COPYRIGHT INFRINGEMENTS AND THEIR REMEDIES
What is Copyright
Infringement:
Copyright law gives rights to
the owner of the copyright, permitting him to do certain acts in respect of the
thing in which the right subsists. Any person who does one of these acts
without the permission that is license from the owner of the copyright or from
the authority i.e., the Registration of Copyrights is said to be infringement
of the right. Hence, it can be said that Copyright infringement refers to the
unauthorized use of someone’s copyrighted work. Thus, it is the use of
someone’s copyrighted work without permission thereby infringing certain rights
of the copyright holder, such as the right to reproduce, distribute, display or
perform the protected work.
In such circumstances, the owner
of the copyright is able to get remedies by way of taking some measures like
civil, criminal and administrative action. The copyright law also gives him
facility to move to the higher authority like the Copyright Board against the
decision of the Register of Copyrights. An appeal shall lie in the High Court
in respect of certain disputes. The provisions of section 51, section 37(3),
section 38(3) of the Copyright Act are relevant provisions regarding the
concept of Copyright infringement. Hence, to understand when Copyright is
infringed these above-mentioned sections should be discussed. Let us then throw
light on these sections one by one-
The provisions of Section
51 of the Copyright Act clearly states that-
Copyright in a work shall be
deemed to be infringed-
a) when
any person, without a licence granted by the owner of copyright or the
Registrar of Copyrights under this Copyright Act, 1957 or in contravention of
the conditions of a licence so granted or of any condition imposed by a
competent authority under this Act -
1. does anything, the exclusive right to do which is
by this Act conferred upon the owner of the copyright,
2. 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
ii)
by
way of trade displays or offers for sale or hire; or
iii)
distributes
either for the purpose of trade or to such an extent as to affect prejudicially
the owner of the copyright; or
iv)
by
way of trade exhibits in public; or
v)
imports
into India
any infringing copies of the
work.
Provided that the import of one
copy of any work for the private and domestic use of the importer shall not be
deemed to be infringed. As per the Explanation to section 51 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 38(3) of the Copyright
Act lays down that-
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-broadcasts the broadcast:
or
- b. causes the broadcast to be heard or
seen by the public on payment of any charges; or
- 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 hires to the public,
or offers for such sale or hire, any such sound recording or visual
recording;
shall be deemed to have
infringed the broadcast reproduction right.
Now let us discuss the
provisions of section 38(3) of the Copyright Act. The
provisions of Section 38(3) explains that-
During the continuance of a
performer's right in relation to any performance, any person who, without the
consent of the performer, does any of the following acts in respect of the
performance or any substantial part thereof, namely:
a.
makes
a sound recording or visual recording of the performance; or
b. reproduces
a sound recording or visual recording of the performance, which sound recording
or visual recording was-
i. made
without the performer's consent; or
ii. made
for purposes different from those for which the performer gave his consent; or
iii. made
for purposes different from those referred to in section 39 from a sound
recording or visual recording which was made in accordance with section 39; or
b.
broadcasts
the performance except where the broadcast is made from a sound recording or
visual recording other than one made in accordance with section 39, or is a
re-broadcast by the same broadcasting organisation of an earlier broadcast
which did not infringe the performer's right; or
d. communicates
the performance to the public otherwise than by broadcast, except where such
communication to the public is made from a sound recording or a visual
recording or a broadcast, shall be deemed to have infringed the performer's
right.
Section 39 lays down the provision as to what kinds of
acts do not infringe the broadcast reproduction right or performer's right. One
example of infringement of copyright can be cited - that is, if a person gets
his photograph taken by a photographer on payment. The copyright in the
photograph belongs to such a person. The publication of the photograph or its
exhibition at any place including the photographer's shop would amount to
infringement of the copyright in the photograph. Even, a wedding photograph
cannot be displayed in a photographer's shop without the express or implied
consent of the parties. Another example of infringement of copyright can be
given that playing music through a loudspeaker in a private room adjoining a
public in the restaurant was held performance in public and constituted
infringement of copyright.
Test of infringement:
The test of infringement can be
done by way of the presence of three elements in a case, and those are:
i. there
must be similarity between the infringing work and the copyrighted work or a
substantial part thereof.
ii. the
copyright must be the source from which the infringing work is derived.
iii. intent
to commit fraud on the part of the defendant for the purpose of saving labour.
The test of infringement is not
how much is taken but it depends on the worth of the work taken [as it was held
in case William Hill (Football) v. Landbroke (Football), 1964].
The third element i.e., (iii) is an animus furandi which means intent to commit
fraud on the part of defendant. It is an important consideration in arriving at
the conclusion in the case of infringement of a copyright [as it was held in
case Jarrold v. Houston (1857) 3K2J708].
Infringement of copyrighted
works:
A. Infringement of literary, dramatic or musical work:
When any person, without a
licence granted by the copyright or the Registrar of the Copyrights or in
contravention of the conditions of a licence so granted or of any condition
imposed by a competent authority under the Copyright Act, 1957-
- a. reproduces the work in a
material form;
- b store the work in any media by
electronic means;
- c. issues copies of the work to
the public;
- d. performs the work in public or
communicates it to the public;
- e. makes cinematograph film or a
sound recording of the work;
- f. makes translation or
adaptation of the work;
shall be deemed to be infringed.
In Fateh Singh Mehta
v, O.P. Singhal, AIR 1990 Raj. 8, it was concluded by the court that
the copyright in a work is deemed to be infringed when any person, without a
licence granted by the owner of the copyright does anything, which is the
exclusive right to do conferred by the Copyright Act, 1957 upon the owner of
the copyright. Where a person has copyright in a literary work, and any other
person reproduces the work or any substantial part thereof in any material
form, he is committing an infringement of copyright.
B. Infringement of computer programme:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
copyrights or in the contravention of the provisions of the Copyright Act,
1957;
- a. does any of the acts
specified clause (a) of section 14 of the Copyright Act, 1957;
- b. sells or gives on hire or offers
for sale or hire any copy of the computer programme
shall be deemed to be infringed.
C. Infringement of artistic work:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
Copyrights or in the contravention of the provisions of the Copyright Act,
1957;
- a. reproduces the work in any
material form including depiction in three dimensions of a two-dimensional
work or in two dimensions of a three-dimensional work;
- b. communicates the work to the
public;
- c. issues copies of the work to
the public, not being copies already in circulation;
- d. includes the work in a
cinematograph film;
- e. makes any adaptation of the
work; shall be deemed to be infringed.
Shall be deemed infringed.
D. Infringement of cinematograph film:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
copyrights or in the contravention of the provisions of the Copyright Act,
1957.
- a. makes a copy of the film
including a photograph of any image forming part thereof;
- b. sells or gives on hire or offers
for sale or hire any copy of the film;
- c. communicates the film to the
public;
shall be deemed to be infringed.
The cinematograph film includes
video films but video-taping of cinematograph film will constitute infringement
of the film. The video films broadcast over cable Television are often the
video tapes of the cinematographic films and that amount to infringement of
copyright in the film.
E. Infringement of sound recording:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
Copyrights or in the contravention of the provisions of the Copyrights Act,
1957;
- a. makes any other sound
recording embodying it:
- b. sells or gives on hire or offers
for sale or hire any copy of the sound recording:
- c. communicates the sound
recording to the public;
shall be deemed to be infringed.
A sound recording may be of a
literary work, such as, - the copyright in sound recording of Javed Aktar's
collection of poems "Tarkash" is with the recording company which has
the exclusive right to sell the cassettes in the market. Even if a person makes
a sound recording of the same in a home taping system and sells the same in the
market, he is infringing the copyright in sound recoding.
Who may sue for infringement of
Copyright:
The following persons may sue
for infringement of copyright.
i. The
owner of the copyright.
ii. The
assignee of the copyright.
iii. In
the case of a testamentary disposition of the copyright work, the legatee.
iv. An
exclusive licensee if the owner of the copyright is made a joint plaintiff or a
plaintiff unless the court otherwise directs [as it has been laid down in the
provisions of the Section 61 (1) of the Copyright Act].
v. In
the case of anonymous or pseudonymous work the publisher of the work until the
identity of the author is disclosed publicly [as it has been explained in Section
54 (b) of the Copyright Act].
In addition to above, some kinds
of persons are entitled to sue for the infringement of copyright.
Those are:
- A co-owner may sue alone to restraint infringement [Susiah v.
Muniswamy AIR 1966 Mad. 175].
- A licensee can sue the assignor for damages for breach of contract
if such assignor does not protect the interests [CBS (UK) v.
Charmdale Records (1980) 2 All ER 807].
- A non-exclusive licensee can be a plaintiff in the proceedings for
breach of copyright provided he joins the owner of the copyright
[Halsbury's Laws of England].
d. Even
more than one copyright owners may file an infringement suit in a
representative capacity provided they have to establish a common interest,
common grievance and a remedy which is beneficial to all the plaintiffs
[CBS/Songv. Television Broadcasts (1987) FSR 262].
Who may be sued for infringement
of Copyright:
The following kinds of persons
may be sued for the infringement of copyright. Those are:
- any person who knowingly infringes or abets the infringement
of the copyright in a work, or
- any other right conferred by this Copyright Act except the right
conferred by section 53A of the Copyright Act.
Section 53A speaks of resale
share right in original copies.
- Any person who knowingly makes use on a computer of an infringing
copy of a computer programme.
- Any person who knowingly makes, or has in his possession, any plate
for the purpose of making infringing copies of any work in which copyright
subsists.
- Where any offence under the Copyright Act, 1957 has been committed
by a company, every person who at the time the offence was committed was
in charge of, and was responsible to the company for, the conduct of the
business of the company, as well as the company shall be deemed to be
guilty of such offence.
- Any person who imports in India any infringing copy of the work
except for the private and domestic use.
- Any person who makes for sale or hire, or sells or lets for hire,
or by way of trade displays or offers for sale or hire, or
- Any person who distributes either for the purpose of trade or to
such an extent as to affect prejudicially the owner of the copyright, or
- Any person by way of trade exhibits in public an infringing copy of
the work.
Exceptions to Copyright
Infringement
1)
Quotation, Criticism and Review:
If a person uses the quotes of
the copyrighted work then it will not amount to infringement. Similarly, a
person may cite examples of the published work to criticize it or review it.
Criteria for using the exception-
· The
reason for using the material is genuinely for the purpose of Quotation,
Criticism and Review. For example, one cannot discuss the whole film in an
article and then comment that he/she liked the movie.
· The
material which is used for review or criticism should already be available to
the public. Thus, a person cannot use the material which is not made available
to the public but is kept confidential.
· The
use of the material should be fair. There is no legal definition of what is
fair and what is not. The fair use of the material will depend on the facts and
circumstances of the case.
· If
a person has provided sufficient acknowledgement to the copyright holder then
it would not amount to copyright.
2)
Parody and Pastiche:
Parody means to use the existing
work of someone to create the humour or to use it for mockery. Some people may
use the copyrighted work to make a critique while others may use it to draw
attention to a social phenomenon. Use of work for parody and pastiche is not
considered as a copyright infringement.
Remedies against infringement of
copyright
There are three kinds of
remedies for infringement of copyright as provided by the Copyright Law. Those
are:
i. Civil
remedies;
ii. Criminal
remedies; and
iii. administrative
remedies.
i.
Civil
remedies:
Civil remedies are:
- injunction for restraining infringement or violation of copyright;
- damages in the form of monetary amount;
- account of profit- the profits to be measured by account which has
been misappropriated by defendant for sale of infringed copies;
- delivery-up the infringing copies - the infringing copies can be
claimed by the owner of copyright against infringer.
A. Injunction for
restraining infringement or violation of copyright:
Injunction is one of the most
important civil remedies for infringement or violation of copyright.
It is common that the owner of
the copyright wants speedy and effective remedy to prevent infringement of his
copyright and damage to his business. He cannot afford to wait for years until
the final decision of the court. As a result, the law provides interim relief
to the owner of the copyright (plaintiff) by way of grant of interlocutory
injunction. The plaintiff who gets an interlocutory injunction has advantage
because by way of it the defendant is effectively stopped from infringement of
copyright. Order XXXIX of the Code of Civil Procedure, 1908 lays down the
provision as to procedure for interlocutory injunction. Section 55 of the
Copyright Act, 1957 lays down the provision for civil remedies by way of
injunction against infringement of copyright. To get civil remedy by way of
interlocutory injunction against infringement of copyright, the plaintiff (the
aggrieved owner of the copyright) has to establish following factors before the
court.
Those are:
I. that
he has a copyright- he is the owner of the copyright;
II. that
the defendant has reproduced the whole or substantial part of the plaintiff's
work;
III. that
he is likely to suffer irreparable injury;
IV. that
the infringement is substantial, that it causes substantial injury; and
V. that
the defendant should not be permitted to use the plaintiff's material in which
the copyright subsists for competitive purposes.
Interlocutory injunction secures
the immediate protection of copyright from an existent infringement or from the
continuance of infringement or an anticipated infringement. The grant of
interlocutory injunction would depend on the overall circumstances of the case.
In Macmillan and
Company Ltd. v. K and J Cooper AIR 1924 PC 75 it was a fact
that the plaintiffs have made out a prima facie case for the issue of a
temporary injunction under Order XXXIX, rule 2 of the Code of Civil Procedure,
1908 against a defendant who brought out a book containing selections from
plaintiff's book. It was held that there was a prima facie case for the issue
of a temporary injunction.
Factors to be considered for the
grant of interlocutory injunction:
The three factors are to be
taken into consideration such as- i. Prima facie case, ii. Balance of
convenience and iii. Irreparable injury. The Supreme Court in Dalpat
Kumar and Another v. Prahlad Singh and Others on 16 December,
1991 explained the meanings of these three phrases.
I. Prima
facie case
Prima facie case is a case which
has proceeded upon sufficient proof to that stage where it will support finding
if evidence to contrary is disregarded. Prima facie case is one of the elements
for the grant of temporary injunction.
II. Balance
of convenience
The second factor is that the
"balance of convenience" must be in favour of granting injunction.
The court while granting or refusing to grant injunction should exercise the
sound judicial discretion in order to find the amount of substantial mischief
or injury which is likely to be caused to the parties, if the injunction is
refused, and compare it with that which is likely to be caused to the other
side if the injunction is granted.
III. Irreparable
injury
Irreparable injury is such
injury that cannot be adequately measured. The court has to find out where
there is irreparable injury as suffered by the plaintiff
Interlocutory injunction may be
refused when:
- the interest of the plaintiff can be protected by ordering the
defendant to keep an account of profits;
- the plaintiff has been guilty of undue delay in coming to the
court;
- the conduct of the plaintiff amounted to acquiescence in the
infringement of copyright;
- the defendant has pleaded and established bonafide fair dealing;
- there is substantial doubts about the plaintiff's right to succeed
in the action.
In this context the relevant
case can be cited. In KBC Pictures v. A. R. Murgadoss, (2009)
AIHC 2852 (Bom) the Bombay High Court rejected the stand of the
plaintiff and held that the plaintiff could not prove that he was the owner of
the copyright in story. screenplay and dialogues for the Hindi versions of the
film "Ghajini". The plaintiff could not also make out a strong prima
facie case for the grant of injunction.
Anton Pillar Order (Search
Order)
It is common that the procedure
of law always provides equal opportunities to both the parties to present their
case. In certain case the court may, on an application made by the plaintiff,
pass an exparte order requiring the defendant to allow the plaintiff
accompanied by the attorney to enter his premises and make an inspection of
relevant documents, articles and take copies thereof or remove them for safe
custody. Such order is said to be Anton Pillar order.
Such orders are necessary when
there exists an apprehension in the mind of the plaintiff and the court that
following the regular procedure would give time to the defendant to destroy the
relevant documents and copies of the articles defeating the ends of justice.
Such an order is passed by the courts only when the plaintiff in his
application gives the fullest possible disclosure of all material facts within
his knowledge and the court is also convinced.
Mareva injunction
There is a particular form of
interlocutory injunction which is known as Mareva injunction. The main purpose
of which is to restrain the defendant from diposing of assets that may be
required to satisfy the plaintiff's claim or removing them from the jurisdiction
of the court. The Mareva injunction was granted in CBS v. Lambert (1983)
FSR 127. The Mareva injunction was directed not to the uncovering and
preserving of fragile evidence, but to the retention of assets belonging to the
defendant which may be needed to satisfy judgment in the action, particularly
if they may otherwise be removed from the jurisdiction. A number of cases have
manifested a desire to and a plaintiff following the precedents of the Mareva
injunction.
In India, the Copyright Act,
1957 by its section 55 provides the remedy of interlocutory injunction against
the infringement of copyright. Order XXXIX Rules 1 to 10 of the Code of Civil
Procedure, 1908 lay down the provisions by way of which the Interlocutory
injunction is granted. The principles laid down in English precedents are also
relied upon and followed in India. In the above respect, the term
"Injunction" as we could understand that: Injunction is a judicial
order to refrain from doing an act. According to Halsbury's Laws of England, an
injunction is a judicial process whereby a party is ordered to refrain from
doing or to do a particular act or thing. Injunction is primarily of two kinds,
one is permanent injunction and another being, temporary injunction. Permanent
injunction is one, intending to remain in force until the final termination of
the particular suit. Temporary injunction is such as is to continue until a
specified time, or until the further order of the court and that may be granted
at any stage of a suit, and is regulated by ORDER XXXIX of the Code of Civil
Procedure, 1908.
B. Damages in the form of
monetary amount:
Damages are always awarded where
a legal right has been infringed. The purpose of damages is to compensate the
plaintiff for the loss which he has suffered as a result of the defendant’s
breach. In Interfirm Corporation (Australia) v. Law Society of New
South Wales (1977) RPC 137, the court opined that it would be
wrong to regard it as the exclusive measure of damages for breach of copyright
appropriate to all circumstances. Therefore, various measures of damage
appropriate to the particular circumstances have to be applied. Generally, the
damages might be assessed as the amount of royalties the copyright owner would
have secured that the infringer obtained and paid for a licence to perform
whatever the infringing act was [as it was held in case Redwood
Music v. Chappell (1982) RPC 109].
This is a somewhat artificial
and rough and ready to exercise as the court is trying to put a value on a
transaction which did not happen: if it is a notional royalty [as it was held
in case USP plc v. London General Holdings Ltd (2006) FSR
65]. Another way of calculating the quantum of damages, depending on the
circumstances, might be based on the profit. The copyright owner would have
derived from sales lost as a result of the infringement [Jones v. London
Borough of Tower Hamlets (2001) RPC-407]. The Delhi High Court
opined that the courts in India were becoming very sensitive to the growing
menance of piracy, and have started granting the punitive damages even in cases
where due to absence of the exact figures of sales by the defendants under the
infringing copyright but exact damages were not available, the damages could be
awarded on the basis of estimation [as it was held in case Microsoft
Corporation v. Deepak Raval (2007) 1 MIPR 0072].
C. Account of profit-the
profits to be measured by account which has been misappropriated by defendant
for sale of infringed copies:
The plaintiff-owner is entitled
to require the defendant to account for the profits made by him by infringing
plaintiff's copyright. In Mohan Lal Gupta v. The Board of School
Education, Haryana; (1978) IPLR 83, it was held the defendant was
ordered to pay twenty percent (20%) of the profits to the plaintiff as the
matter copied was less than one-tenth of the book. The plaintiff is entitled to
opt for damages or for an account of profits. Although he cannot obtain both an
account of profits and damages, the defendant should be deprived of any profit
which he earned by wrongful acts committed in breach of the plaintiff's rights.
If there is no profits, the plaintiff may refuse an account of profits and
rather may elect to claim damages and he would be bound by an election once
made.
D. Delivery-up the
infringing copies - the infringing copies can be claimed by the owner of
copyright against infringer:
The Copyright Act, 1957 by its
section 58 provides that all infringing copies of any work in which copyright
subsists and all plates used or intended to be used for production of such
copies shall be deemed to be the property of the owner of the copyright. This
provision gives the owner of copyright the opportunity to take proceedings for
the recovery of possession of the infringing copies and plates or in respect of
the conversion thereof. Delhi High Court in Microsoft Corporation v.
Yogesh Papat and Another (2005) 30 PTC 245 (Del.) held that
the plaintiff was entitled to an order for the delivery up of the infringing
copies of the software. In Hawkins Cookers Ltd v. Magicook
Appliances Co. AIR 2003 Del 191, it was fact that the defendants
were dealing in pressure cookers. The defendants reproduced passages in their
cook books from the cook books of the plaintiff. In this case the Delhi High
Court held that the plaintiff was entitled to damages arising upon the
rendition of accounts by the defendants and also directed deliver all such cook
books to the plaintiff.
ii.
Criminal
remedies:
Criminal remedies include the
following ways-
a. Imprisonment
(imprisonment up to 3 years but not less than 6 months.) and imposition of fine
(fine not less than Rs. 50,000 but may extend upto Rs. 2,00,000).
b. Seizure
of infringing copies (Search and seizure of infringing goods)
c. restoration
of seized copies of a work or plates to the person with interest. (this means
delivery of infringing goods to the copyright owner).
a) Imprisonment
and imposition of fine:
The Copyright Act, 1957 provides
for imprisonment and imposition of fine in the case of:
i) offence
of infringement of copyright or other rights conferred by Section 63 of this
Act;
ii) second
and subsequent convictions (Section 63A of the Copyright Act);
iii) knowing
use of infringing copy of computer programme (Section 63B of the Copyright
Act);
iv) Possession
of plates for purpose of making infringing copies (Section 65 of the Copyright
Act);
v) Making
false entries in register etc.; for producing or tendering false entries
(Section 67 of the Copyright Act);
vi) Making
false statements for the purpose of deceiving or influencing any authority or
officer, (Section 68 of the Copyright Act);
vii) Contravention
of section 52A and Section 68A of the Act.
For imprisonment and imposition
of fine the Copyright Act, 1957 by its section 70 empowers the Metropolitan
Magistrate or a Judicial Magistrate of the first class.
b) Seizure of Infringing
copies:
The police officer not below the
rank of sub-inspector has been empowered to seize the infringing copies.
Sub-section (1) of section 64 of the Copyright Act, 1957 provides that any
police officer, not below the rank of a sub-inspector, may, if he is satisfied
that an offence under 63 in respect of the infringement of copyright in any
work has been, is being, or is likely to be, committed, seize without warrant,
all copies of the work, and all plates used for the purpose of making
infringing copies of the work, wherever found, and all copies and plates so
seized shall, as soon as practicable, be produced before a Magistrate.
c) Restoration of
seized copies of a work or plates to the person having interest:
The Magistrate has power to
order for restoration of seized copies of a work or plates to the person having
interest to take them. Sub-section (2) of section 64 of the Act provides that
any person having an interest in any copies of a work or plates seized by the
police officer under sub-section (1) may, within fifteen days of such seizure,
make an application to the magistrate for such copies or plates being restored
to him and the Magistrate, after hearing the applicant and the complainant and
making such further inquiry as may be necessary, shall make such order on the
application as he may deem fit. In Girish Gandhi v. Union of India AIR
1997 Raj 78 it was concluded that section 64 (2) provides the
safeguards when the person is aggrieved. He can make an application to the
Magistrate for restoring the seized copies to him.
iii.
Administrative
remedies:
Administrative remedies are:
a. ban
on the import of infringing copies to India;
b. confiscation
of the infringing copies.
The Registrar of Copyrights and
the Copyright Board have been vested with some powers to take action against
the violation of copyright. The owner of the copyright in any work gets this
types remedies under section 53 of the Copyright Act, 1957 against the
infringed copies made out of India which are subject to importation to India.
The owner of the copyright in the work should make an application to the
Registrar of Copyrights with the payment of prescribed fee. The Registrar of
Copyrights is empowered to ban on the import of infringing copies to India. The
customs officers under the provision of the Customs Act, 1962 are empowered to
confiscate those infringed copies.
a. Ban
on the import of infringing copies to India:
The Copyright Act, 1957 by its
section 53 empowers the Registrar of Copyrights to ban on the import of
infringing copies to India. In Penguil Book Ltd, England v. India
Book Distributors, AIR 1985 Del. 29. the court held that the Registrar
may, on application of the owner of copyright or his duly authorised agent,
impose ban on importation of infringed copies of such work. The Registrar will
make necessary enquiry before passing an order. He may also pass the order,
directing delivery of confiscated infringed copies to the owner of the work.
b. Confiscation
of the infringing copies:
Sub-section (3) of section 53 of
the Copyright Act, 1957 says that all infringed copies of the copyrighted work
imported in India shall be deemed to be goods as per section 11, of the Customs
Act, 1962 and those goods of which import is prohibited and restricted.
Provided that all such infringed copies imported to India confiscated under the
provisions of the Customs Act, 1962 shall not vest in Government but shall be
delivered to the owner of the copyright in the work. Section 11 of the Customs
Act, 1962 empowers the Central Government to prohibit the import or export of
goods of any specified description. The conditions for restrictions may be
required to be fulfilled before or after clearance. The purposes for which
importation/exportation can be prohibited are:
a. Maintenance
of security of India;
b. Maintenance
of public order and standards of decency or morality;
c. Prevention
of smuggling;
d. Prevention
of shortage of goods of any description;
e. Conservation
of foreign exchange and safeguarding of balance of payments;
f. Maintenance
of standards for classification, grading or marketing of goods in international
trade;
g. Protection
of patents, trademark and copyrights;
h. Fulfilment
of obligations under the Charter of the United Nations for the maintenance of
international peace and security;
i. Implementation
of any Treaty, Agreement or Convention with any country;
j. Compliance
of imported goods with any laws which are applicable to similar goods produced
or manufactured in India.
The Customs Act, 1962 prohibits the Export of books containing maps/diagrams showing borders of India erroneously.What is Copyright Infringement:
Copyright law gives rights to
the owner of the copyright, permitting him to do certain acts in respect of the
thing in which the right subsists. Any person who does one of these acts
without the permission that is license from the owner of the copyright or from
the authority i.e., the Registration of Copyrights is said to be infringement
of the right. Hence, it can be said that Copyright infringement refers to the
unauthorized use of someone’s copyrighted work. Thus, it is the use of
someone’s copyrighted work without permission thereby infringing certain rights
of the copyright holder, such as the right to reproduce, distribute, display or
perform the protected work.
In such circumstances, the owner
of the copyright is able to get remedies by way of taking some measures like
civil, criminal and administrative action. The copyright law also gives him
facility to move to the higher authority like the Copyright Board against the
decision of the Register of Copyrights. An appeal shall lie in the High Court
in respect of certain disputes. The provisions of section 51, section 37(3),
section 38(3) of the Copyright Act are relevant provisions regarding the
concept of Copyright infringement. Hence, to understand when Copyright is
infringed these above-mentioned sections should be discussed. Let us then throw
light on these sections one by one-
The provisions of Section
51 of the Copyright Act clearly states that-
Copyright in a work shall be
deemed to be infringed-
a) when
any person, without a licence granted by the owner of copyright or the
Registrar of Copyrights under this Copyright Act, 1957 or in contravention of
the conditions of a licence so granted or of any condition imposed by a
competent authority under this Act -
1. does anything, the exclusive right to do which is
by this Act conferred upon the owner of the copyright,
2. 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
ii)
by
way of trade displays or offers for sale or hire; or
iii)
distributes
either for the purpose of trade or to such an extent as to affect prejudicially
the owner of the copyright; or
iv)
by
way of trade exhibits in public; or
v)
imports
into India
any infringing copies of the
work.
Provided that the import of one
copy of any work for the private and domestic use of the importer shall not be
deemed to be infringed. As per the Explanation to section 51 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 38(3) of the Copyright
Act lays down that-
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-broadcasts the broadcast:
or
- b. causes the broadcast to be heard or
seen by the public on payment of any charges; or
- 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 hires to the public,
or offers for such sale or hire, any such sound recording or visual
recording;
shall be deemed to have
infringed the broadcast reproduction right.
Now let us discuss the
provisions of section 38(3) of the Copyright Act. The
provisions of Section 38(3) explains that-
During the continuance of a
performer's right in relation to any performance, any person who, without the
consent of the performer, does any of the following acts in respect of the
performance or any substantial part thereof, namely:
a.
makes
a sound recording or visual recording of the performance; or
b. reproduces
a sound recording or visual recording of the performance, which sound recording
or visual recording was-
i. made
without the performer's consent; or
ii. made
for purposes different from those for which the performer gave his consent; or
iii. made
for purposes different from those referred to in section 39 from a sound
recording or visual recording which was made in accordance with section 39; or
b.
broadcasts
the performance except where the broadcast is made from a sound recording or
visual recording other than one made in accordance with section 39, or is a
re-broadcast by the same broadcasting organisation of an earlier broadcast
which did not infringe the performer's right; or
d. communicates
the performance to the public otherwise than by broadcast, except where such
communication to the public is made from a sound recording or a visual
recording or a broadcast, shall be deemed to have infringed the performer's
right.
Section 39 lays down the provision as to what kinds of
acts do not infringe the broadcast reproduction right or performer's right. One
example of infringement of copyright can be cited - that is, if a person gets
his photograph taken by a photographer on payment. The copyright in the
photograph belongs to such a person. The publication of the photograph or its
exhibition at any place including the photographer's shop would amount to
infringement of the copyright in the photograph. Even, a wedding photograph
cannot be displayed in a photographer's shop without the express or implied
consent of the parties. Another example of infringement of copyright can be
given that playing music through a loudspeaker in a private room adjoining a
public in the restaurant was held performance in public and constituted
infringement of copyright.
Test of infringement:
The test of infringement can be
done by way of the presence of three elements in a case, and those are:
i. there
must be similarity between the infringing work and the copyrighted work or a
substantial part thereof.
ii. the
copyright must be the source from which the infringing work is derived.
iii. intent
to commit fraud on the part of the defendant for the purpose of saving labour.
The test of infringement is not
how much is taken but it depends on the worth of the work taken [as it was held
in case William Hill (Football) v. Landbroke (Football), 1964].
The third element i.e., (iii) is an animus furandi which means intent to commit
fraud on the part of defendant. It is an important consideration in arriving at
the conclusion in the case of infringement of a copyright [as it was held in
case Jarrold v. Houston (1857) 3K2J708].
Infringement of copyrighted
works:
A. Infringement of literary, dramatic or musical work:
When any person, without a
licence granted by the copyright or the Registrar of the Copyrights or in
contravention of the conditions of a licence so granted or of any condition
imposed by a competent authority under the Copyright Act, 1957-
- a. reproduces the work in a
material form;
- b store the work in any media by
electronic means;
- c. issues copies of the work to
the public;
- d. performs the work in public or
communicates it to the public;
- e. makes cinematograph film or a
sound recording of the work;
- f. makes translation or
adaptation of the work;
shall be deemed to be infringed.
In Fateh Singh Mehta
v, O.P. Singhal, AIR 1990 Raj. 8, it was concluded by the court that
the copyright in a work is deemed to be infringed when any person, without a
licence granted by the owner of the copyright does anything, which is the
exclusive right to do conferred by the Copyright Act, 1957 upon the owner of
the copyright. Where a person has copyright in a literary work, and any other
person reproduces the work or any substantial part thereof in any material
form, he is committing an infringement of copyright.
B. Infringement of computer programme:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
copyrights or in the contravention of the provisions of the Copyright Act,
1957;
- a. does any of the acts
specified clause (a) of section 14 of the Copyright Act, 1957;
- b. sells or gives on hire or offers
for sale or hire any copy of the computer programme
shall be deemed to be infringed.
C. Infringement of artistic work:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
Copyrights or in the contravention of the provisions of the Copyright Act,
1957;
- a. reproduces the work in any
material form including depiction in three dimensions of a two-dimensional
work or in two dimensions of a three-dimensional work;
- b. communicates the work to the
public;
- c. issues copies of the work to
the public, not being copies already in circulation;
- d. includes the work in a
cinematograph film;
- e. makes any adaptation of the
work; shall be deemed to be infringed.
Shall be deemed infringed.
D. Infringement of cinematograph film:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
copyrights or in the contravention of the provisions of the Copyright Act,
1957.
- a. makes a copy of the film
including a photograph of any image forming part thereof;
- b. sells or gives on hire or offers
for sale or hire any copy of the film;
- c. communicates the film to the
public;
shall be deemed to be infringed.
The cinematograph film includes
video films but video-taping of cinematograph film will constitute infringement
of the film. The video films broadcast over cable Television are often the
video tapes of the cinematographic films and that amount to infringement of
copyright in the film.
E. Infringement of sound recording:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
Copyrights or in the contravention of the provisions of the Copyrights Act,
1957;
- a. makes any other sound
recording embodying it:
- b. sells or gives on hire or offers
for sale or hire any copy of the sound recording:
- c. communicates the sound
recording to the public;
shall be deemed to be infringed.
A sound recording may be of a
literary work, such as, - the copyright in sound recording of Javed Aktar's
collection of poems "Tarkash" is with the recording company which has
the exclusive right to sell the cassettes in the market. Even if a person makes
a sound recording of the same in a home taping system and sells the same in the
market, he is infringing the copyright in sound recoding.
Who may sue for infringement of
Copyright:
The following persons may sue
for infringement of copyright.
i. The
owner of the copyright.
ii. The
assignee of the copyright.
iii. In
the case of a testamentary disposition of the copyright work, the legatee.
iv. An
exclusive licensee if the owner of the copyright is made a joint plaintiff or a
plaintiff unless the court otherwise directs [as it has been laid down in the
provisions of the Section 61 (1) of the Copyright Act].
v. In
the case of anonymous or pseudonymous work the publisher of the work until the
identity of the author is disclosed publicly [as it has been explained in Section
54 (b) of the Copyright Act].
In addition to above, some kinds
of persons are entitled to sue for the infringement of copyright.
Those are:
- A co-owner may sue alone to restraint infringement [Susiah v.
Muniswamy AIR 1966 Mad. 175].
- A licensee can sue the assignor for damages for breach of contract
if such assignor does not protect the interests [CBS (UK) v.
Charmdale Records (1980) 2 All ER 807].
- A non-exclusive licensee can be a plaintiff in the proceedings for
breach of copyright provided he joins the owner of the copyright
[Halsbury's Laws of England].
d. Even
more than one copyright owners may file an infringement suit in a
representative capacity provided they have to establish a common interest,
common grievance and a remedy which is beneficial to all the plaintiffs
[CBS/Songv. Television Broadcasts (1987) FSR 262].
Who may be sued for infringement
of Copyright:
The following kinds of persons
may be sued for the infringement of copyright. Those are:
- any person who knowingly infringes or abets the infringement
of the copyright in a work, or
- any other right conferred by this Copyright Act except the right
conferred by section 53A of the Copyright Act.
Section 53A speaks of resale
share right in original copies.
- Any person who knowingly makes use on a computer of an infringing
copy of a computer programme.
- Any person who knowingly makes, or has in his possession, any plate
for the purpose of making infringing copies of any work in which copyright
subsists.
- Where any offence under the Copyright Act, 1957 has been committed
by a company, every person who at the time the offence was committed was
in charge of, and was responsible to the company for, the conduct of the
business of the company, as well as the company shall be deemed to be
guilty of such offence.
- Any person who imports in India any infringing copy of the work
except for the private and domestic use.
- Any person who makes for sale or hire, or sells or lets for hire,
or by way of trade displays or offers for sale or hire, or
- Any person who distributes either for the purpose of trade or to
such an extent as to affect prejudicially the owner of the copyright, or
- Any person by way of trade exhibits in public an infringing copy of
the work.
Exceptions to Copyright
Infringement
1)
Quotation, Criticism and Review:
If a person uses the quotes of
the copyrighted work then it will not amount to infringement. Similarly, a
person may cite examples of the published work to criticize it or review it.
Criteria for using the exception-
· The
reason for using the material is genuinely for the purpose of Quotation,
Criticism and Review. For example, one cannot discuss the whole film in an
article and then comment that he/she liked the movie.
· The
material which is used for review or criticism should already be available to
the public. Thus, a person cannot use the material which is not made available
to the public but is kept confidential.
· The
use of the material should be fair. There is no legal definition of what is
fair and what is not. The fair use of the material will depend on the facts and
circumstances of the case.
· If
a person has provided sufficient acknowledgement to the copyright holder then
it would not amount to copyright.
2)
Parody and Pastiche:
Parody means to use the existing
work of someone to create the humour or to use it for mockery. Some people may
use the copyrighted work to make a critique while others may use it to draw
attention to a social phenomenon. Use of work for parody and pastiche is not
considered as a copyright infringement.
Remedies against infringement of
copyright
There are three kinds of
remedies for infringement of copyright as provided by the Copyright Law. Those
are:
i. Civil
remedies;
ii. Criminal
remedies; and
iii. administrative
remedies.
i.
Civil
remedies:
Civil remedies are:
- injunction for restraining infringement or violation of copyright;
- damages in the form of monetary amount;
- account of profit- the profits to be measured by account which has
been misappropriated by defendant for sale of infringed copies;
- delivery-up the infringing copies - the infringing copies can be
claimed by the owner of copyright against infringer.
A. Injunction for
restraining infringement or violation of copyright:
Injunction is one of the most
important civil remedies for infringement or violation of copyright.
It is common that the owner of
the copyright wants speedy and effective remedy to prevent infringement of his
copyright and damage to his business. He cannot afford to wait for years until
the final decision of the court. As a result, the law provides interim relief
to the owner of the copyright (plaintiff) by way of grant of interlocutory
injunction. The plaintiff who gets an interlocutory injunction has advantage
because by way of it the defendant is effectively stopped from infringement of
copyright. Order XXXIX of the Code of Civil Procedure, 1908 lays down the
provision as to procedure for interlocutory injunction. Section 55 of the
Copyright Act, 1957 lays down the provision for civil remedies by way of
injunction against infringement of copyright. To get civil remedy by way of
interlocutory injunction against infringement of copyright, the plaintiff (the
aggrieved owner of the copyright) has to establish following factors before the
court.
Those are:
I. that
he has a copyright- he is the owner of the copyright;
II. that
the defendant has reproduced the whole or substantial part of the plaintiff's
work;
III. that
he is likely to suffer irreparable injury;
IV. that
the infringement is substantial, that it causes substantial injury; and
V. that
the defendant should not be permitted to use the plaintiff's material in which
the copyright subsists for competitive purposes.
Interlocutory injunction secures
the immediate protection of copyright from an existent infringement or from the
continuance of infringement or an anticipated infringement. The grant of
interlocutory injunction would depend on the overall circumstances of the case.
In Macmillan and
Company Ltd. v. K and J Cooper AIR 1924 PC 75 it was a fact
that the plaintiffs have made out a prima facie case for the issue of a
temporary injunction under Order XXXIX, rule 2 of the Code of Civil Procedure,
1908 against a defendant who brought out a book containing selections from
plaintiff's book. It was held that there was a prima facie case for the issue
of a temporary injunction.
Factors to be considered for the
grant of interlocutory injunction:
The three factors are to be
taken into consideration such as- i. Prima facie case, ii. Balance of
convenience and iii. Irreparable injury. The Supreme Court in Dalpat
Kumar and Another v. Prahlad Singh and Others on 16 December,
1991 explained the meanings of these three phrases.
I. Prima
facie case
Prima facie case is a case which
has proceeded upon sufficient proof to that stage where it will support finding
if evidence to contrary is disregarded. Prima facie case is one of the elements
for the grant of temporary injunction.
II. Balance
of convenience
The second factor is that the
"balance of convenience" must be in favour of granting injunction.
The court while granting or refusing to grant injunction should exercise the
sound judicial discretion in order to find the amount of substantial mischief
or injury which is likely to be caused to the parties, if the injunction is
refused, and compare it with that which is likely to be caused to the other
side if the injunction is granted.
III. Irreparable
injury
Irreparable injury is such
injury that cannot be adequately measured. The court has to find out where
there is irreparable injury as suffered by the plaintiff
Interlocutory injunction may be
refused when:
- the interest of the plaintiff can be protected by ordering the
defendant to keep an account of profits;
- the plaintiff has been guilty of undue delay in coming to the
court;
- the conduct of the plaintiff amounted to acquiescence in the
infringement of copyright;
- the defendant has pleaded and established bonafide fair dealing;
- there is substantial doubts about the plaintiff's right to succeed
in the action.
In this context the relevant
case can be cited. In KBC Pictures v. A. R. Murgadoss, (2009)
AIHC 2852 (Bom) the Bombay High Court rejected the stand of the
plaintiff and held that the plaintiff could not prove that he was the owner of
the copyright in story. screenplay and dialogues for the Hindi versions of the
film "Ghajini". The plaintiff could not also make out a strong prima
facie case for the grant of injunction.
Anton Pillar Order (Search
Order)
It is common that the procedure
of law always provides equal opportunities to both the parties to present their
case. In certain case the court may, on an application made by the plaintiff,
pass an exparte order requiring the defendant to allow the plaintiff
accompanied by the attorney to enter his premises and make an inspection of
relevant documents, articles and take copies thereof or remove them for safe
custody. Such order is said to be Anton Pillar order.
Such orders are necessary when
there exists an apprehension in the mind of the plaintiff and the court that
following the regular procedure would give time to the defendant to destroy the
relevant documents and copies of the articles defeating the ends of justice.
Such an order is passed by the courts only when the plaintiff in his
application gives the fullest possible disclosure of all material facts within
his knowledge and the court is also convinced.
Mareva injunction
There is a particular form of
interlocutory injunction which is known as Mareva injunction. The main purpose
of which is to restrain the defendant from diposing of assets that may be
required to satisfy the plaintiff's claim or removing them from the jurisdiction
of the court. The Mareva injunction was granted in CBS v. Lambert (1983)
FSR 127. The Mareva injunction was directed not to the uncovering and
preserving of fragile evidence, but to the retention of assets belonging to the
defendant which may be needed to satisfy judgment in the action, particularly
if they may otherwise be removed from the jurisdiction. A number of cases have
manifested a desire to and a plaintiff following the precedents of the Mareva
injunction.
In India, the Copyright Act,
1957 by its section 55 provides the remedy of interlocutory injunction against
the infringement of copyright. Order XXXIX Rules 1 to 10 of the Code of Civil
Procedure, 1908 lay down the provisions by way of which the Interlocutory
injunction is granted. The principles laid down in English precedents are also
relied upon and followed in India. In the above respect, the term
"Injunction" as we could understand that: Injunction is a judicial
order to refrain from doing an act. According to Halsbury's Laws of England, an
injunction is a judicial process whereby a party is ordered to refrain from
doing or to do a particular act or thing. Injunction is primarily of two kinds,
one is permanent injunction and another being, temporary injunction. Permanent
injunction is one, intending to remain in force until the final termination of
the particular suit. Temporary injunction is such as is to continue until a
specified time, or until the further order of the court and that may be granted
at any stage of a suit, and is regulated by ORDER XXXIX of the Code of Civil
Procedure, 1908.
B. Damages in the form of
monetary amount:
Damages are always awarded where
a legal right has been infringed. The purpose of damages is to compensate the
plaintiff for the loss which he has suffered as a result of the defendant’s
breach. In Interfirm Corporation (Australia) v. Law Society of New
South Wales (1977) RPC 137, the court opined that it would be
wrong to regard it as the exclusive measure of damages for breach of copyright
appropriate to all circumstances. Therefore, various measures of damage
appropriate to the particular circumstances have to be applied. Generally, the
damages might be assessed as the amount of royalties the copyright owner would
have secured that the infringer obtained and paid for a licence to perform
whatever the infringing act was [as it was held in case Redwood
Music v. Chappell (1982) RPC 109].
This is a somewhat artificial
and rough and ready to exercise as the court is trying to put a value on a
transaction which did not happen: if it is a notional royalty [as it was held
in case USP plc v. London General Holdings Ltd (2006) FSR
65]. Another way of calculating the quantum of damages, depending on the
circumstances, might be based on the profit. The copyright owner would have
derived from sales lost as a result of the infringement [Jones v. London
Borough of Tower Hamlets (2001) RPC-407]. The Delhi High Court
opined that the courts in India were becoming very sensitive to the growing
menance of piracy, and have started granting the punitive damages even in cases
where due to absence of the exact figures of sales by the defendants under the
infringing copyright but exact damages were not available, the damages could be
awarded on the basis of estimation [as it was held in case Microsoft
Corporation v. Deepak Raval (2007) 1 MIPR 0072].
C. Account of profit-the
profits to be measured by account which has been misappropriated by defendant
for sale of infringed copies:
The plaintiff-owner is entitled
to require the defendant to account for the profits made by him by infringing
plaintiff's copyright. In Mohan Lal Gupta v. The Board of School
Education, Haryana; (1978) IPLR 83, it was held the defendant was
ordered to pay twenty percent (20%) of the profits to the plaintiff as the
matter copied was less than one-tenth of the book. The plaintiff is entitled to
opt for damages or for an account of profits. Although he cannot obtain both an
account of profits and damages, the defendant should be deprived of any profit
which he earned by wrongful acts committed in breach of the plaintiff's rights.
If there is no profits, the plaintiff may refuse an account of profits and
rather may elect to claim damages and he would be bound by an election once
made.
D. Delivery-up the
infringing copies - the infringing copies can be claimed by the owner of
copyright against infringer:
The Copyright Act, 1957 by its
section 58 provides that all infringing copies of any work in which copyright
subsists and all plates used or intended to be used for production of such
copies shall be deemed to be the property of the owner of the copyright. This
provision gives the owner of copyright the opportunity to take proceedings for
the recovery of possession of the infringing copies and plates or in respect of
the conversion thereof. Delhi High Court in Microsoft Corporation v.
Yogesh Papat and Another (2005) 30 PTC 245 (Del.) held that
the plaintiff was entitled to an order for the delivery up of the infringing
copies of the software. In Hawkins Cookers Ltd v. Magicook
Appliances Co. AIR 2003 Del 191, it was fact that the defendants
were dealing in pressure cookers. The defendants reproduced passages in their
cook books from the cook books of the plaintiff. In this case the Delhi High
Court held that the plaintiff was entitled to damages arising upon the
rendition of accounts by the defendants and also directed deliver all such cook
books to the plaintiff.
ii.
Criminal
remedies:
Criminal remedies include the
following ways-
a. Imprisonment
(imprisonment up to 3 years but not less than 6 months.) and imposition of fine
(fine not less than Rs. 50,000 but may extend upto Rs. 2,00,000).
b. Seizure
of infringing copies (Search and seizure of infringing goods)
c. restoration
of seized copies of a work or plates to the person with interest. (this means
delivery of infringing goods to the copyright owner).
a) Imprisonment
and imposition of fine:
The Copyright Act, 1957 provides
for imprisonment and imposition of fine in the case of:
i) offence
of infringement of copyright or other rights conferred by Section 63 of this
Act;
ii) second
and subsequent convictions (Section 63A of the Copyright Act);
iii) knowing
use of infringing copy of computer programme (Section 63B of the Copyright
Act);
iv) Possession
of plates for purpose of making infringing copies (Section 65 of the Copyright
Act);
v) Making
false entries in register etc.; for producing or tendering false entries
(Section 67 of the Copyright Act);
vi) Making
false statements for the purpose of deceiving or influencing any authority or
officer, (Section 68 of the Copyright Act);
vii) Contravention
of section 52A and Section 68A of the Act.
For imprisonment and imposition
of fine the Copyright Act, 1957 by its section 70 empowers the Metropolitan
Magistrate or a Judicial Magistrate of the first class.
b) Seizure of Infringing
copies:
The police officer not below the
rank of sub-inspector has been empowered to seize the infringing copies.
Sub-section (1) of section 64 of the Copyright Act, 1957 provides that any
police officer, not below the rank of a sub-inspector, may, if he is satisfied
that an offence under 63 in respect of the infringement of copyright in any
work has been, is being, or is likely to be, committed, seize without warrant,
all copies of the work, and all plates used for the purpose of making
infringing copies of the work, wherever found, and all copies and plates so
seized shall, as soon as practicable, be produced before a Magistrate.
c) Restoration of
seized copies of a work or plates to the person having interest:
The Magistrate has power to
order for restoration of seized copies of a work or plates to the person having
interest to take them. Sub-section (2) of section 64 of the Act provides that
any person having an interest in any copies of a work or plates seized by the
police officer under sub-section (1) may, within fifteen days of such seizure,
make an application to the magistrate for such copies or plates being restored
to him and the Magistrate, after hearing the applicant and the complainant and
making such further inquiry as may be necessary, shall make such order on the
application as he may deem fit. In Girish Gandhi v. Union of India AIR
1997 Raj 78 it was concluded that section 64 (2) provides the
safeguards when the person is aggrieved. He can make an application to the
Magistrate for restoring the seized copies to him.
iii.
Administrative
remedies:
Administrative remedies are:
a. ban
on the import of infringing copies to India;
b. confiscation
of the infringing copies.
The Registrar of Copyrights and
the Copyright Board have been vested with some powers to take action against
the violation of copyright. The owner of the copyright in any work gets this
types remedies under section 53 of the Copyright Act, 1957 against the
infringed copies made out of India which are subject to importation to India.
The owner of the copyright in the work should make an application to the
Registrar of Copyrights with the payment of prescribed fee. The Registrar of
Copyrights is empowered to ban on the import of infringing copies to India. The
customs officers under the provision of the Customs Act, 1962 are empowered to
confiscate those infringed copies.
a. Ban
on the import of infringing copies to India:
The Copyright Act, 1957 by its
section 53 empowers the Registrar of Copyrights to ban on the import of
infringing copies to India. In Penguil Book Ltd, England v. India
Book Distributors, AIR 1985 Del. 29. the court held that the Registrar
may, on application of the owner of copyright or his duly authorised agent,
impose ban on importation of infringed copies of such work. The Registrar will
make necessary enquiry before passing an order. He may also pass the order,
directing delivery of confiscated infringed copies to the owner of the work.
b. Confiscation
of the infringing copies:
Sub-section (3) of section 53 of
the Copyright Act, 1957 says that all infringed copies of the copyrighted work
imported in India shall be deemed to be goods as per section 11, of the Customs
Act, 1962 and those goods of which import is prohibited and restricted.
Provided that all such infringed copies imported to India confiscated under the
provisions of the Customs Act, 1962 shall not vest in Government but shall be
delivered to the owner of the copyright in the work. Section 11 of the Customs
Act, 1962 empowers the Central Government to prohibit the import or export of
goods of any specified description. The conditions for restrictions may be
required to be fulfilled before or after clearance. The purposes for which
importation/exportation can be prohibited are:
a. Maintenance
of security of India;
b. Maintenance
of public order and standards of decency or morality;
c. Prevention
of smuggling;
d. Prevention
of shortage of goods of any description;
e. Conservation
of foreign exchange and safeguarding of balance of payments;
f. Maintenance
of standards for classification, grading or marketing of goods in international
trade;
g. Protection
of patents, trademark and copyrights;
h. Fulfilment
of obligations under the Charter of the United Nations for the maintenance of
international peace and security;
i. Implementation
of any Treaty, Agreement or Convention with any country;
j. Compliance
of imported goods with any laws which are applicable to similar goods produced
or manufactured in India.
The Customs Act, 1962 prohibits the Export of books containing maps/diagrams showing borders of India erroneously.What is Copyright Infringement:
Copyright law gives rights to
the owner of the copyright, permitting him to do certain acts in respect of the
thing in which the right subsists. Any person who does one of these acts
without the permission that is license from the owner of the copyright or from
the authority i.e., the Registration of Copyrights is said to be infringement
of the right. Hence, it can be said that Copyright infringement refers to the
unauthorized use of someone’s copyrighted work. Thus, it is the use of
someone’s copyrighted work without permission thereby infringing certain rights
of the copyright holder, such as the right to reproduce, distribute, display or
perform the protected work.
In such circumstances, the owner
of the copyright is able to get remedies by way of taking some measures like
civil, criminal and administrative action. The copyright law also gives him
facility to move to the higher authority like the Copyright Board against the
decision of the Register of Copyrights. An appeal shall lie in the High Court
in respect of certain disputes. The provisions of section 51, section 37(3),
section 38(3) of the Copyright Act are relevant provisions regarding the
concept of Copyright infringement. Hence, to understand when Copyright is
infringed these above-mentioned sections should be discussed. Let us then throw
light on these sections one by one-
The provisions of Section
51 of the Copyright Act clearly states that-
Copyright in a work shall be
deemed to be infringed-
a) when
any person, without a licence granted by the owner of copyright or the
Registrar of Copyrights under this Copyright Act, 1957 or in contravention of
the conditions of a licence so granted or of any condition imposed by a
competent authority under this Act -
1. does anything, the exclusive right to do which is
by this Act conferred upon the owner of the copyright,
2. 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
ii)
by
way of trade displays or offers for sale or hire; or
iii)
distributes
either for the purpose of trade or to such an extent as to affect prejudicially
the owner of the copyright; or
iv)
by
way of trade exhibits in public; or
v)
imports
into India
any infringing copies of the
work.
Provided that the import of one
copy of any work for the private and domestic use of the importer shall not be
deemed to be infringed. As per the Explanation to section 51 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 38(3) of the Copyright
Act lays down that-
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-broadcasts the broadcast:
or
- b. causes the broadcast to be heard or
seen by the public on payment of any charges; or
- 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 hires to the public,
or offers for such sale or hire, any such sound recording or visual
recording;
shall be deemed to have
infringed the broadcast reproduction right.
Now let us discuss the
provisions of section 38(3) of the Copyright Act. The
provisions of Section 38(3) explains that-
During the continuance of a
performer's right in relation to any performance, any person who, without the
consent of the performer, does any of the following acts in respect of the
performance or any substantial part thereof, namely:
a.
makes
a sound recording or visual recording of the performance; or
b. reproduces
a sound recording or visual recording of the performance, which sound recording
or visual recording was-
i. made
without the performer's consent; or
ii. made
for purposes different from those for which the performer gave his consent; or
iii. made
for purposes different from those referred to in section 39 from a sound
recording or visual recording which was made in accordance with section 39; or
b.
broadcasts
the performance except where the broadcast is made from a sound recording or
visual recording other than one made in accordance with section 39, or is a
re-broadcast by the same broadcasting organisation of an earlier broadcast
which did not infringe the performer's right; or
d. communicates
the performance to the public otherwise than by broadcast, except where such
communication to the public is made from a sound recording or a visual
recording or a broadcast, shall be deemed to have infringed the performer's
right.
Section 39 lays down the provision as to what kinds of
acts do not infringe the broadcast reproduction right or performer's right. One
example of infringement of copyright can be cited - that is, if a person gets
his photograph taken by a photographer on payment. The copyright in the
photograph belongs to such a person. The publication of the photograph or its
exhibition at any place including the photographer's shop would amount to
infringement of the copyright in the photograph. Even, a wedding photograph
cannot be displayed in a photographer's shop without the express or implied
consent of the parties. Another example of infringement of copyright can be
given that playing music through a loudspeaker in a private room adjoining a
public in the restaurant was held performance in public and constituted
infringement of copyright.
Test of infringement:
The test of infringement can be
done by way of the presence of three elements in a case, and those are:
i. there
must be similarity between the infringing work and the copyrighted work or a
substantial part thereof.
ii. the
copyright must be the source from which the infringing work is derived.
iii. intent
to commit fraud on the part of the defendant for the purpose of saving labour.
The test of infringement is not
how much is taken but it depends on the worth of the work taken [as it was held
in case William Hill (Football) v. Landbroke (Football), 1964].
The third element i.e., (iii) is an animus furandi which means intent to commit
fraud on the part of defendant. It is an important consideration in arriving at
the conclusion in the case of infringement of a copyright [as it was held in
case Jarrold v. Houston (1857) 3K2J708].
Infringement of copyrighted
works:
A. Infringement of literary, dramatic or musical work:
When any person, without a
licence granted by the copyright or the Registrar of the Copyrights or in
contravention of the conditions of a licence so granted or of any condition
imposed by a competent authority under the Copyright Act, 1957-
- a. reproduces the work in a
material form;
- b store the work in any media by
electronic means;
- c. issues copies of the work to
the public;
- d. performs the work in public or
communicates it to the public;
- e. makes cinematograph film or a
sound recording of the work;
- f. makes translation or
adaptation of the work;
shall be deemed to be infringed.
In Fateh Singh Mehta
v, O.P. Singhal, AIR 1990 Raj. 8, it was concluded by the court that
the copyright in a work is deemed to be infringed when any person, without a
licence granted by the owner of the copyright does anything, which is the
exclusive right to do conferred by the Copyright Act, 1957 upon the owner of
the copyright. Where a person has copyright in a literary work, and any other
person reproduces the work or any substantial part thereof in any material
form, he is committing an infringement of copyright.
B. Infringement of computer programme:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
copyrights or in the contravention of the provisions of the Copyright Act,
1957;
- a. does any of the acts
specified clause (a) of section 14 of the Copyright Act, 1957;
- b. sells or gives on hire or offers
for sale or hire any copy of the computer programme
shall be deemed to be infringed.
C. Infringement of artistic work:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
Copyrights or in the contravention of the provisions of the Copyright Act,
1957;
- a. reproduces the work in any
material form including depiction in three dimensions of a two-dimensional
work or in two dimensions of a three-dimensional work;
- b. communicates the work to the
public;
- c. issues copies of the work to
the public, not being copies already in circulation;
- d. includes the work in a
cinematograph film;
- e. makes any adaptation of the
work; shall be deemed to be infringed.
Shall be deemed infringed.
D. Infringement of cinematograph film:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
copyrights or in the contravention of the provisions of the Copyright Act,
1957.
- a. makes a copy of the film
including a photograph of any image forming part thereof;
- b. sells or gives on hire or offers
for sale or hire any copy of the film;
- c. communicates the film to the
public;
shall be deemed to be infringed.
The cinematograph film includes
video films but video-taping of cinematograph film will constitute infringement
of the film. The video films broadcast over cable Television are often the
video tapes of the cinematographic films and that amount to infringement of
copyright in the film.
E. Infringement of sound recording:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
Copyrights or in the contravention of the provisions of the Copyrights Act,
1957;
- a. makes any other sound
recording embodying it:
- b. sells or gives on hire or offers
for sale or hire any copy of the sound recording:
- c. communicates the sound
recording to the public;
shall be deemed to be infringed.
A sound recording may be of a
literary work, such as, - the copyright in sound recording of Javed Aktar's
collection of poems "Tarkash" is with the recording company which has
the exclusive right to sell the cassettes in the market. Even if a person makes
a sound recording of the same in a home taping system and sells the same in the
market, he is infringing the copyright in sound recoding.
Who may sue for infringement of
Copyright:
The following persons may sue
for infringement of copyright.
i. The
owner of the copyright.
ii. The
assignee of the copyright.
iii. In
the case of a testamentary disposition of the copyright work, the legatee.
iv. An
exclusive licensee if the owner of the copyright is made a joint plaintiff or a
plaintiff unless the court otherwise directs [as it has been laid down in the
provisions of the Section 61 (1) of the Copyright Act].
v. In
the case of anonymous or pseudonymous work the publisher of the work until the
identity of the author is disclosed publicly [as it has been explained in Section
54 (b) of the Copyright Act].
In addition to above, some kinds
of persons are entitled to sue for the infringement of copyright.
Those are:
- A co-owner may sue alone to restraint infringement [Susiah v.
Muniswamy AIR 1966 Mad. 175].
- A licensee can sue the assignor for damages for breach of contract
if such assignor does not protect the interests [CBS (UK) v.
Charmdale Records (1980) 2 All ER 807].
- A non-exclusive licensee can be a plaintiff in the proceedings for
breach of copyright provided he joins the owner of the copyright
[Halsbury's Laws of England].
d. Even
more than one copyright owners may file an infringement suit in a
representative capacity provided they have to establish a common interest,
common grievance and a remedy which is beneficial to all the plaintiffs
[CBS/Songv. Television Broadcasts (1987) FSR 262].
Who may be sued for infringement
of Copyright:
The following kinds of persons
may be sued for the infringement of copyright. Those are:
- any person who knowingly infringes or abets the infringement
of the copyright in a work, or
- any other right conferred by this Copyright Act except the right
conferred by section 53A of the Copyright Act.
Section 53A speaks of resale
share right in original copies.
- Any person who knowingly makes use on a computer of an infringing
copy of a computer programme.
- Any person who knowingly makes, or has in his possession, any plate
for the purpose of making infringing copies of any work in which copyright
subsists.
- Where any offence under the Copyright Act, 1957 has been committed
by a company, every person who at the time the offence was committed was
in charge of, and was responsible to the company for, the conduct of the
business of the company, as well as the company shall be deemed to be
guilty of such offence.
- Any person who imports in India any infringing copy of the work
except for the private and domestic use.
- Any person who makes for sale or hire, or sells or lets for hire,
or by way of trade displays or offers for sale or hire, or
- Any person who distributes either for the purpose of trade or to
such an extent as to affect prejudicially the owner of the copyright, or
- Any person by way of trade exhibits in public an infringing copy of
the work.
Exceptions to Copyright
Infringement
1)
Quotation, Criticism and Review:
If a person uses the quotes of
the copyrighted work then it will not amount to infringement. Similarly, a
person may cite examples of the published work to criticize it or review it.
Criteria for using the exception-
· The
reason for using the material is genuinely for the purpose of Quotation,
Criticism and Review. For example, one cannot discuss the whole film in an
article and then comment that he/she liked the movie.
· The
material which is used for review or criticism should already be available to
the public. Thus, a person cannot use the material which is not made available
to the public but is kept confidential.
· The
use of the material should be fair. There is no legal definition of what is
fair and what is not. The fair use of the material will depend on the facts and
circumstances of the case.
· If
a person has provided sufficient acknowledgement to the copyright holder then
it would not amount to copyright.
2)
Parody and Pastiche:
Parody means to use the existing
work of someone to create the humour or to use it for mockery. Some people may
use the copyrighted work to make a critique while others may use it to draw
attention to a social phenomenon. Use of work for parody and pastiche is not
considered as a copyright infringement.
Remedies against infringement of
copyright
There are three kinds of
remedies for infringement of copyright as provided by the Copyright Law. Those
are:
i. Civil
remedies;
ii. Criminal
remedies; and
iii. administrative
remedies.
i.
Civil
remedies:
Civil remedies are:
- injunction for restraining infringement or violation of copyright;
- damages in the form of monetary amount;
- account of profit- the profits to be measured by account which has
been misappropriated by defendant for sale of infringed copies;
- delivery-up the infringing copies - the infringing copies can be
claimed by the owner of copyright against infringer.
A. Injunction for
restraining infringement or violation of copyright:
Injunction is one of the most
important civil remedies for infringement or violation of copyright.
It is common that the owner of
the copyright wants speedy and effective remedy to prevent infringement of his
copyright and damage to his business. He cannot afford to wait for years until
the final decision of the court. As a result, the law provides interim relief
to the owner of the copyright (plaintiff) by way of grant of interlocutory
injunction. The plaintiff who gets an interlocutory injunction has advantage
because by way of it the defendant is effectively stopped from infringement of
copyright. Order XXXIX of the Code of Civil Procedure, 1908 lays down the
provision as to procedure for interlocutory injunction. Section 55 of the
Copyright Act, 1957 lays down the provision for civil remedies by way of
injunction against infringement of copyright. To get civil remedy by way of
interlocutory injunction against infringement of copyright, the plaintiff (the
aggrieved owner of the copyright) has to establish following factors before the
court.
Those are:
I. that
he has a copyright- he is the owner of the copyright;
II. that
the defendant has reproduced the whole or substantial part of the plaintiff's
work;
III. that
he is likely to suffer irreparable injury;
IV. that
the infringement is substantial, that it causes substantial injury; and
V. that
the defendant should not be permitted to use the plaintiff's material in which
the copyright subsists for competitive purposes.
Interlocutory injunction secures
the immediate protection of copyright from an existent infringement or from the
continuance of infringement or an anticipated infringement. The grant of
interlocutory injunction would depend on the overall circumstances of the case.
In Macmillan and
Company Ltd. v. K and J Cooper AIR 1924 PC 75 it was a fact
that the plaintiffs have made out a prima facie case for the issue of a
temporary injunction under Order XXXIX, rule 2 of the Code of Civil Procedure,
1908 against a defendant who brought out a book containing selections from
plaintiff's book. It was held that there was a prima facie case for the issue
of a temporary injunction.
Factors to be considered for the
grant of interlocutory injunction:
The three factors are to be
taken into consideration such as- i. Prima facie case, ii. Balance of
convenience and iii. Irreparable injury. The Supreme Court in Dalpat
Kumar and Another v. Prahlad Singh and Others on 16 December,
1991 explained the meanings of these three phrases.
I. Prima
facie case
Prima facie case is a case which
has proceeded upon sufficient proof to that stage where it will support finding
if evidence to contrary is disregarded. Prima facie case is one of the elements
for the grant of temporary injunction.
II. Balance
of convenience
The second factor is that the
"balance of convenience" must be in favour of granting injunction.
The court while granting or refusing to grant injunction should exercise the
sound judicial discretion in order to find the amount of substantial mischief
or injury which is likely to be caused to the parties, if the injunction is
refused, and compare it with that which is likely to be caused to the other
side if the injunction is granted.
III. Irreparable
injury
Irreparable injury is such
injury that cannot be adequately measured. The court has to find out where
there is irreparable injury as suffered by the plaintiff
Interlocutory injunction may be
refused when:
- the interest of the plaintiff can be protected by ordering the
defendant to keep an account of profits;
- the plaintiff has been guilty of undue delay in coming to the
court;
- the conduct of the plaintiff amounted to acquiescence in the
infringement of copyright;
- the defendant has pleaded and established bonafide fair dealing;
- there is substantial doubts about the plaintiff's right to succeed
in the action.
In this context the relevant
case can be cited. In KBC Pictures v. A. R. Murgadoss, (2009)
AIHC 2852 (Bom) the Bombay High Court rejected the stand of the
plaintiff and held that the plaintiff could not prove that he was the owner of
the copyright in story. screenplay and dialogues for the Hindi versions of the
film "Ghajini". The plaintiff could not also make out a strong prima
facie case for the grant of injunction.
Anton Pillar Order (Search
Order)
It is common that the procedure
of law always provides equal opportunities to both the parties to present their
case. In certain case the court may, on an application made by the plaintiff,
pass an exparte order requiring the defendant to allow the plaintiff
accompanied by the attorney to enter his premises and make an inspection of
relevant documents, articles and take copies thereof or remove them for safe
custody. Such order is said to be Anton Pillar order.
Such orders are necessary when
there exists an apprehension in the mind of the plaintiff and the court that
following the regular procedure would give time to the defendant to destroy the
relevant documents and copies of the articles defeating the ends of justice.
Such an order is passed by the courts only when the plaintiff in his
application gives the fullest possible disclosure of all material facts within
his knowledge and the court is also convinced.
Mareva injunction
There is a particular form of
interlocutory injunction which is known as Mareva injunction. The main purpose
of which is to restrain the defendant from diposing of assets that may be
required to satisfy the plaintiff's claim or removing them from the jurisdiction
of the court. The Mareva injunction was granted in CBS v. Lambert (1983)
FSR 127. The Mareva injunction was directed not to the uncovering and
preserving of fragile evidence, but to the retention of assets belonging to the
defendant which may be needed to satisfy judgment in the action, particularly
if they may otherwise be removed from the jurisdiction. A number of cases have
manifested a desire to and a plaintiff following the precedents of the Mareva
injunction.
In India, the Copyright Act,
1957 by its section 55 provides the remedy of interlocutory injunction against
the infringement of copyright. Order XXXIX Rules 1 to 10 of the Code of Civil
Procedure, 1908 lay down the provisions by way of which the Interlocutory
injunction is granted. The principles laid down in English precedents are also
relied upon and followed in India. In the above respect, the term
"Injunction" as we could understand that: Injunction is a judicial
order to refrain from doing an act. According to Halsbury's Laws of England, an
injunction is a judicial process whereby a party is ordered to refrain from
doing or to do a particular act or thing. Injunction is primarily of two kinds,
one is permanent injunction and another being, temporary injunction. Permanent
injunction is one, intending to remain in force until the final termination of
the particular suit. Temporary injunction is such as is to continue until a
specified time, or until the further order of the court and that may be granted
at any stage of a suit, and is regulated by ORDER XXXIX of the Code of Civil
Procedure, 1908.
B. Damages in the form of
monetary amount:
Damages are always awarded where
a legal right has been infringed. The purpose of damages is to compensate the
plaintiff for the loss which he has suffered as a result of the defendant’s
breach. In Interfirm Corporation (Australia) v. Law Society of New
South Wales (1977) RPC 137, the court opined that it would be
wrong to regard it as the exclusive measure of damages for breach of copyright
appropriate to all circumstances. Therefore, various measures of damage
appropriate to the particular circumstances have to be applied. Generally, the
damages might be assessed as the amount of royalties the copyright owner would
have secured that the infringer obtained and paid for a licence to perform
whatever the infringing act was [as it was held in case Redwood
Music v. Chappell (1982) RPC 109].
This is a somewhat artificial
and rough and ready to exercise as the court is trying to put a value on a
transaction which did not happen: if it is a notional royalty [as it was held
in case USP plc v. London General Holdings Ltd (2006) FSR
65]. Another way of calculating the quantum of damages, depending on the
circumstances, might be based on the profit. The copyright owner would have
derived from sales lost as a result of the infringement [Jones v. London
Borough of Tower Hamlets (2001) RPC-407]. The Delhi High Court
opined that the courts in India were becoming very sensitive to the growing
menance of piracy, and have started granting the punitive damages even in cases
where due to absence of the exact figures of sales by the defendants under the
infringing copyright but exact damages were not available, the damages could be
awarded on the basis of estimation [as it was held in case Microsoft
Corporation v. Deepak Raval (2007) 1 MIPR 0072].
C. Account of profit-the
profits to be measured by account which has been misappropriated by defendant
for sale of infringed copies:
The plaintiff-owner is entitled
to require the defendant to account for the profits made by him by infringing
plaintiff's copyright. In Mohan Lal Gupta v. The Board of School
Education, Haryana; (1978) IPLR 83, it was held the defendant was
ordered to pay twenty percent (20%) of the profits to the plaintiff as the
matter copied was less than one-tenth of the book. The plaintiff is entitled to
opt for damages or for an account of profits. Although he cannot obtain both an
account of profits and damages, the defendant should be deprived of any profit
which he earned by wrongful acts committed in breach of the plaintiff's rights.
If there is no profits, the plaintiff may refuse an account of profits and
rather may elect to claim damages and he would be bound by an election once
made.
D. Delivery-up the
infringing copies - the infringing copies can be claimed by the owner of
copyright against infringer:
The Copyright Act, 1957 by its
section 58 provides that all infringing copies of any work in which copyright
subsists and all plates used or intended to be used for production of such
copies shall be deemed to be the property of the owner of the copyright. This
provision gives the owner of copyright the opportunity to take proceedings for
the recovery of possession of the infringing copies and plates or in respect of
the conversion thereof. Delhi High Court in Microsoft Corporation v.
Yogesh Papat and Another (2005) 30 PTC 245 (Del.) held that
the plaintiff was entitled to an order for the delivery up of the infringing
copies of the software. In Hawkins Cookers Ltd v. Magicook
Appliances Co. AIR 2003 Del 191, it was fact that the defendants
were dealing in pressure cookers. The defendants reproduced passages in their
cook books from the cook books of the plaintiff. In this case the Delhi High
Court held that the plaintiff was entitled to damages arising upon the
rendition of accounts by the defendants and also directed deliver all such cook
books to the plaintiff.
ii.
Criminal
remedies:
Criminal remedies include the
following ways-
a. Imprisonment
(imprisonment up to 3 years but not less than 6 months.) and imposition of fine
(fine not less than Rs. 50,000 but may extend upto Rs. 2,00,000).
b. Seizure
of infringing copies (Search and seizure of infringing goods)
c. restoration
of seized copies of a work or plates to the person with interest. (this means
delivery of infringing goods to the copyright owner).
a) Imprisonment
and imposition of fine:
The Copyright Act, 1957 provides
for imprisonment and imposition of fine in the case of:
i) offence
of infringement of copyright or other rights conferred by Section 63 of this
Act;
ii) second
and subsequent convictions (Section 63A of the Copyright Act);
iii) knowing
use of infringing copy of computer programme (Section 63B of the Copyright
Act);
iv) Possession
of plates for purpose of making infringing copies (Section 65 of the Copyright
Act);
v) Making
false entries in register etc.; for producing or tendering false entries
(Section 67 of the Copyright Act);
vi) Making
false statements for the purpose of deceiving or influencing any authority or
officer, (Section 68 of the Copyright Act);
vii) Contravention
of section 52A and Section 68A of the Act.
For imprisonment and imposition
of fine the Copyright Act, 1957 by its section 70 empowers the Metropolitan
Magistrate or a Judicial Magistrate of the first class.
b) Seizure of Infringing
copies:
The police officer not below the
rank of sub-inspector has been empowered to seize the infringing copies.
Sub-section (1) of section 64 of the Copyright Act, 1957 provides that any
police officer, not below the rank of a sub-inspector, may, if he is satisfied
that an offence under 63 in respect of the infringement of copyright in any
work has been, is being, or is likely to be, committed, seize without warrant,
all copies of the work, and all plates used for the purpose of making
infringing copies of the work, wherever found, and all copies and plates so
seized shall, as soon as practicable, be produced before a Magistrate.
c) Restoration of
seized copies of a work or plates to the person having interest:
The Magistrate has power to
order for restoration of seized copies of a work or plates to the person having
interest to take them. Sub-section (2) of section 64 of the Act provides that
any person having an interest in any copies of a work or plates seized by the
police officer under sub-section (1) may, within fifteen days of such seizure,
make an application to the magistrate for such copies or plates being restored
to him and the Magistrate, after hearing the applicant and the complainant and
making such further inquiry as may be necessary, shall make such order on the
application as he may deem fit. In Girish Gandhi v. Union of India AIR
1997 Raj 78 it was concluded that section 64 (2) provides the
safeguards when the person is aggrieved. He can make an application to the
Magistrate for restoring the seized copies to him.
iii.
Administrative
remedies:
Administrative remedies are:
a. ban
on the import of infringing copies to India;
b. confiscation
of the infringing copies.
The Registrar of Copyrights and
the Copyright Board have been vested with some powers to take action against
the violation of copyright. The owner of the copyright in any work gets this
types remedies under section 53 of the Copyright Act, 1957 against the
infringed copies made out of India which are subject to importation to India.
The owner of the copyright in the work should make an application to the
Registrar of Copyrights with the payment of prescribed fee. The Registrar of
Copyrights is empowered to ban on the import of infringing copies to India. The
customs officers under the provision of the Customs Act, 1962 are empowered to
confiscate those infringed copies.
a. Ban
on the import of infringing copies to India:
The Copyright Act, 1957 by its
section 53 empowers the Registrar of Copyrights to ban on the import of
infringing copies to India. In Penguil Book Ltd, England v. India
Book Distributors, AIR 1985 Del. 29. the court held that the Registrar
may, on application of the owner of copyright or his duly authorised agent,
impose ban on importation of infringed copies of such work. The Registrar will
make necessary enquiry before passing an order. He may also pass the order,
directing delivery of confiscated infringed copies to the owner of the work.
b. Confiscation
of the infringing copies:
Sub-section (3) of section 53 of
the Copyright Act, 1957 says that all infringed copies of the copyrighted work
imported in India shall be deemed to be goods as per section 11, of the Customs
Act, 1962 and those goods of which import is prohibited and restricted.
Provided that all such infringed copies imported to India confiscated under the
provisions of the Customs Act, 1962 shall not vest in Government but shall be
delivered to the owner of the copyright in the work. Section 11 of the Customs
Act, 1962 empowers the Central Government to prohibit the import or export of
goods of any specified description. The conditions for restrictions may be
required to be fulfilled before or after clearance. The purposes for which
importation/exportation can be prohibited are:
a. Maintenance
of security of India;
b. Maintenance
of public order and standards of decency or morality;
c. Prevention
of smuggling;
d. Prevention
of shortage of goods of any description;
e. Conservation
of foreign exchange and safeguarding of balance of payments;
f. Maintenance
of standards for classification, grading or marketing of goods in international
trade;
g. Protection
of patents, trademark and copyrights;
h. Fulfilment
of obligations under the Charter of the United Nations for the maintenance of
international peace and security;
i. Implementation
of any Treaty, Agreement or Convention with any country;
j. Compliance
of imported goods with any laws which are applicable to similar goods produced
or manufactured in India.
The Customs Act, 1962 prohibits the Export of books containing maps/diagrams showing borders of India erroneously.What is Copyright Infringement:
Copyright law gives rights to
the owner of the copyright, permitting him to do certain acts in respect of the
thing in which the right subsists. Any person who does one of these acts
without the permission that is license from the owner of the copyright or from
the authority i.e., the Registration of Copyrights is said to be infringement
of the right. Hence, it can be said that Copyright infringement refers to the
unauthorized use of someone’s copyrighted work. Thus, it is the use of
someone’s copyrighted work without permission thereby infringing certain rights
of the copyright holder, such as the right to reproduce, distribute, display or
perform the protected work.
In such circumstances, the owner
of the copyright is able to get remedies by way of taking some measures like
civil, criminal and administrative action. The copyright law also gives him
facility to move to the higher authority like the Copyright Board against the
decision of the Register of Copyrights. An appeal shall lie in the High Court
in respect of certain disputes. The provisions of section 51, section 37(3),
section 38(3) of the Copyright Act are relevant provisions regarding the
concept of Copyright infringement. Hence, to understand when Copyright is
infringed these above-mentioned sections should be discussed. Let us then throw
light on these sections one by one-
The provisions of Section
51 of the Copyright Act clearly states that-
Copyright in a work shall be
deemed to be infringed-
a) when
any person, without a licence granted by the owner of copyright or the
Registrar of Copyrights under this Copyright Act, 1957 or in contravention of
the conditions of a licence so granted or of any condition imposed by a
competent authority under this Act -
1. does anything, the exclusive right to do which is
by this Act conferred upon the owner of the copyright,
2. 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
ii)
by
way of trade displays or offers for sale or hire; or
iii)
distributes
either for the purpose of trade or to such an extent as to affect prejudicially
the owner of the copyright; or
iv)
by
way of trade exhibits in public; or
v)
imports
into India
any infringing copies of the
work.
Provided that the import of one
copy of any work for the private and domestic use of the importer shall not be
deemed to be infringed. As per the Explanation to section 51 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 38(3) of the Copyright
Act lays down that-
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-broadcasts the broadcast:
or
- b. causes the broadcast to be heard or
seen by the public on payment of any charges; or
- 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 hires to the public,
or offers for such sale or hire, any such sound recording or visual
recording;
shall be deemed to have
infringed the broadcast reproduction right.
Now let us discuss the
provisions of section 38(3) of the Copyright Act. The
provisions of Section 38(3) explains that-
During the continuance of a
performer's right in relation to any performance, any person who, without the
consent of the performer, does any of the following acts in respect of the
performance or any substantial part thereof, namely:
a.
makes
a sound recording or visual recording of the performance; or
b. reproduces
a sound recording or visual recording of the performance, which sound recording
or visual recording was-
i. made
without the performer's consent; or
ii. made
for purposes different from those for which the performer gave his consent; or
iii. made
for purposes different from those referred to in section 39 from a sound
recording or visual recording which was made in accordance with section 39; or
b.
broadcasts
the performance except where the broadcast is made from a sound recording or
visual recording other than one made in accordance with section 39, or is a
re-broadcast by the same broadcasting organisation of an earlier broadcast
which did not infringe the performer's right; or
d. communicates
the performance to the public otherwise than by broadcast, except where such
communication to the public is made from a sound recording or a visual
recording or a broadcast, shall be deemed to have infringed the performer's
right.
Section 39 lays down the provision as to what kinds of
acts do not infringe the broadcast reproduction right or performer's right. One
example of infringement of copyright can be cited - that is, if a person gets
his photograph taken by a photographer on payment. The copyright in the
photograph belongs to such a person. The publication of the photograph or its
exhibition at any place including the photographer's shop would amount to
infringement of the copyright in the photograph. Even, a wedding photograph
cannot be displayed in a photographer's shop without the express or implied
consent of the parties. Another example of infringement of copyright can be
given that playing music through a loudspeaker in a private room adjoining a
public in the restaurant was held performance in public and constituted
infringement of copyright.
Test of infringement:
The test of infringement can be
done by way of the presence of three elements in a case, and those are:
i. there
must be similarity between the infringing work and the copyrighted work or a
substantial part thereof.
ii. the
copyright must be the source from which the infringing work is derived.
iii. intent
to commit fraud on the part of the defendant for the purpose of saving labour.
The test of infringement is not
how much is taken but it depends on the worth of the work taken [as it was held
in case William Hill (Football) v. Landbroke (Football), 1964].
The third element i.e., (iii) is an animus furandi which means intent to commit
fraud on the part of defendant. It is an important consideration in arriving at
the conclusion in the case of infringement of a copyright [as it was held in
case Jarrold v. Houston (1857) 3K2J708].
Infringement of copyrighted
works:
A. Infringement of literary, dramatic or musical work:
When any person, without a
licence granted by the copyright or the Registrar of the Copyrights or in
contravention of the conditions of a licence so granted or of any condition
imposed by a competent authority under the Copyright Act, 1957-
- a. reproduces the work in a
material form;
- b store the work in any media by
electronic means;
- c. issues copies of the work to
the public;
- d. performs the work in public or
communicates it to the public;
- e. makes cinematograph film or a
sound recording of the work;
- f. makes translation or
adaptation of the work;
shall be deemed to be infringed.
In Fateh Singh Mehta
v, O.P. Singhal, AIR 1990 Raj. 8, it was concluded by the court that
the copyright in a work is deemed to be infringed when any person, without a
licence granted by the owner of the copyright does anything, which is the
exclusive right to do conferred by the Copyright Act, 1957 upon the owner of
the copyright. Where a person has copyright in a literary work, and any other
person reproduces the work or any substantial part thereof in any material
form, he is committing an infringement of copyright.
B. Infringement of computer programme:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
copyrights or in the contravention of the provisions of the Copyright Act,
1957;
- a. does any of the acts
specified clause (a) of section 14 of the Copyright Act, 1957;
- b. sells or gives on hire or offers
for sale or hire any copy of the computer programme
shall be deemed to be infringed.
C. Infringement of artistic work:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
Copyrights or in the contravention of the provisions of the Copyright Act,
1957;
- a. reproduces the work in any
material form including depiction in three dimensions of a two-dimensional
work or in two dimensions of a three-dimensional work;
- b. communicates the work to the
public;
- c. issues copies of the work to
the public, not being copies already in circulation;
- d. includes the work in a
cinematograph film;
- e. makes any adaptation of the
work; shall be deemed to be infringed.
Shall be deemed infringed.
D. Infringement of cinematograph film:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
copyrights or in the contravention of the provisions of the Copyright Act,
1957.
- a. makes a copy of the film
including a photograph of any image forming part thereof;
- b. sells or gives on hire or offers
for sale or hire any copy of the film;
- c. communicates the film to the
public;
shall be deemed to be infringed.
The cinematograph film includes
video films but video-taping of cinematograph film will constitute infringement
of the film. The video films broadcast over cable Television are often the
video tapes of the cinematographic films and that amount to infringement of
copyright in the film.
E. Infringement of sound recording:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
Copyrights or in the contravention of the provisions of the Copyrights Act,
1957;
- a. makes any other sound
recording embodying it:
- b. sells or gives on hire or offers
for sale or hire any copy of the sound recording:
- c. communicates the sound
recording to the public;
shall be deemed to be infringed.
A sound recording may be of a
literary work, such as, - the copyright in sound recording of Javed Aktar's
collection of poems "Tarkash" is with the recording company which has
the exclusive right to sell the cassettes in the market. Even if a person makes
a sound recording of the same in a home taping system and sells the same in the
market, he is infringing the copyright in sound recoding.
Who may sue for infringement of
Copyright:
The following persons may sue
for infringement of copyright.
i. The
owner of the copyright.
ii. The
assignee of the copyright.
iii. In
the case of a testamentary disposition of the copyright work, the legatee.
iv. An
exclusive licensee if the owner of the copyright is made a joint plaintiff or a
plaintiff unless the court otherwise directs [as it has been laid down in the
provisions of the Section 61 (1) of the Copyright Act].
v. In
the case of anonymous or pseudonymous work the publisher of the work until the
identity of the author is disclosed publicly [as it has been explained in Section
54 (b) of the Copyright Act].
In addition to above, some kinds
of persons are entitled to sue for the infringement of copyright.
Those are:
- A co-owner may sue alone to restraint infringement [Susiah v.
Muniswamy AIR 1966 Mad. 175].
- A licensee can sue the assignor for damages for breach of contract
if such assignor does not protect the interests [CBS (UK) v.
Charmdale Records (1980) 2 All ER 807].
- A non-exclusive licensee can be a plaintiff in the proceedings for
breach of copyright provided he joins the owner of the copyright
[Halsbury's Laws of England].
d. Even
more than one copyright owners may file an infringement suit in a
representative capacity provided they have to establish a common interest,
common grievance and a remedy which is beneficial to all the plaintiffs
[CBS/Songv. Television Broadcasts (1987) FSR 262].
Who may be sued for infringement
of Copyright:
The following kinds of persons
may be sued for the infringement of copyright. Those are:
- any person who knowingly infringes or abets the infringement
of the copyright in a work, or
- any other right conferred by this Copyright Act except the right
conferred by section 53A of the Copyright Act.
Section 53A speaks of resale
share right in original copies.
- Any person who knowingly makes use on a computer of an infringing
copy of a computer programme.
- Any person who knowingly makes, or has in his possession, any plate
for the purpose of making infringing copies of any work in which copyright
subsists.
- Where any offence under the Copyright Act, 1957 has been committed
by a company, every person who at the time the offence was committed was
in charge of, and was responsible to the company for, the conduct of the
business of the company, as well as the company shall be deemed to be
guilty of such offence.
- Any person who imports in India any infringing copy of the work
except for the private and domestic use.
- Any person who makes for sale or hire, or sells or lets for hire,
or by way of trade displays or offers for sale or hire, or
- Any person who distributes either for the purpose of trade or to
such an extent as to affect prejudicially the owner of the copyright, or
- Any person by way of trade exhibits in public an infringing copy of
the work.
Exceptions to Copyright
Infringement
1)
Quotation, Criticism and Review:
If a person uses the quotes of
the copyrighted work then it will not amount to infringement. Similarly, a
person may cite examples of the published work to criticize it or review it.
Criteria for using the exception-
· The
reason for using the material is genuinely for the purpose of Quotation,
Criticism and Review. For example, one cannot discuss the whole film in an
article and then comment that he/she liked the movie.
· The
material which is used for review or criticism should already be available to
the public. Thus, a person cannot use the material which is not made available
to the public but is kept confidential.
· The
use of the material should be fair. There is no legal definition of what is
fair and what is not. The fair use of the material will depend on the facts and
circumstances of the case.
· If
a person has provided sufficient acknowledgement to the copyright holder then
it would not amount to copyright.
2)
Parody and Pastiche:
Parody means to use the existing
work of someone to create the humour or to use it for mockery. Some people may
use the copyrighted work to make a critique while others may use it to draw
attention to a social phenomenon. Use of work for parody and pastiche is not
considered as a copyright infringement.
Remedies against infringement of
copyright
There are three kinds of
remedies for infringement of copyright as provided by the Copyright Law. Those
are:
i. Civil
remedies;
ii. Criminal
remedies; and
iii. administrative
remedies.
i.
Civil
remedies:
Civil remedies are:
- injunction for restraining infringement or violation of copyright;
- damages in the form of monetary amount;
- account of profit- the profits to be measured by account which has
been misappropriated by defendant for sale of infringed copies;
- delivery-up the infringing copies - the infringing copies can be
claimed by the owner of copyright against infringer.
A. Injunction for
restraining infringement or violation of copyright:
Injunction is one of the most
important civil remedies for infringement or violation of copyright.
It is common that the owner of
the copyright wants speedy and effective remedy to prevent infringement of his
copyright and damage to his business. He cannot afford to wait for years until
the final decision of the court. As a result, the law provides interim relief
to the owner of the copyright (plaintiff) by way of grant of interlocutory
injunction. The plaintiff who gets an interlocutory injunction has advantage
because by way of it the defendant is effectively stopped from infringement of
copyright. Order XXXIX of the Code of Civil Procedure, 1908 lays down the
provision as to procedure for interlocutory injunction. Section 55 of the
Copyright Act, 1957 lays down the provision for civil remedies by way of
injunction against infringement of copyright. To get civil remedy by way of
interlocutory injunction against infringement of copyright, the plaintiff (the
aggrieved owner of the copyright) has to establish following factors before the
court.
Those are:
I. that
he has a copyright- he is the owner of the copyright;
II. that
the defendant has reproduced the whole or substantial part of the plaintiff's
work;
III. that
he is likely to suffer irreparable injury;
IV. that
the infringement is substantial, that it causes substantial injury; and
V. that
the defendant should not be permitted to use the plaintiff's material in which
the copyright subsists for competitive purposes.
Interlocutory injunction secures
the immediate protection of copyright from an existent infringement or from the
continuance of infringement or an anticipated infringement. The grant of
interlocutory injunction would depend on the overall circumstances of the case.
In Macmillan and
Company Ltd. v. K and J Cooper AIR 1924 PC 75 it was a fact
that the plaintiffs have made out a prima facie case for the issue of a
temporary injunction under Order XXXIX, rule 2 of the Code of Civil Procedure,
1908 against a defendant who brought out a book containing selections from
plaintiff's book. It was held that there was a prima facie case for the issue
of a temporary injunction.
Factors to be considered for the
grant of interlocutory injunction:
The three factors are to be
taken into consideration such as- i. Prima facie case, ii. Balance of
convenience and iii. Irreparable injury. The Supreme Court in Dalpat
Kumar and Another v. Prahlad Singh and Others on 16 December,
1991 explained the meanings of these three phrases.
I. Prima
facie case
Prima facie case is a case which
has proceeded upon sufficient proof to that stage where it will support finding
if evidence to contrary is disregarded. Prima facie case is one of the elements
for the grant of temporary injunction.
II. Balance
of convenience
The second factor is that the
"balance of convenience" must be in favour of granting injunction.
The court while granting or refusing to grant injunction should exercise the
sound judicial discretion in order to find the amount of substantial mischief
or injury which is likely to be caused to the parties, if the injunction is
refused, and compare it with that which is likely to be caused to the other
side if the injunction is granted.
III. Irreparable
injury
Irreparable injury is such
injury that cannot be adequately measured. The court has to find out where
there is irreparable injury as suffered by the plaintiff
Interlocutory injunction may be
refused when:
- the interest of the plaintiff can be protected by ordering the
defendant to keep an account of profits;
- the plaintiff has been guilty of undue delay in coming to the
court;
- the conduct of the plaintiff amounted to acquiescence in the
infringement of copyright;
- the defendant has pleaded and established bonafide fair dealing;
- there is substantial doubts about the plaintiff's right to succeed
in the action.
In this context the relevant
case can be cited. In KBC Pictures v. A. R. Murgadoss, (2009)
AIHC 2852 (Bom) the Bombay High Court rejected the stand of the
plaintiff and held that the plaintiff could not prove that he was the owner of
the copyright in story. screenplay and dialogues for the Hindi versions of the
film "Ghajini". The plaintiff could not also make out a strong prima
facie case for the grant of injunction.
Anton Pillar Order (Search
Order)
It is common that the procedure
of law always provides equal opportunities to both the parties to present their
case. In certain case the court may, on an application made by the plaintiff,
pass an exparte order requiring the defendant to allow the plaintiff
accompanied by the attorney to enter his premises and make an inspection of
relevant documents, articles and take copies thereof or remove them for safe
custody. Such order is said to be Anton Pillar order.
Such orders are necessary when
there exists an apprehension in the mind of the plaintiff and the court that
following the regular procedure would give time to the defendant to destroy the
relevant documents and copies of the articles defeating the ends of justice.
Such an order is passed by the courts only when the plaintiff in his
application gives the fullest possible disclosure of all material facts within
his knowledge and the court is also convinced.
Mareva injunction
There is a particular form of
interlocutory injunction which is known as Mareva injunction. The main purpose
of which is to restrain the defendant from diposing of assets that may be
required to satisfy the plaintiff's claim or removing them from the jurisdiction
of the court. The Mareva injunction was granted in CBS v. Lambert (1983)
FSR 127. The Mareva injunction was directed not to the uncovering and
preserving of fragile evidence, but to the retention of assets belonging to the
defendant which may be needed to satisfy judgment in the action, particularly
if they may otherwise be removed from the jurisdiction. A number of cases have
manifested a desire to and a plaintiff following the precedents of the Mareva
injunction.
In India, the Copyright Act,
1957 by its section 55 provides the remedy of interlocutory injunction against
the infringement of copyright. Order XXXIX Rules 1 to 10 of the Code of Civil
Procedure, 1908 lay down the provisions by way of which the Interlocutory
injunction is granted. The principles laid down in English precedents are also
relied upon and followed in India. In the above respect, the term
"Injunction" as we could understand that: Injunction is a judicial
order to refrain from doing an act. According to Halsbury's Laws of England, an
injunction is a judicial process whereby a party is ordered to refrain from
doing or to do a particular act or thing. Injunction is primarily of two kinds,
one is permanent injunction and another being, temporary injunction. Permanent
injunction is one, intending to remain in force until the final termination of
the particular suit. Temporary injunction is such as is to continue until a
specified time, or until the further order of the court and that may be granted
at any stage of a suit, and is regulated by ORDER XXXIX of the Code of Civil
Procedure, 1908.
B. Damages in the form of
monetary amount:
Damages are always awarded where
a legal right has been infringed. The purpose of damages is to compensate the
plaintiff for the loss which he has suffered as a result of the defendant’s
breach. In Interfirm Corporation (Australia) v. Law Society of New
South Wales (1977) RPC 137, the court opined that it would be
wrong to regard it as the exclusive measure of damages for breach of copyright
appropriate to all circumstances. Therefore, various measures of damage
appropriate to the particular circumstances have to be applied. Generally, the
damages might be assessed as the amount of royalties the copyright owner would
have secured that the infringer obtained and paid for a licence to perform
whatever the infringing act was [as it was held in case Redwood
Music v. Chappell (1982) RPC 109].
This is a somewhat artificial
and rough and ready to exercise as the court is trying to put a value on a
transaction which did not happen: if it is a notional royalty [as it was held
in case USP plc v. London General Holdings Ltd (2006) FSR
65]. Another way of calculating the quantum of damages, depending on the
circumstances, might be based on the profit. The copyright owner would have
derived from sales lost as a result of the infringement [Jones v. London
Borough of Tower Hamlets (2001) RPC-407]. The Delhi High Court
opined that the courts in India were becoming very sensitive to the growing
menance of piracy, and have started granting the punitive damages even in cases
where due to absence of the exact figures of sales by the defendants under the
infringing copyright but exact damages were not available, the damages could be
awarded on the basis of estimation [as it was held in case Microsoft
Corporation v. Deepak Raval (2007) 1 MIPR 0072].
C. Account of profit-the
profits to be measured by account which has been misappropriated by defendant
for sale of infringed copies:
The plaintiff-owner is entitled
to require the defendant to account for the profits made by him by infringing
plaintiff's copyright. In Mohan Lal Gupta v. The Board of School
Education, Haryana; (1978) IPLR 83, it was held the defendant was
ordered to pay twenty percent (20%) of the profits to the plaintiff as the
matter copied was less than one-tenth of the book. The plaintiff is entitled to
opt for damages or for an account of profits. Although he cannot obtain both an
account of profits and damages, the defendant should be deprived of any profit
which he earned by wrongful acts committed in breach of the plaintiff's rights.
If there is no profits, the plaintiff may refuse an account of profits and
rather may elect to claim damages and he would be bound by an election once
made.
D. Delivery-up the
infringing copies - the infringing copies can be claimed by the owner of
copyright against infringer:
The Copyright Act, 1957 by its
section 58 provides that all infringing copies of any work in which copyright
subsists and all plates used or intended to be used for production of such
copies shall be deemed to be the property of the owner of the copyright. This
provision gives the owner of copyright the opportunity to take proceedings for
the recovery of possession of the infringing copies and plates or in respect of
the conversion thereof. Delhi High Court in Microsoft Corporation v.
Yogesh Papat and Another (2005) 30 PTC 245 (Del.) held that
the plaintiff was entitled to an order for the delivery up of the infringing
copies of the software. In Hawkins Cookers Ltd v. Magicook
Appliances Co. AIR 2003 Del 191, it was fact that the defendants
were dealing in pressure cookers. The defendants reproduced passages in their
cook books from the cook books of the plaintiff. In this case the Delhi High
Court held that the plaintiff was entitled to damages arising upon the
rendition of accounts by the defendants and also directed deliver all such cook
books to the plaintiff.
ii.
Criminal
remedies:
Criminal remedies include the
following ways-
a. Imprisonment
(imprisonment up to 3 years but not less than 6 months.) and imposition of fine
(fine not less than Rs. 50,000 but may extend upto Rs. 2,00,000).
b. Seizure
of infringing copies (Search and seizure of infringing goods)
c. restoration
of seized copies of a work or plates to the person with interest. (this means
delivery of infringing goods to the copyright owner).
a) Imprisonment
and imposition of fine:
The Copyright Act, 1957 provides
for imprisonment and imposition of fine in the case of:
i) offence
of infringement of copyright or other rights conferred by Section 63 of this
Act;
ii) second
and subsequent convictions (Section 63A of the Copyright Act);
iii) knowing
use of infringing copy of computer programme (Section 63B of the Copyright
Act);
iv) Possession
of plates for purpose of making infringing copies (Section 65 of the Copyright
Act);
v) Making
false entries in register etc.; for producing or tendering false entries
(Section 67 of the Copyright Act);
vi) Making
false statements for the purpose of deceiving or influencing any authority or
officer, (Section 68 of the Copyright Act);
vii) Contravention
of section 52A and Section 68A of the Act.
For imprisonment and imposition
of fine the Copyright Act, 1957 by its section 70 empowers the Metropolitan
Magistrate or a Judicial Magistrate of the first class.
b) Seizure of Infringing
copies:
The police officer not below the
rank of sub-inspector has been empowered to seize the infringing copies.
Sub-section (1) of section 64 of the Copyright Act, 1957 provides that any
police officer, not below the rank of a sub-inspector, may, if he is satisfied
that an offence under 63 in respect of the infringement of copyright in any
work has been, is being, or is likely to be, committed, seize without warrant,
all copies of the work, and all plates used for the purpose of making
infringing copies of the work, wherever found, and all copies and plates so
seized shall, as soon as practicable, be produced before a Magistrate.
c) Restoration of
seized copies of a work or plates to the person having interest:
The Magistrate has power to
order for restoration of seized copies of a work or plates to the person having
interest to take them. Sub-section (2) of section 64 of the Act provides that
any person having an interest in any copies of a work or plates seized by the
police officer under sub-section (1) may, within fifteen days of such seizure,
make an application to the magistrate for such copies or plates being restored
to him and the Magistrate, after hearing the applicant and the complainant and
making such further inquiry as may be necessary, shall make such order on the
application as he may deem fit. In Girish Gandhi v. Union of India AIR
1997 Raj 78 it was concluded that section 64 (2) provides the
safeguards when the person is aggrieved. He can make an application to the
Magistrate for restoring the seized copies to him.
iii.
Administrative
remedies:
Administrative remedies are:
a. ban
on the import of infringing copies to India;
b. confiscation
of the infringing copies.
The Registrar of Copyrights and
the Copyright Board have been vested with some powers to take action against
the violation of copyright. The owner of the copyright in any work gets this
types remedies under section 53 of the Copyright Act, 1957 against the
infringed copies made out of India which are subject to importation to India.
The owner of the copyright in the work should make an application to the
Registrar of Copyrights with the payment of prescribed fee. The Registrar of
Copyrights is empowered to ban on the import of infringing copies to India. The
customs officers under the provision of the Customs Act, 1962 are empowered to
confiscate those infringed copies.
a. Ban
on the import of infringing copies to India:
The Copyright Act, 1957 by its
section 53 empowers the Registrar of Copyrights to ban on the import of
infringing copies to India. In Penguil Book Ltd, England v. India
Book Distributors, AIR 1985 Del. 29. the court held that the Registrar
may, on application of the owner of copyright or his duly authorised agent,
impose ban on importation of infringed copies of such work. The Registrar will
make necessary enquiry before passing an order. He may also pass the order,
directing delivery of confiscated infringed copies to the owner of the work.
b. Confiscation
of the infringing copies:
Sub-section (3) of section 53 of
the Copyright Act, 1957 says that all infringed copies of the copyrighted work
imported in India shall be deemed to be goods as per section 11, of the Customs
Act, 1962 and those goods of which import is prohibited and restricted.
Provided that all such infringed copies imported to India confiscated under the
provisions of the Customs Act, 1962 shall not vest in Government but shall be
delivered to the owner of the copyright in the work. Section 11 of the Customs
Act, 1962 empowers the Central Government to prohibit the import or export of
goods of any specified description. The conditions for restrictions may be
required to be fulfilled before or after clearance. The purposes for which
importation/exportation can be prohibited are:
a. Maintenance
of security of India;
b. Maintenance
of public order and standards of decency or morality;
c. Prevention
of smuggling;
d. Prevention
of shortage of goods of any description;
e. Conservation
of foreign exchange and safeguarding of balance of payments;
f. Maintenance
of standards for classification, grading or marketing of goods in international
trade;
g. Protection
of patents, trademark and copyrights;
h. Fulfilment
of obligations under the Charter of the United Nations for the maintenance of
international peace and security;
i. Implementation
of any Treaty, Agreement or Convention with any country;
j. Compliance of imported goods with any laws What is Copyright Infringement:
Copyright law gives rights to
the owner of the copyright, permitting him to do certain acts in respect of the
thing in which the right subsists. Any person who does one of these acts
without the permission that is license from the owner of the copyright or from
the authority i.e., the Registration of Copyrights is said to be infringement
of the right. Hence, it can be said that Copyright infringement refers to the
unauthorized use of someone’s copyrighted work. Thus, it is the use of
someone’s copyrighted work without permission thereby infringing certain rights
of the copyright holder, such as the right to reproduce, distribute, display or
perform the protected work.
In such circumstances, the owner
of the copyright is able to get remedies by way of taking some measures like
civil, criminal and administrative action. The copyright law also gives him
facility to move to the higher authority like the Copyright Board against the
decision of the Register of Copyrights. An appeal shall lie in the High Court
in respect of certain disputes. The provisions of section 51, section 37(3),
section 38(3) of the Copyright Act are relevant provisions regarding the
concept of Copyright infringement. Hence, to understand when Copyright is
infringed these above-mentioned sections should be discussed. Let us then throw
light on these sections one by one-
The provisions of Section
51 of the Copyright Act clearly states that-
Copyright in a work shall be
deemed to be infringed-
a) when
any person, without a licence granted by the owner of copyright or the
Registrar of Copyrights under this Copyright Act, 1957 or in contravention of
the conditions of a licence so granted or of any condition imposed by a
competent authority under this Act -
1. does anything, the exclusive right to do which is
by this Act conferred upon the owner of the copyright,
2. 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
ii)
by
way of trade displays or offers for sale or hire; or
iii)
distributes
either for the purpose of trade or to such an extent as to affect prejudicially
the owner of the copyright; or
iv)
by
way of trade exhibits in public; or
v)
imports
into India
any infringing copies of the
work.
Provided that the import of one
copy of any work for the private and domestic use of the importer shall not be
deemed to be infringed. As per the Explanation to section 51 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 38(3) of the Copyright
Act lays down that-
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-broadcasts the broadcast:
or
- b. causes the broadcast to be heard or
seen by the public on payment of any charges; or
- 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 hires to the public,
or offers for such sale or hire, any such sound recording or visual
recording;
shall be deemed to have
infringed the broadcast reproduction right.
Now let us discuss the
provisions of section 38(3) of the Copyright Act. The
provisions of Section 38(3) explains that-
During the continuance of a
performer's right in relation to any performance, any person who, without the
consent of the performer, does any of the following acts in respect of the
performance or any substantial part thereof, namely:
a.
makes
a sound recording or visual recording of the performance; or
b. reproduces
a sound recording or visual recording of the performance, which sound recording
or visual recording was-
i. made
without the performer's consent; or
ii. made
for purposes different from those for which the performer gave his consent; or
iii. made
for purposes different from those referred to in section 39 from a sound
recording or visual recording which was made in accordance with section 39; or
b.
broadcasts
the performance except where the broadcast is made from a sound recording or
visual recording other than one made in accordance with section 39, or is a
re-broadcast by the same broadcasting organisation of an earlier broadcast
which did not infringe the performer's right; or
d. communicates
the performance to the public otherwise than by broadcast, except where such
communication to the public is made from a sound recording or a visual
recording or a broadcast, shall be deemed to have infringed the performer's
right.
Section 39 lays down the provision as to what kinds of
acts do not infringe the broadcast reproduction right or performer's right. One
example of infringement of copyright can be cited - that is, if a person gets
his photograph taken by a photographer on payment. The copyright in the
photograph belongs to such a person. The publication of the photograph or its
exhibition at any place including the photographer's shop would amount to
infringement of the copyright in the photograph. Even, a wedding photograph
cannot be displayed in a photographer's shop without the express or implied
consent of the parties. Another example of infringement of copyright can be
given that playing music through a loudspeaker in a private room adjoining a
public in the restaurant was held performance in public and constituted
infringement of copyright.
Test of infringement:
The test of infringement can be
done by way of the presence of three elements in a case, and those are:
i. there
must be similarity between the infringing work and the copyrighted work or a
substantial part thereof.
ii. the
copyright must be the source from which the infringing work is derived.
iii. intent
to commit fraud on the part of the defendant for the purpose of saving labour.
The test of infringement is not
how much is taken but it depends on the worth of the work taken [as it was held
in case William Hill (Football) v. Landbroke (Football), 1964].
The third element i.e., (iii) is an animus furandi which means intent to commit
fraud on the part of defendant. It is an important consideration in arriving at
the conclusion in the case of infringement of a copyright [as it was held in
case Jarrold v. Houston (1857) 3K2J708].
Infringement of copyrighted
works:
A. Infringement of literary, dramatic or musical work:
When any person, without a
licence granted by the copyright or the Registrar of the Copyrights or in
contravention of the conditions of a licence so granted or of any condition
imposed by a competent authority under the Copyright Act, 1957-
- a. reproduces the work in a
material form;
- b store the work in any media by
electronic means;
- c. issues copies of the work to
the public;
- d. performs the work in public or
communicates it to the public;
- e. makes cinematograph film or a
sound recording of the work;
- f. makes translation or
adaptation of the work;
shall be deemed to be infringed.
In Fateh Singh Mehta
v, O.P. Singhal, AIR 1990 Raj. 8, it was concluded by the court that
the copyright in a work is deemed to be infringed when any person, without a
licence granted by the owner of the copyright does anything, which is the
exclusive right to do conferred by the Copyright Act, 1957 upon the owner of
the copyright. Where a person has copyright in a literary work, and any other
person reproduces the work or any substantial part thereof in any material
form, he is committing an infringement of copyright.
B. Infringement of computer programme:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
copyrights or in the contravention of the provisions of the Copyright Act,
1957;
- a. does any of the acts
specified clause (a) of section 14 of the Copyright Act, 1957;
- b. sells or gives on hire or offers
for sale or hire any copy of the computer programme
shall be deemed to be infringed.
C. Infringement of artistic work:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
Copyrights or in the contravention of the provisions of the Copyright Act,
1957;
- a. reproduces the work in any
material form including depiction in three dimensions of a two-dimensional
work or in two dimensions of a three-dimensional work;
- b. communicates the work to the
public;
- c. issues copies of the work to
the public, not being copies already in circulation;
- d. includes the work in a
cinematograph film;
- e. makes any adaptation of the
work; shall be deemed to be infringed.
Shall be deemed infringed.
D. Infringement of cinematograph film:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
copyrights or in the contravention of the provisions of the Copyright Act,
1957.
- a. makes a copy of the film
including a photograph of any image forming part thereof;
- b. sells or gives on hire or offers
for sale or hire any copy of the film;
- c. communicates the film to the
public;
shall be deemed to be infringed.
The cinematograph film includes
video films but video-taping of cinematograph film will constitute infringement
of the film. The video films broadcast over cable Television are often the
video tapes of the cinematographic films and that amount to infringement of
copyright in the film.
E. Infringement of sound recording:
When any person, without a
licence granted by the owner of the copyright or the Registrar of the
Copyrights or in the contravention of the provisions of the Copyrights Act,
1957;
- a. makes any other sound
recording embodying it:
- b. sells or gives on hire or offers
for sale or hire any copy of the sound recording:
- c. communicates the sound
recording to the public;
shall be deemed to be infringed.
A sound recording may be of a
literary work, such as, - the copyright in sound recording of Javed Aktar's
collection of poems "Tarkash" is with the recording company which has
the exclusive right to sell the cassettes in the market. Even if a person makes
a sound recording of the same in a home taping system and sells the same in the
market, he is infringing the copyright in sound recoding.
Who may sue for infringement of
Copyright:
The following persons may sue
for infringement of copyright.
i. The
owner of the copyright.
ii. The
assignee of the copyright.
iii. In
the case of a testamentary disposition of the copyright work, the legatee.
iv. An
exclusive licensee if the owner of the copyright is made a joint plaintiff or a
plaintiff unless the court otherwise directs [as it has been laid down in the
provisions of the Section 61 (1) of the Copyright Act].
v. In
the case of anonymous or pseudonymous work the publisher of the work until the
identity of the author is disclosed publicly [as it has been explained in Section
54 (b) of the Copyright Act].
In addition to above, some kinds
of persons are entitled to sue for the infringement of copyright.
Those are:
- A co-owner may sue alone to restraint infringement [Susiah v.
Muniswamy AIR 1966 Mad. 175].
- A licensee can sue the assignor for damages for breach of contract
if such assignor does not protect the interests [CBS (UK) v.
Charmdale Records (1980) 2 All ER 807].
- A non-exclusive licensee can be a plaintiff in the proceedings for
breach of copyright provided he joins the owner of the copyright
[Halsbury's Laws of England].
d. Even
more than one copyright owners may file an infringement suit in a
representative capacity provided they have to establish a common interest,
common grievance and a remedy which is beneficial to all the plaintiffs
[CBS/Songv. Television Broadcasts (1987) FSR 262].
Who may be sued for infringement
of Copyright:
The following kinds of persons
may be sued for the infringement of copyright. Those are:
- any person who knowingly infringes or abets the infringement
of the copyright in a work, or
- any other right conferred by this Copyright Act except the right
conferred by section 53A of the Copyright Act.
Section 53A speaks of resale
share right in original copies.
- Any person who knowingly makes use on a computer of an infringing
copy of a computer programme.
- Any person who knowingly makes, or has in his possession, any plate
for the purpose of making infringing copies of any work in which copyright
subsists.
- Where any offence under the Copyright Act, 1957 has been committed
by a company, every person who at the time the offence was committed was
in charge of, and was responsible to the company for, the conduct of the
business of the company, as well as the company shall be deemed to be
guilty of such offence.
- Any person who imports in India any infringing copy of the work
except for the private and domestic use.
- Any person who makes for sale or hire, or sells or lets for hire,
or by way of trade displays or offers for sale or hire, or
- Any person who distributes either for the purpose of trade or to
such an extent as to affect prejudicially the owner of the copyright, or
- Any person by way of trade exhibits in public an infringing copy of
the work.
Exceptions to Copyright
Infringement
1)
Quotation, Criticism and Review:
If a person uses the quotes of
the copyrighted work then it will not amount to infringement. Similarly, a
person may cite examples of the published work to criticize it or review it.
Criteria for using the exception-
· The
reason for using the material is genuinely for the purpose of Quotation,
Criticism and Review. For example, one cannot discuss the whole film in an
article and then comment that he/she liked the movie.
· The
material which is used for review or criticism should already be available to
the public. Thus, a person cannot use the material which is not made available
to the public but is kept confidential.
· The
use of the material should be fair. There is no legal definition of what is
fair and what is not. The fair use of the material will depend on the facts and
circumstances of the case.
· If
a person has provided sufficient acknowledgement to the copyright holder then
it would not amount to copyright.
2)
Parody and Pastiche:
Parody means to use the existing
work of someone to create the humour or to use it for mockery. Some people may
use the copyrighted work to make a critique while others may use it to draw
attention to a social phenomenon. Use of work for parody and pastiche is not
considered as a copyright infringement.
Remedies against infringement of
copyright
There are three kinds of
remedies for infringement of copyright as provided by the Copyright Law. Those
are:
i. Civil
remedies;
ii. Criminal
remedies; and
iii. administrative
remedies.
i.
Civil
remedies:
Civil remedies are:
- injunction for restraining infringement or violation of copyright;
- damages in the form of monetary amount;
- account of profit- the profits to be measured by account which has
been misappropriated by defendant for sale of infringed copies;
- delivery-up the infringing copies - the infringing copies can be
claimed by the owner of copyright against infringer.
A. Injunction for
restraining infringement or violation of copyright:
Injunction is one of the most
important civil remedies for infringement or violation of copyright.
It is common that the owner of
the copyright wants speedy and effective remedy to prevent infringement of his
copyright and damage to his business. He cannot afford to wait for years until
the final decision of the court. As a result, the law provides interim relief
to the owner of the copyright (plaintiff) by way of grant of interlocutory
injunction. The plaintiff who gets an interlocutory injunction has advantage
because by way of it the defendant is effectively stopped from infringement of
copyright. Order XXXIX of the Code of Civil Procedure, 1908 lays down the
provision as to procedure for interlocutory injunction. Section 55 of the
Copyright Act, 1957 lays down the provision for civil remedies by way of
injunction against infringement of copyright. To get civil remedy by way of
interlocutory injunction against infringement of copyright, the plaintiff (the
aggrieved owner of the copyright) has to establish following factors before the
court.
Those are:
I. that
he has a copyright- he is the owner of the copyright;
II. that
the defendant has reproduced the whole or substantial part of the plaintiff's
work;
III. that
he is likely to suffer irreparable injury;
IV. that
the infringement is substantial, that it causes substantial injury; and
V. that
the defendant should not be permitted to use the plaintiff's material in which
the copyright subsists for competitive purposes.
Interlocutory injunction secures
the immediate protection of copyright from an existent infringement or from the
continuance of infringement or an anticipated infringement. The grant of
interlocutory injunction would depend on the overall circumstances of the case.
In Macmillan and
Company Ltd. v. K and J Cooper AIR 1924 PC 75 it was a fact
that the plaintiffs have made out a prima facie case for the issue of a
temporary injunction under Order XXXIX, rule 2 of the Code of Civil Procedure,
1908 against a defendant who brought out a book containing selections from
plaintiff's book. It was held that there was a prima facie case for the issue
of a temporary injunction.
Factors to be considered for the
grant of interlocutory injunction:
The three factors are to be
taken into consideration such as- i. Prima facie case, ii. Balance of
convenience and iii. Irreparable injury. The Supreme Court in Dalpat
Kumar and Another v. Prahlad Singh and Others on 16 December,
1991 explained the meanings of these three phrases.
I. Prima
facie case
Prima facie case is a case which
has proceeded upon sufficient proof to that stage where it will support finding
if evidence to contrary is disregarded. Prima facie case is one of the elements
for the grant of temporary injunction.
II. Balance
of convenience
The second factor is that the
"balance of convenience" must be in favour of granting injunction.
The court while granting or refusing to grant injunction should exercise the
sound judicial discretion in order to find the amount of substantial mischief
or injury which is likely to be caused to the parties, if the injunction is
refused, and compare it with that which is likely to be caused to the other
side if the injunction is granted.
III. Irreparable
injury
Irreparable injury is such
injury that cannot be adequately measured. The court has to find out where
there is irreparable injury as suffered by the plaintiff
Interlocutory injunction may be
refused when:
- the interest of the plaintiff can be protected by ordering the
defendant to keep an account of profits;
- the plaintiff has been guilty of undue delay in coming to the
court;
- the conduct of the plaintiff amounted to acquiescence in the
infringement of copyright;
- the defendant has pleaded and established bonafide fair dealing;
- there is substantial doubts about the plaintiff's right to succeed
in the action.
In this context the relevant
case can be cited. In KBC Pictures v. A. R. Murgadoss, (2009)
AIHC 2852 (Bom) the Bombay High Court rejected the stand of the
plaintiff and held that the plaintiff could not prove that he was the owner of
the copyright in story. screenplay and dialogues for the Hindi versions of the
film "Ghajini". The plaintiff could not also make out a strong prima
facie case for the grant of injunction.
Anton Pillar Order (Search
Order)
It is common that the procedure
of law always provides equal opportunities to both the parties to present their
case. In certain case the court may, on an application made by the plaintiff,
pass an exparte order requiring the defendant to allow the plaintiff
accompanied by the attorney to enter his premises and make an inspection of
relevant documents, articles and take copies thereof or remove them for safe
custody. Such order is said to be Anton Pillar order.
Such orders are necessary when
there exists an apprehension in the mind of the plaintiff and the court that
following the regular procedure would give time to the defendant to destroy the
relevant documents and copies of the articles defeating the ends of justice.
Such an order is passed by the courts only when the plaintiff in his
application gives the fullest possible disclosure of all material facts within
his knowledge and the court is also convinced.
Mareva injunction
There is a particular form of
interlocutory injunction which is known as Mareva injunction. The main purpose
of which is to restrain the defendant from diposing of assets that may be
required to satisfy the plaintiff's claim or removing them from the jurisdiction
of the court. The Mareva injunction was granted in CBS v. Lambert (1983)
FSR 127. The Mareva injunction was directed not to the uncovering and
preserving of fragile evidence, but to the retention of assets belonging to the
defendant which may be needed to satisfy judgment in the action, particularly
if they may otherwise be removed from the jurisdiction. A number of cases have
manifested a desire to and a plaintiff following the precedents of the Mareva
injunction.
In India, the Copyright Act,
1957 by its section 55 provides the remedy of interlocutory injunction against
the infringement of copyright. Order XXXIX Rules 1 to 10 of the Code of Civil
Procedure, 1908 lay down the provisions by way of which the Interlocutory
injunction is granted. The principles laid down in English precedents are also
relied upon and followed in India. In the above respect, the term
"Injunction" as we could understand that: Injunction is a judicial
order to refrain from doing an act. According to Halsbury's Laws of England, an
injunction is a judicial process whereby a party is ordered to refrain from
doing or to do a particular act or thing. Injunction is primarily of two kinds,
one is permanent injunction and another being, temporary injunction. Permanent
injunction is one, intending to remain in force until the final termination of
the particular suit. Temporary injunction is such as is to continue until a
specified time, or until the further order of the court and that may be granted
at any stage of a suit, and is regulated by ORDER XXXIX of the Code of Civil
Procedure, 1908.
B. Damages in the form of
monetary amount:
Damages are always awarded where
a legal right has been infringed. The purpose of damages is to compensate the
plaintiff for the loss which he has suffered as a result of the defendant’s
breach. In Interfirm Corporation (Australia) v. Law Society of New
South Wales (1977) RPC 137, the court opined that it would be
wrong to regard it as the exclusive measure of damages for breach of copyright
appropriate to all circumstances. Therefore, various measures of damage
appropriate to the particular circumstances have to be applied. Generally, the
damages might be assessed as the amount of royalties the copyright owner would
have secured that the infringer obtained and paid for a licence to perform
whatever the infringing act was [as it was held in case Redwood
Music v. Chappell (1982) RPC 109].
This is a somewhat artificial
and rough and ready to exercise as the court is trying to put a value on a
transaction which did not happen: if it is a notional royalty [as it was held
in case USP plc v. London General Holdings Ltd (2006) FSR
65]. Another way of calculating the quantum of damages, depending on the
circumstances, might be based on the profit. The copyright owner would have
derived from sales lost as a result of the infringement [Jones v. London
Borough of Tower Hamlets (2001) RPC-407]. The Delhi High Court
opined that the courts in India were becoming very sensitive to the growing
menance of piracy, and have started granting the punitive damages even in cases
where due to absence of the exact figures of sales by the defendants under the
infringing copyright but exact damages were not available, the damages could be
awarded on the basis of estimation [as it was held in case Microsoft
Corporation v. Deepak Raval (2007) 1 MIPR 0072].
C. Account of profit-the
profits to be measured by account which has been misappropriated by defendant
for sale of infringed copies:
The plaintiff-owner is entitled
to require the defendant to account for the profits made by him by infringing
plaintiff's copyright. In Mohan Lal Gupta v. The Board of School
Education, Haryana; (1978) IPLR 83, it was held the defendant was
ordered to pay twenty percent (20%) of the profits to the plaintiff as the
matter copied was less than one-tenth of the book. The plaintiff is entitled to
opt for damages or for an account of profits. Although he cannot obtain both an
account of profits and damages, the defendant should be deprived of any profit
which he earned by wrongful acts committed in breach of the plaintiff's rights.
If there is no profits, the plaintiff may refuse an account of profits and
rather may elect to claim damages and he would be bound by an election once
made.
D. Delivery-up the
infringing copies - the infringing copies can be claimed by the owner of
copyright against infringer:
The Copyright Act, 1957 by its
section 58 provides that all infringing copies of any work in which copyright
subsists and all plates used or intended to be used for production of such
copies shall be deemed to be the property of the owner of the copyright. This
provision gives the owner of copyright the opportunity to take proceedings for
the recovery of possession of the infringing copies and plates or in respect of
the conversion thereof. Delhi High Court in Microsoft Corporation v.
Yogesh Papat and Another (2005) 30 PTC 245 (Del.) held that
the plaintiff was entitled to an order for the delivery up of the infringing
copies of the software. In Hawkins Cookers Ltd v. Magicook
Appliances Co. AIR 2003 Del 191, it was fact that the defendants
were dealing in pressure cookers. The defendants reproduced passages in their
cook books from the cook books of the plaintiff. In this case the Delhi High
Court held that the plaintiff was entitled to damages arising upon the
rendition of accounts by the defendants and also directed deliver all such cook
books to the plaintiff.
ii.
Criminal
remedies:
Criminal remedies include the
following ways-
a. Imprisonment
(imprisonment up to 3 years but not less than 6 months.) and imposition of fine
(fine not less than Rs. 50,000 but may extend upto Rs. 2,00,000).
b. Seizure
of infringing copies (Search and seizure of infringing goods)
c. restoration
of seized copies of a work or plates to the person with interest. (this means
delivery of infringing goods to the copyright owner).
a) Imprisonment
and imposition of fine:
The Copyright Act, 1957 provides
for imprisonment and imposition of fine in the case of:
i) offence
of infringement of copyright or other rights conferred by Section 63 of this
Act;
ii) second
and subsequent convictions (Section 63A of the Copyright Act);
iii) knowing
use of infringing copy of computer programme (Section 63B of the Copyright
Act);
iv) Possession
of plates for purpose of making infringing copies (Section 65 of the Copyright
Act);
v) Making
false entries in register etc.; for producing or tendering false entries
(Section 67 of the Copyright Act);
vi) Making
false statements for the purpose of deceiving or influencing any authority or
officer, (Section 68 of the Copyright Act);
vii) Contravention
of section 52A and Section 68A of the Act.
For imprisonment and imposition
of fine the Copyright Act, 1957 by its section 70 empowers the Metropolitan
Magistrate or a Judicial Magistrate of the first class.
b) Seizure of Infringing
copies:
The police officer not below the
rank of sub-inspector has been empowered to seize the infringing copies.
Sub-section (1) of section 64 of the Copyright Act, 1957 provides that any
police officer, not below the rank of a sub-inspector, may, if he is satisfied
that an offence under 63 in respect of the infringement of copyright in any
work has been, is being, or is likely to be, committed, seize without warrant,
all copies of the work, and all plates used for the purpose of making
infringing copies of the work, wherever found, and all copies and plates so
seized shall, as soon as practicable, be produced before a Magistrate.
c) Restoration of
seized copies of a work or plates to the person having interest:
The Magistrate has power to
order for restoration of seized copies of a work or plates to the person having
interest to take them. Sub-section (2) of section 64 of the Act provides that
any person having an interest in any copies of a work or plates seized by the
police officer under sub-section (1) may, within fifteen days of such seizure,
make an application to the magistrate for such copies or plates being restored
to him and the Magistrate, after hearing the applicant and the complainant and
making such further inquiry as may be necessary, shall make such order on the
application as he may deem fit. In Girish Gandhi v. Union of India AIR
1997 Raj 78 it was concluded that section 64 (2) provides the
safeguards when the person is aggrieved. He can make an application to the
Magistrate for restoring the seized copies to him.
iii.
Administrative
remedies:
Administrative remedies are:
a. ban
on the import of infringing copies to India;
b. confiscation
of the infringing copies.
The Registrar of Copyrights and
the Copyright Board have been vested with some powers to take action against
the violation of copyright. The owner of the copyright in any work gets this
types remedies under section 53 of the Copyright Act, 1957 against the
infringed copies made out of India which are subject to importation to India.
The owner of the copyright in the work should make an application to the
Registrar of Copyrights with the payment of prescribed fee. The Registrar of
Copyrights is empowered to ban on the import of infringing copies to India. The
customs officers under the provision of the Customs Act, 1962 are empowered to
confiscate those infringed copies.
a. Ban
on the import of infringing copies to India:
The Copyright Act, 1957 by its
section 53 empowers the Registrar of Copyrights to ban on the import of
infringing copies to India. In Penguil Book Ltd, England v. India
Book Distributors, AIR 1985 Del. 29. the court held that the Registrar
may, on application of the owner of copyright or his duly authorised agent,
impose ban on importation of infringed copies of such work. The Registrar will
make necessary enquiry before passing an order. He may also pass the order,
directing delivery of confiscated infringed copies to the owner of the work.
b. Confiscation
of the infringing copies:
Sub-section (3) of section 53 of
the Copyright Act, 1957 says that all infringed copies of the copyrighted work
imported in India shall be deemed to be goods as per section 11, of the Customs
Act, 1962 and those goods of which import is prohibited and restricted.
Provided that all such infringed copies imported to India confiscated under the
provisions of the Customs Act, 1962 shall not vest in Government but shall be
delivered to the owner of the copyright in the work. Section 11 of the Customs
Act, 1962 empowers the Central Government to prohibit the import or export of
goods of any specified description. The conditions for restrictions may be
required to be fulfilled before or after clearance. The purposes for which
importation/exportation can be prohibited are:
a. Maintenance
of security of India;
b. Maintenance
of public order and standards of decency or morality;
c. Prevention
of smuggling;
d. Prevention
of shortage of goods of any description;
e. Conservation
of foreign exchange and safeguarding of balance of payments;
f. Maintenance
of standards for classification, grading or marketing of goods in international
trade;
g. Protection
of patents, trademark and copyrights;
h. Fulfilment
of obligations under the Charter of the United Nations for the maintenance of
international peace and security;
i. Implementation
of any Treaty, Agreement or Convention with any country;
j. Compliance
of imported goods with any laws which are applicable to similar goods produced
or manufactured in India.
The
Customs Act, 1962 prohibits the Export of books containing maps/diagrams
showing borders of India erroneously, which are applicable to similar goods produced
or manufactured in India.
The Customs Act, 1962 prohibits the Export of books containing maps/diagrams showing borders of India erroneously.
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