial part of which, the film, or, as the case may be, the sound
recording is made.
(5) In the case of work of architecture, copyright shall subsist only in
the artistic character and design and shall not extend to processes or
methods of construction.
Section 17
17. First owner of copyright.-- Subject to the provisions of this Act,
the author of a work shall be the first owner of the copyright therein:
Provided that--
(a) in the case of a literary, dramatic or artistic work made by the
author in the course of his employment by the proprietor of a
newspaper, magazine or similar periodical under a contract of
service or apprenticeship, for the purpose of publication in a
newspaper, magazine or similar periodical, the said proprietor
shall, in the absence of any agreement to the contrary, be the
first owner of the copyright in the work in so far as the copyright
relates to the publication of the work in any newspaper,
magazine or similar periodical, or to the reproduction of the
work for the purpose of its being so published, but in all other
respects the author shall be the first owner of the copyright in the
work;
(b) subject to the provisions of clause (a), in the case of a
photograph taken, or a painting or portrait drawn, or an
engraving or a cinematograph film made, for valuable
consideration at the instance of any person, such person shall, in
the absence of any agreement to the contrary, be the first owner
of the copyright therein;
(c) in the case of a work made in the course of the author‟s
employment under a contract of service or apprenticeship, to
which clause (a) or clause (b) does not apply, the employer shall,
in the absence of any agreement to the contrary, be the first
owner of the copyright therein;
(cc) in the case of any address or speech delivered in public, the
person who has delivered such address or speech or if such
person has delivered such address or speech on behalf of any
other person, such other person shall be the first owner of the
copyright therein notwithstanding that the person who delivers
such address or speech, or, as the case may be, the person on
whose behalf such address or speech is delivered, is employed
by any other person who arranges such address or speech or on
whose behalf or premises such address or speech is delivered;
(d) in the case of a Government work, Government shall, in the
absence of any agreement to the contrary, be the first owner of
the copyright therein;
(dd) in the case of a work made or first published by or under the
direction or control of any public undertaking, such public
undertaking shall, in the absence of any agreement to the
contrary, be the first owner of the copyright therein;
Explanation.-- For the purposes of this clause and section 28A,
"public undertaking" means--
(i) an undertaking owned or controlled by Government; or
(ii) a Government company as defined in section 617 of the
Companies Act, 1956 (1 of 1956);or
(iii) a body corporate established by or under any Central, Provincial
or State Act;
(e) in the case of a work to which the provisions of section 41 apply,
the international organization concerned shall be the first owner of the
copyright therein:
Provided that in case of any work incorporated in a cinematograph
work, nothing contained in clauses (b) and(c) shall affect the right of
the author in the work referred to in clause (a) of sub-section (1) of
section 13.
Section 18
18. Assignment of copyright.-- (1) The owner of the copyright in an
existing work or the prospective owner of the copyright in a future
work may assign to any person the copyright either wholly or partially
and either generally or subject to limitations and either for the whole
term of the copyright or any part thereof:
Provided that in the case of the assignment of copyright in any
future work, the assignment shall take effect only when the work
comes into existence:
Provided further that no such assignment shall be applied to any
medium or mode of exploitation of the work which did not exist or
was not in commercial use at the time when the assignment was made,
unless the assignment specifically referred to such medium or mode of
exploitation of the work:
Provided also that the author of the literary or musical work
included in a cinematograph film shall not assign or waive the right to
receive royalties to be shared on an equal basis with the assignee of
copyright for the utilization of such work in any form other than for
the communication to the public of the work along with the
cinematograph film in a cinema hall, except to the legal heirs of the
authors or to a copyright society for collection and distribution and
any agreement to contrary shall be void:
Provided also that the author of the literary or musical work
included in the sound recording but not forming part of any
cinematograph film shall not assign or waive the right to receive
royalties to be shared on an equal basis with the assignee of copyright
for any utilization of such work except to the legal heirs of the authors
or to a collecting society for collection and distribution and any
assignment to the contrary shall be void.
(2) Where the assignee of a copyright becomes entitled to any right
comprised in the copyright, the assignee as respects the rights so
assigned, and the assignor as respects the rights not assigned, shall be
treated for the purposes of this Act as the owner of copyright and the
provisions of this Act shall have effect accordingly.
(3) In this section, the expression "assignee" as respects the
assignment of the copyright in any future work includes the legal
representatives of the assignee, if the assignee dies before the work
comes into existence.
Section 30
30. Licences by owners of copyright.-- The owner of the copyright
in any existing work or the prospective owner of the copyright in any
future work may grant any interest in the right by licence in writing by
him or by his duly authorised agent:
Provided that in the case of a licence relating to copyright in any
future work, the licence shall take effect only when the work comes
into existence.
Explanation.-- Where a person to whom a licence relating to
copyright in any future work is granted under this section dies before
the work comes into existence, his legal representatives shall, in the
absence of any provision to the contrary in the licence, be entitled to
the benefit of the licence.
Section 33
33. Registration of Copyright society.-- (1) No person or
association of persons shall, after coming into force of the Copyright
(Amendment) Act, 1994 commence or, carry on the business of
issuing or granting licences in respect of any work in which copyright
subsists or in respect of any other rights conferred by this Act except
under or in accordance with the registration granted under sub-section
(3):
Provided that an owner of copyright shall, in his individual
capacity, continue to have the right to grant licences in respect of his
own works consistent with his obligations as a member of the
registered copyright society:
Provided further that the business of issuing or granting licence
in respect of literary, dramatic, musical and artistic works
incorporated in a cinematograph films or sound recordings shall be
carried out only through a copyright society duly registered under this
Act;
Provided also that a performing rights society functioning in
accordance with the provisions of section 33 on the date immediately
before the coming into force of the Copyright (Amendment) Act, 1994
shall be deemed to be a copyright society for the purposes of this
Chapter and every such society shall get itself registered within a
period of one year from the date of commencement of the Copyright
(Amendment) Act, 1994.
(2) Any association of persons who fulfils such conditions as may
be prescribed may apply for permission to do the business specified in
sub-section (1) to the Registrar of Copyrights who shall submit the
application to the Central Government.
(3) The Central Government may, having regard to the interests of
the authors and other owners of rights under this Act, the interest and
convenience of the public and in particular of the groups of persons
who are most likely to seek licences in respect of the applicants,
register such association of persons as a copyright society subject to
such conditions as may be prescribed:
Provided that the Central Government shall not ordinarily
register more than one copyright society to do business in respect of
the same class of works.
(3A) The registration granted to a copyright society under sub-section
(3) shall be for a period of five years and may be renewed from time
to time before the end of every five years on a request in the
prescribed form and the Central Government may renew the
registration after considering the report of Registrar of Copyrights on
the working of the copyright society under section 36:
Provided that the renewal of the registration of a copyright
society shall be subject to the continued collective control of the
copyright society being shared with the authors of works in their
capacity as owners of copyright or of the right to receive royalty:
Provided further that every copyright society already registered
before the coming into force of the Copyright (Amendment) Act, 2012
shall get itself registered under this Chapter within a period of one
year from the date of commencement of the Copyright (Amendment)
Act, 2012.
(4) The Central Government may, if it is satisfied that a
copyright society is being managed in a manner detrimental to the
interests of the authors and other owners of right concerned, cancel
the registration of such society after such inquiry as may be
prescribed.
(5) If the Central Government is of the opinion that in the
interest of the authors and other owners of right concerned, or for non-
compliance of sections 33A, sub-section (3) of section 35 and section
36 or any change carried out in the instrument by which the copyright
society is established or incorporated and registered by the Central
Government without prior notice to it, it is necessary so to do, it may,
by order suspend the registration of such society pending inquiry for
such period not exceeding one year as may be specified in such order
under sub-section (4) and that Government shall appoint an
administrator to discharge the functions of the copyright society.
Section 33A
33A. Tariff Scheme by copyright societies.-- (1) Every copyright
society shall publish its Tariff Scheme in such manner as may be
prescribed.
(2) Any person who is aggrieved by the tariff scheme may appeal to
the Appellate Board and the Board may, if satisfied after holding such
inquiry as it may consider necessary, make such orders as may be
required to remove any unreasonable element, anomaly or
inconsistency therein:
Provided that the aggrieved person shall pay to the copyright
society any fee as may be prescribed that has fallen due before making
an appeal to the Appellate Board and shall continue to pay such fee
until the appeal is decided, and the Board shall not issue any order
staying the collection of such fee pending disposal of the appeal:
Provided further that the Appellate Board may after hearing the
parties fix an interim tariff and direct the aggrieved parties to make the
payment accordingly pending disposal of the appeal.
Section 34
34. Administration of rights of owner by copyright society.-- (1)
Subject to such conditions as may be prescribed,--
(a) a copyright society may accept from an author and other owners of
right exclusive authorisation to administer any right in any work by
issue of licences or collection of licence fees or both; and
(b) an author and other owners of right shall have the right to
withdraw such authorisation without prejudice to the rights of the
copyright society under any contract.
(2) It shall be competent for a copyright society to enter into
agreement with any foreign society or organisation administering
rights corresponding to rights under this Act, to entrust to such foreign
society or organisation the administration in any foreign country of
rights administered by the said copyright society in India, or for
administering in India the rights administered in a foreign country by
such foreign society or organisation:
Provided that no such society or organisation shall permit any
discrimination in regard to the terms of licence or the distribution of
fees collected between rights in Indian and other works.
(3) Subject to such conditions as may be prescribed, a copyright
society may--
(i) issue licences under section 30 in respect of any rights under this
Act;
(ii) collect fees in pursuance of such licences;
(iii) distribute such fees among author and other owners of right after
making deductions for its own expenses;
(iv) perform any other functions consistent with the provisions of
section 35.
Section 35
35. Control over the copyright society by the 2 author and other
owners of right.-- (1) Every copyright society shall be subject to the
collective control of the author and other owners of right under this
Act whose rights it administers (not being author and other owners of
right under this Act administered by a foreign society or organisation
referred to in sub-section (2) of section 34) and shall, in such manner
as may be prescribed,--
(a) obtain the approval of such author and other owners of right for
its procedures of collection and distribution of fees;
(b) obtain their approval for the utilisation of any amounts collected
as fees for any purpose other than distribution to the author and
other owners of right; and
(c) provide to such owners regular, full and detailed information
concerning all its activities, in relation to the administration of their
rights.
(2) All fees distributed among the author and other owners of right]
shall, as far as may be, be distributed in proportion to the actual use of
their works.
(3) Every copyright society shall have a governing body with such
number of persons elected from among the members of the society
consisting of equal number of authors and owners of work for the
purpose of the administration of the society as may be specified.
(4) All members of copyrights society shall enjoy equal membership
rights and there shall be no discrimination between authors and
owners of right in the distribution of royalties.
Section 37
37. Broadcast reproduction right.-- (1) Every broadcasting
organisation shall have a special right to be known as "broadcast
reproduction right" in respect of its broadcasts.
(2) The broadcast reproduction right shall subsist until twenty-five
years from the beginning of the calendar year next following the year
in which the broadcast is made.
(3)During the continuance of a broadcast reproduction right in relation
to any broadcast, any person who, without the licence of the owner of
the right does any of the following acts of the broadcast or any
substantial part thereof,--
(a) re-broadcast the broadcast; or
(b) causes the broadcast to be heard or seen by the public on
payment of any charges;
(c) makes any sound recording or visual recording of the broadcast;
or
(d) makes any reproduction of such sound recording or visual
recording where such initial recording was done without licence or,
where it was licensed, for any purpose not envisaged by such
licence; or
(e) sells or gives on commercial rental or offer for sale or for such
rental, any such sound recording or visual recording referred to in
clause (c) or clause (d).
shall, subject to the provision of section 39, be deemed to have
infringed the broadcast reproduction right.
Section 38
38. Performer's right.-- (1) Where any performer appears or
engages in any performance, he shall have a special right to be known
as the "performer‟s right" in relation to such performance.
(2) The performer‟s right shall subsist until fifty years from the
beginning of the calendar year next following the year in which the
performance is made.
Section 51
51. When copyright infringed.-- Copyright in a work shall be
deemed to be infringed--
(a) when any person, without a licence granted by the owner of the
copyright or the Registrar of Copyrights under this Act or in
contravention of the conditions of a licence so granted or of any
condition imposed by a competent authority under this Act--
(i) does anything, the exclusive right to do which is by this Act
conferred upon the owner of the copyright, or
(ii) permits for profit any place to be used for the communication
of the work to the public where such communication constitutes
an infringement of the copyright in the work, unless he was not
aware and had no reasonable ground for believing that such
communication to the public would be an infringement of
copyright; or
(b) when any person--
(i) makes for sale or hire, or sells or lets for hire, or by way of
trade displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an extent
as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports 2 into India,
any infringing copies of the work:
Provided that nothing in sub-clause (iv) shall apply to the import of
one copy of any work for the private and domestic use of the
importer.
Explanation.-- For the purposes of this section, the reproduction of
a literary, dramatic, musical or artistic work in the form of a
cinematograph film shall be deemed to be an "infringing copy".
Section 55
55. Civil remedies for infringement of copyright.-- (1) Where
copyright in any work has been infringed, the owner of the copyright
shall, except as otherwise provided by this Act, be entitled to all such
remedies by way of injunction, damages, accounts and otherwise as
are or may be conferred by law for the infringement of a right:
Provided that if the defendant proves that at the date of the
infringement he was not aware and had no reasonable ground for
believing that copyright subsisted in the work, the plaintiff shall not be
entitled to any remedy other than an injunction in respect of the
infringement and a decree for the whole or part of the profits made by
the defendant by the sale of the infringing copies as the court may in
the circumstances deem reasonable.
(2) Where, in the case of a literary, dramatic, musical or artistic
work, or, subject to the provisions of sub-section (3) of section 13, a
cinematograph film or sound recording, a name purporting to be that
of the author, or the publisher, as the case may be, of that work,
appears on copies of the work as published, or, in the case of an
artistic work, appeared on the work when it was made, the person
whose name so appears or appeared shall, in any proceeding in respect
of infringement of copyright in such work, be presumed, unless the
contrary is proved, to be the author or the publisher of the work, as the
case may be.
(3) The costs of all parties in any proceedings in respect of the
infringement of copyright shall be in the discretion of the court."
6. Various Sub-Sections of Section 2 of the Act define the
four basic works which are the subject matter of copyright under the
Act, being a literary work, dramatic work, musical work and artistic
work. Besides these four basic works, copyright also exists in a sound
recording and a cinematograph film, and the same is provided in
Section 2(y) of the Act. Besides the aforesaid six copyright works,
there exist copyright with respect to the rights of broadcasting and
performers' rights which are the subject matter of Chapter VIII of the
Act.
7. It is the author of the work who is the first owner of the
copyright as per Section 17 of the Act. Who is an author is defined in
Section 2(d) of the Act. It may be noted that though a person may be
a creator of the work, if the person is creating a work on account of
payment made to him by another person, then though the author
creates the work, since the work is created on account of payment
made by third person, in that case, it is the person who makes payment
who would become the first owner of the copyright vide Section 17 of
the Act. The first owner of a copyright may transfer whole or part of
the rights in the copyright work to another person, and this is known
as assignment. The issue of assignment is the subject matter of Section
18 of the Act. Sub-Section 2 of Section 18 of the Act makes it clear
that an assignee of the copyright work becomes the owner of the
copyright. Section 19 of the Act defines the mode in which the
assignment of the copyright works is required to take place. Section
30 of the Act deals with grant of licenses. A license is granted by the
original owner of the copyright or by the assignee of the copyright. A
licensee is not equal to the owner of the copyright. A licensee only
has the right to use the copyright work as a licensee or if the license
agreement so provides then to further license the work ahead including
if the statutory licensee is a copyright society as per Section 33 of the
Act.
8(i). Section 33 of the Act deals with the existence of a
copyright society, the registration thereof, rights of such a copyright
society, the requirements it should fulfill for registration etc..
8(ii)(a). Sub-Section 1 of Section 33 of the Act starts with a
non-obstante clause and states that after coming into force of the
copyright (Amendment) Act 1994, no person or association can
commence or carry on business of issuing or granting licenses in
respect of the copyright works or other rights conferred by this Act
upon the copyright society, except under, or in accordance with the
registration granted under Sub-Section 3 of Section 33. In effect,
therefore, Sub-Section 1 states that no person or association is entitled
to grant license unless such a person is a registered copyright society
under Section 33 of the Act.
8(ii)(b). The first Proviso to Section 33(1) of the Act,
however clarifies and makes it clear that an owner of a copyright in
his individual capacity will continue to have the right to grant licenses
in respect of his own works i.e. works owned by the individual person,
subject to and consistent with the obligation of such an owner as a
member of the copyright society.
8(iii). In my opinion, the latter part of the first Proviso to
Section 33(1) of the Act whereby it is stated that the owner has an
entitlement to grant a license consistent with his obligation as member
of the registered copyright society, this can only mean that if the
owner of the copyright work has granted exclusive license to the
copyright society to grant further licenses, then in such a case, the
owner of the copyright could/can take away from himself the right of
granting licenses i.e. thereby not being able to grant any license with
respect to copyright work which is owned by the individual owner on
such a right being granted exclusively to the copyright society. In
other words, if an individual owner gives such a right to the copyright
society that the individual owner though the owner of the copyright,
he will not license the copyright works owned by him except to the
copyright society, only in such a case would the individual owner of
the copyright work not have a right to grant further license, but if the
owner of the copyright work has retained with himself the right to give
license, although the license is also granted to the copyright society,
then such an individual owner despite having granted license to the
copyright society can further keep granting licenses with respect to the
copyright works owned by the individual owner.
8(iv)(a). The second Proviso to Section 33(1) provides that
with respect to a literary work, dramatic work, musical work or artistic
work, as embedded in a cinematographic work or sound recording,
with respect to such basic works being a literary work, dramatic work,
musical work or artistic work, the business of issuing or granting of
license would vest only with a copyright society. As already stated
above, it is noted that there exists an independent copyright in a
cinematographic work or sound recording independent of a literary
work and/or dramatic work and/or musical work and/or artistic work.
The literary work or dramatic work or musical work or artistic work
incorporated and embedded in a cinematograph film results in a
copyright work, being a cinematograph film as a whole, yet the fact
that the cinematograph film contains the basic copyright works, there
will continue to exist such independent copyright that will not destroy
the copyright in the literary work and/or dramatic work, and/or artistic
work which is used to make the cinematograph film. This
interpretation applies mutatis mutandis to the sound recording because
a sound recording will, besides having an independent copyright,
embody in its copyright, literary work and musical work.
8(iv)(b). At this stage, I may also clarify that there is a
difference between a musical work and a sound recording. Musical
work does not mean music, as is known to a layman, because to a
layman, music means hearing music. A musical work, under the Act,
has nothing to do with sound or hearing, and a musical work is
nothing else but the musical notes and notations which represent a
particular sound and not the sound itself. It is when the musical notes
are played on an instrument by a person or on instruments by an
orchestra or a literary work is sung by a person, the same then results
in a sound and this sound when recorded results in a sound recording
which is a copyright work in itself, separate from the copyright in a
musical work. To put it in an over simplistic fashion, musical work
are the alphabets/words/sentences of the musical world or the sound
recording world and it is such alphabets/words/sentences of a musical
work which result in a sound recording when such musical work is
played by a musician or orchestra or sung by a singer etc.
8(iv)(c). In my opinion, when the second Proviso to Section
33(1) talks of issuing or granting of license with respect to the musical
work in sound recordings, it is only for the musical work in the sound
recording and not the sound recording itself. To clarify further, there
are two expressions used in the second Proviso to Section 33(1) of the
Act, first being a cinematograph film and the second being a sound
recording. Both these words are for the earlier copyright works
existing and stated in the second Proviso being the literary work,
dramatic work, musical work or artistic work. In a cinematographic
work, all four works being literary work and/or dramatic work and/or
musical work and/or artistic work are included, whereas, in a sound
recording, only musical or literary work are included. Therefore, it is
not as if that the second Proviso to Section 33(1) says that so far as
sound recording is concerned, the same cannot be licensed except by a
copyright society. Obviously, if this interpretation is given, the same
will nullify or render otiose the first Proviso to Section 33(1).
9. Sub-Sections 2, 3, 3A, 4 and 5 of Section 33 of the Act
deal with the registration of the copyright societies and the control of
the Central Government on such societies including a provision for the
parameters for registration and cancellation of registration of the
society. These sub-sections do not in any manner pertain to issuing of
licenses by the copyright society.
10. Section 33A of the Act provides for laying down of a
tariff scheme by a copyright society, and a person who is desirous of
taking license is liable to pay as per the tariff scheme of the copyright
society.
11. Section 34 provides for the administration of the rights of
the owner by copyright society, and it is relevant to note in this regard
that in Sub-Section(1)(a) there is an expression "exclusive
authorisation" and this expression shows that there need not be
exclusive authorisation given by the owner of the copyright to give
further licenses to the copyright society. This is in fact in furtherance
of the first Proviso to Section 33(1) of the Act, and as already
discussed above, that an owner of a copyright can/may continue to
retain the right to give further licenses although he may also have
given a right to give out licenses to a copyright society.
12. I need not burden this judgment with respect to the
copyrights pertaining to the rights of a broadcasting organisation and
performers, inasmuch as such rights are not the issue in this case and
in this case, we are only concerned with the copyright in a sound
recording, however, a reference has been made to such rights in the
earlier part of this judgment because these works are also copyright
works being the subject matter of the Act.
13. Section 51 of the Act prescribes as to when a copyright is
infringed. Obviously, the use of a copyright work, without a license
or without the permission of the owner of the copyright or any other
person who is entitled to give such license or permission, would be
infringement of the copyright.
14(i). Section 55 of the Act is very relevant for the purpose of
the present judgment and discussion because Section 55 of the Act
provides that only an owner of a copyright can institute a suit or legal
proceedings with respect to the infringement of a copyright. It is
required to be noted that there is no provision in the Act, which
entitles a copyright society to sue for infringement of the copyright.
Thus, only an owner of a copyright can sue for infringement of the
copyright, and the same is a separate issue than the issue of grant of
licenses whether by a copyright society exclusively or by the
copyright society alongwith the owner of the copyright in terms of the
first proviso to Section 33(1) of the Act.
14(ii). At this stage, it is also relevant to note that it is an
undisputed position emerging in the facts of this case that so far as the
copyright works of which the appellant/plaintiff is the owner, no
copyright society has been constituted till date. In fact, it is also
relevant to note that before the amendment to the Act by the amending
Act of 2012, the right to license the sound recordings were with a
society called the Phonographic Performers Limited, but even this
society does not exist as of today. I am stating this aforesaid aspect
because the law does not envisage a vacuum. It cannot be the legal
position that although no copyright society exists, an owner of a
copyright can only frustratingly keep on observing infringement of his
copyright by an infringer simply and only because there does not exist
a copyright society. It is in light of this situation that the provision of
Section 54 of the Act has to be read, which entitles and protects the
rights of a copyright owner to sue for infringement coupled with the
fact that even if a copyright society is made, then the first Proviso to
Section 33(1) entitles an owner of a copyright, in terms of the rights, if
retained by him, to continue to give licenses for his own copyright
works.
15(i). Ld. counsel for the respondent no.1/defendant no.1 has
very vehemently argued that the entire scheme which is brought about
by the Amendment Act 2012 to the Act is to create a situation
whereby no exploitation takes place of the licensee of the copyright
works for taking licenses and the payment of use of copyright works is
on the payment of a reasonable tariff, and therefore, it is argued by the
respondent no.1/defendant no.1 that the provisions of Sections 33 to
35 of the Act should be so read that no one except a copyright society
can collect license fee or royalty for the copyright works, and that
once only a copyright society can license copyright works and collect
license fee/royalty for the licensed copyright works, then such a
person such as the appellant/plaintiff who is not a copyright society,
cannot claim payment of license fee or royalty and sue for the
infringement of the copyright with the further claim of damages for
such infringement. It is also argued on behalf of the respondent
no.1/defendant no.1, by placing reliance upon the Judgment dated
12.10.2017 passed by a ld. Single Judge of this Court in W.P.(C)
12076/2016 that in this judgment, the present plaintiff has been held
disentitled to collect the license fee/royalty, and once that is so, the
Judgment dated 12.10.2017 will bar the present suit from being filed
by the appellant/plaintiff.
15(ii). In my opinion, these arguments urged on behalf of the
respondent no.1/defendant no.1 have no merit. The arguments of the
respondent no.1/defendant no.1, in my opinion, if accepted, will lead
to various undesirable consequences. The first undesirable
consequence is that if only a copyright society can collect the license
fee/royalty, and if no such society exists, which is the admitted
position on facts today, then it would mean that the infringers of
copyrights will make merry and keep on violating the rights of the
owners of the copyright works, simply on the ground that a copyright
society does not exist and no other person or entity except a copyright
society can collect license fee or royalty, and also therefore there
cannot lie a suit for infringement of a copyright. The second
undesirable consequence would be that there would result in a warped
interpretation of the first Proviso to Section 33(1) and the expression
"exclusive authorisation" in Section 34. When these aspects are read
together, it is implicit that a copyright society need not legally be the
only one exclusive authorized entity/person to give out licenses.
15(iii). While on this aspect, it would be relevant to take
into account and note the newly added Sub-Sections 9 and 10 of
Section 19, and these Sub-Sections for the first time give statutory
protection and recognition to the original owners of the literary work,
dramatic work, musical work and artistic work that if the copyright
works as created by these owners are used otherwise than by means of
a cinematograph film or sound recording, then for the use of such
works except in a cinematograph film or sound recording, the authors
of the works or the owners of the works will be entitled to an equal
share of the royalty for such use of the literary work or dramatic work
or musical work or artistic work. Therefore, in view of the adding of
the provisions of Sub-Sections 9 and 10 of Section 19 of the Act, no
longer there takes place any exploitation of the original author or
owner of the four basic copyright works being the literary work,
dramatic work, musical work or artistic work except to the extent and
when these works are put and used in the form of cinematograph film
and a sound recording. By the amendment of the Act in 2012, thus,
sufficient and additional protection has been given to the
owners/creators of the basic work being literary work, dramatic work,
musical work or artistic work.
16. The judgment of the ld. Single Judge dated 12.10.2017
titled as M/s Event and Entertainment Management Association
(EEMA) v. Union of India and Ors in W.P.(C) 12076/2016 does not
in any manner apply to the facts of the present case because all that the
said judgment held was that the present appellant/plaintiff was not a
copyright society, the present appellant/plaintiff could not as a
copyright society collect any license fee or royalty with respect to the
copyright works. Paras 15 and 16 of this judgment, however, make it
clear that the issue with respect to the infringement of copyright of an
owner was not the subject matter of the Judgment dated 12.10.2017
and the only issue before the Court in W.P.(C) 12076/2016 was of the
disentitlement of a person to collect royalty or license fee as a
copyright society without such copyright society being duly registered
under Section 33 of the Act. Also, it is relevant to note that the said
judgment in no manner deals with first Proviso to Section 33 (1) of the
Act read with the expression "exclusive authorisation" which is found
in Section 34 of the Act, and these aspects have already been
discussed above by this Court.
17. Finally, I would like to note that on behalf of the
appellant/plaintiff it is conceded that so far as the defendant no. 2 in
the suit namely, Yash Raj Films Private Limited, the respondent no.
2/defendant no.2 would be transposed as an additional plaintiff in the
suit, and necessary authorisation either exists or will be taken for
transposing Yash Raj Films Private Limited as one of the plaintiffs in the
suit.
18. In view of the above discussion, the impugned Judgment of
the trial court dated 07.08.2018 is set aside, and it is held that the
appellant's/plaintiff‟s suit seeking the relief of injunction and damages
alleging infringement of copyright was maintainable against the
respondent no.1/defendant no.1 and for the respondent no.1/defendant
no.1 to not use the copyright works unless the license is obtained by the
respondent no.1/defendant no.1 from the appellant/plaintiff.
19. So that there is no misunderstanding with respect to the
aspects decided and the interpretation given to the provisions of the Act
in this judgment, it is observed that what is dealt with and decided in this
case is only in the context of the copyright in a sound recording, and of
this copyright work the appellant/plaintiff claims to be the owner.
20. The appeal is accordingly allowed and disposed of in terms
of the aforesaid observations. All Pending Applications, if any, are also
disposed of.
JANUARY 11, 2019/ib VALMIKI J. MEHTA, J
