The Bombay High Court comprising of a Single Bench of Justice GS Patel held that registration of copyright is not mandatory under the Copyright Act, 1957 for seeking an injunction against infringement. (Sanjay Soya Pvt. Ltd. v. Narayani Trading Company)
The bench observed "Copyright Act gives a range of rights and privileges to the first owner of copyright without requiring prior registration".
The Judge emphasized that Section 51 of the Copyright Act, which speaks of infringement of copyright, does not restrict itself to works that have been registered with the Registrar of Copyright.
It observed,
"This Section does not, per se, demand prior registration. It does not say so anywhere; and this has to be read with Section 45(1), which says that the owner of copyright may apply for registration. Importantly, copyright infringement lies in the unlicensed use of original works, in which the author has a spectrum of exclusive rights."
The provision was also compared to Section 27 of the Trade Marks Act which creates a conspicuous bar on institution of any proceeding in regard to infringement of an unregistered trade mark.
The Court held,
"Copyright and trade mark operate in different spheres, though in some cases — as in the present one — these may overlap or intersect. An artistic work may receive both trade mark registration as a label and copyright protection as an artistic work. One requires registration to sustain a suit for infringement. The other does not. At its essence, copyright is a recognition of originality, granting rights of commercialisation and exclusivity in that commercialisation to the author of a work, a person who, by sweat of his brow, has brought into being the original expression or realisation of an idea. The emphasise is on originality, labour and skill in expression and realisation."
In holding thus, Justice Patel also declared as per incuriam two Single Bench decisions of the High Bombay Court in Dhiraj Dharamdas Dewani v. Sonal Info Systems Pvt Ltd & Ors., 2012 (3) Mh LJ 888, and Gulfam Exporters & Ors. v. Sayed Hamid & Ors. (unreported).
The above two cases had held that registration under the Copyright Act is mandatory before a plaintiff can claim relief, civil or criminal, under the Copyright Act.
The bench In its order observed that the above decisions were passed in ignorance of four binding precedents, all to the contrary.
The Bench noted that the decision in Dhiraj Dewani (supra) is entirely per incuriam.
The order stated, "It incorrectly notes that there was no decision of the Bombay High Court directly on this point. There were, in fact, four previous decisions, all to the contrary, each binding on the Dhiraj Dewani court."
The Bench firstly referred to the decision of Justice (Retd) SH Kapadia in Burroughs Wellcome (India) Ltd v. Uni-Sole Pvt Ltd & Anr., 1997(3) Mh L J 914, where after discussing the essence of copyright, the Single Judge had held that there is no provision under the Act that deprives an author of his rights on account of nonregistration of the copyright.
Similarly, in the decision of Justice (Retd) SJ Vazifdar in Asian Paints (I) Ltd v. M/s Jaikishan Paints & Allied Products, 2002(4) Mh L J 536, it was held that Registration under the Copyright Act is optional and not compulsory.
The Single Judge had ruled,
"Registration is not necessary to claim a copyright. Registration under the Copyright Act merely raises a prima facie presumption in respect of the particulars entered in the Register of Copyright. The presumption is however not conclusive. Copyright subsists as soon as the work is created and given a material form even if it is not registered."
The decisions in International Association of Lions Club v. National Association of Indian Lions & Ors., 2006(4) Mh L J 527 and in Anand Patwardhan v. Director-General of Doordarshan & Ors., Suit No. 2259 of 2004, were also to the same effect.
Justice Patel holding that the registration is not a pre-requisite to seek protection under the Copyright Act observed,
"The doctrine of precedent or stare decisis requires that a court is bound by the decisions of not only a larger bench but also of a bench of the same or coordinate strength. Such previous judgements of a bench of coordinate strength cannot be ignored. They are fully binding. The rationale is that there must be a certainty to the law and different judges in benches of the same strength cannot take antipodal views. The earlier binds the later. If the later decision is one made without noticing, or in ignorance of the earlier binding decision, then the later decision is one that must be held to be rendered per incuriam and as not being good law. This must, inevitably, therefore be the fate of the decision in Dhiraj Dewani."
He further added,
"There is one other decision of another learned Single Judge of this Court in Gulfam Exporters And Ors v Sayed Hamid And Ors under Section 63 of the Copyright Act 1957, which says in paragraphs 6 and 8 that registration is required.
On the question of copyright registration, therefore, Gulfam Exporters joins Dhiraj Dewani in the class of judgments rendered per incuriam on the question of compulsory registration under the Copyright Act."
Background of the case
Sanjay Soya has been manufacturing and selling edible oils of various kinds, including soyabean oil, for many years. Narayani Trading is a sole proprietorship. Sanjay Soya claimed to have the necessary ISO certifications for quality and other certifications. Sanjay Soya stated that it is the successor-in-title of one SK Oil Industries, in May 2003 SK Oil adopted the label, mark and artistic work in relation to edible oil which has distinctive get up, layout and schematic arrangements.
Recital (2) of the Deed of Assignment stated that SK Oil conceived, created, designed and developed a SOYA DROP label and that is the artwork that is the issue of concern in the present matter.
Contention of the parties
Counsel Mr Khandekar for Sanjay Soya submitted that the label is an original artistic work within the meaning of Section 2(c) of the Copyright Act. Further, it was added that, Sanjay Soya has used the mark, with some variants, openly and continuously since adoption.
Sanjay Soya claimed that Narayani Trading has entirely lifted and unauthorisedly and illicitly copied Sanjay Soya’s registered label mark and the copyright-protected artistic work in the label. It says that Narayani Trading’s label is a reproduction and an illicit copy of a substantial part of Sanjay Soya’s original and distinctive artwork.
Narayani Trading's contented that the Plaintiff could not assert copyright on the package label since the same was unregistered.
Court Observation and judgment
In his order, Justice Patel noted that the key features, integers or elements in Sanjay Soya's label all find place in Narayani Trading's label with only minor variations.
He held, "These variations are too irrelevant to warrant consideration. From a look at these products, it would be possible to tell one from the other. That is indeed the only test when it comes to trade mark infringement, passing off or copyright infringement."
The Bench rejected Narayani Trading's contention that the Plaintiff could not assert copyright on the package label since the same was unregistered. It held,
"Section 51, which speaks of infringement of copyright, does not restrict itself to works that have been registered with the Registrar of Copyright."
The Bench also refused to apply the precedent set in Dhiraj Dewani, holding the same to be per incuriam. In fact, it further rejected the pleading that a SLP in Dhiraj Dewani was dismissed by the Supreme Court.
Justice Patel said, "That is so, but the order of dismissal left the question of law open. In any case, an in limine dismissal, it is well settled, does not and cannot amount to a binding pronouncement on law."
Instead, the bench referred to the Supreme Court's decision in Engineering Analysis Centre of Excellence Pvt Ltd v Commissioner of Income Tax & Anr., LL 2021 SC 124, where while delineating the rights of an author of a work, of the owner of copyright, of the concept of copyright, and when and how it can be used, claimed and protected against infringement, the Supreme Court did not return a finding that prior registration is mandatory before such rights and entitlements are claimed.
It added that International treaties and obligations to which India is a party also militate against the acceptance of the Dhiraj Dewani view that copyright registration is mandatory.
In this context it referred to the Berne Convention of 1886 which is based on a principle that protection must not be conditional upon compliance with any formality.
Similarly, the Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) provides for the principles of national treatment, automatic protection and independence of protection.
The Court noted that the Dhiraj Dewani decision goes on to say that, without registration, an owner of a copyright may bring suit "in the regular Court" — meaning any of the courts covered by Section 20 of the CPC.
Justice Patel finding this analysis to be "plainly incorrect" opined,
"Suing in the court with jurisdiction where the plaintiff copyright holder resides or works is not dependent on registration at all. The owner of a copyright has a panoply of jurisdictional choices, including one that is available only to him (and not to an ordinary plaintiff in a regular civil suit)."
The decision was accordingly rendered in favour of the plaintiff directing the Defendant, Narayani Trading, to pay costs of Rs.4,00,230/- in favour of the former.
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