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Law

Intellectual Property

Copyright- Civil and Criminal Remedies

Development Team

Role Name Affiliation

Principal Investigator Professor (Dr.) Ranbir Singh Vice Chancellor, National Law University, Delhi

Paper Coordinator Mr. Yogesh Pai Assistant Professor of

Law, National Law University, Delhi

Content Writer (CW) Anath Padmanabhan Advocate, Madras High Court

Content Reviewer (CR) Yogesh Pai National Law University, Delhi

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2 Introduction:

In this module, we will discuss the nuanced manner in which civil and criminal remedies designed to protect copyright, operate. We will also study briefly some remedies designed to keep in check groundless threats of copyright infringement, and thus abuse of the copyright monopoly. Apart from the nature of the remedies, we shall also briefly touch upon important procedural rules for enforcement of these remedies, including who may sue, who can be sued, and where to sue ie. the special rules of jurisdiction.

Module Detail

Subject name Law

Paper name Intellectual Property

Module name/ Title Copyright- Civil and Criminal Remedies

Module Id Law/IP/# 40

Pre- requisites Infringement of copyright, property concept, need for enforcement, economics of copyright,

Objectives Discuss in a nuanced manner in which civil and criminal remedies designed to protect copyright, operate.

Study some remedies designed to keep in check groundless threats of copyright infringement, and thus abuse of the copyright monopoly.

Key words Injunctions, damages, suit for infringement, enforcement, civil remedies, criminal remedies

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3 Learning Objectives

PART I

TRIPS and Remedies for Copyright Infringement

The Berne Convention did not stipulate any elaborate remedies for copyright infringement, or for that matter, even any effective minimum standards except to the extent of leaving the matter of remedies, vide Article 5(2), to “the laws of the country where protection is claimed”. Articles 13 and 16 of this Convention, however, allowed for the seizure of infringing copies of a copyrighted work.

The Agreement on Trade-Related Aspects of Intellectual Property Rights, 1994 (TRIPS), on the other hand, has laid out a much more elaborate scheme of remedies, both civil and criminal, in Part III for enforcement of intellectual property rights.

Article 44 authorises the judicial authorities in Member States to pass orders of injunction, restraining parties from committing acts of infringement, including importation of infringing goods, such that the channels of commerce are kept free of

To provide an in dept overview of the system of remedies in copyright law in India To understand the International context (TRIPS) in which the remedial system operates in terms of civil and criminal remedies

To understand how civil remedies are available in India through different remedial regimes and their overlaps and procedural requirements in seeking remedies To study different types of orders like Anton Piller, John Doe etc...

To understand the nature of criminal remedies in copyright law and how they operate in the context of Indian criminal jurisprudence

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4 these goods. Article 45 also authorises these authorities to order the payment of damages “adequate to compensate for the injury the right holder has suffered because of an infringement of his intellectual property right by an infringer who knew or had reasonable grounds to know that he was engaged in infringing activity.” In the absence of such knowledge or grounds, relief is confined to the grant of an injunction restraining future acts of infringement, though the Agreement clarifies that Member States can still provide for recovery of profits or payment of pre-established damages.

Article 46 lends teeth to the “property” dimension of intellectual property rights by authorising judicial authorities to order the destruction of infringing goods as well as materials and implements used to create them, without payment of any compensation.

The provisional measures in Article 50 have been covered in a previous module on

“Remedies in Intellectual Property Law.” A quick survey of the border control measures permitted by TRIPS is in order here. Article 51 of TRIPS provides that Member States shall adopt procedures enabling a right holder to apply to the customs authorities for the suspension of imports that he suspects would infringe his intellectual property right. The right holder will have to provide adequate evidence that there is, prima facie, an infringement of his intellectual property right, and supply a sufficiently detailed description of the goods to make them readily recognizable by the customs authorities. The customs authorities can also demand security from the right owner that is sufficient enough to protect the interests of the alleged infringer / importer. If it is later proved that the goods were wrongfully detained, the importer or the consignee has the right to be indemnified by the applicant.

Article 61 of TRIPS deals with criminal remedies, and reads as follows:

Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale.

Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. In appropriate cases, remedies available shall also include the seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence.

Members may provide for criminal procedures and penalties to be applied in other

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5 cases of infringement of intellectual property rights, in particular where they are committed wilfully and on a commercial scale.

There are several ideas, though not fully developed, expressed in this provision. First, that the wilful nature of conduct and the commercial scale of operations of the infringer shall be material in criminalising his action. Second, that the idea of such criminalisation shall be closely tied with the objective of deterrence, but without losing sight of proportionality in punishment. Third, that criminal remedies may be used, in addition to the civil remedies, to seize and destroy infringing goods and materials / implements used to commit the infringement.

The remedies provided for in the Indian Copyright Act, 1957, closely follow TRIPS and resort to both civil and criminal action to address enforcement of intellectual property rights. Border control measures have also been provided for by way of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, though the nuances of these Rules are outside the scope of this module.1

PART II

Civil Remedies

Section 55, the main provision empowering civil action for infringement of copyright, reads thus:

55. Civil remedies for infringement of copyright.—(1) Where copyright in any work has been infringed, the owner of the copyright shall, except as otherwise provided by this Act, be entitled to all such remedies by way of injunction, damages, accounts and otherwise as are or may be conferred by law for the infringement of a right:

Provided that if the defendant proves that at the date of the infringement he was not aware and had no reasonable ground for believing that copyright subsisted in the work, the plaintiff shall not be entitled to any remedy other than an injunction in

1 See

http://www.mondaq.com/india/x/80320/Trademark/Enforcement+Of+Intellectual+Property+Rights+Th rough+Customs (last visited 21st June, 2014).

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6 respect of the infringement and a decree for the whole or part of the profits made by the defendant by the sale of the infringing copies as the Court may in the circumstances deem reasonable.

(2) Where, in the case of a literary, dramatic, musical or artistic work, or, subject to the provisions of sub-section (3) of section 13, a cinematograph film or sound recording, a name purporting to be that of the author, or the publisher, as the case may be, of that work, appears on copies of the work published, or, in the case of an artistic work, appeared on the work when it was made, the person whose name so appears or appeared shall, in any proceeding in respect of infringement of copyright in such work, be presumed, unless the contrary is proved, to be the author or the publisher of the work, as the case may be.

(3) The costs of all parties in any proceedings in respect of the infringement of copyright shall be in the discretion of the Court.

It is evident that Section 55(1) closely resembles the scheme in TRIPS, including the distinction based on the awareness of the defendant, though this provision came much earlier and was part of the original enactment in 1957. Similarly, Section 55(2) appears to be in sync with Article 15(1) of the Berne Convention which provides that the author of a literary or artistic work shall be entitled to institute infringement proceedings so long as his name appears on the work in the usual manner, unless proof to the contrary is led by the defendant. But on a more careful reading, the presumption in Section 55(2) does not go that far. It stops at presuming authorship but not ownership. That presumption, important for initiating an infringement action, only arises where the work has been registered vide Section 44 read with 48. The Register of Copyrights, as per the latter provision, stands prima facie evidence of the particulars entered therein, which in turn includes the identity of the owner of the copyright in the registered work. This takes us straight to the first main issue: who all may institute an action for copyright infringement?

Who may Sue

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7 Broadly, the following categories of persons have the right to sue: (i) Authors in their capacity as First Owners of Copyright; (ii) Joint owners of Copyright; (iii) Producers / Employers who become First Owners; (iv) Valid Assignees of Copyright; (v) Exclusive Licensees; and (vi) Copyright Societies. The manner in which ownership is determined, as well as the matter of assignment and license of copyright and the role of copyright societies therein, are all covered in separate modules. At the same time, it would be relevant to mention one more provision, Section 56, before proceeding to the identity of those who may be sued. This provision reads:

56. Protection of separate rights. - Subject to the provisions of this Act, where the several rights comprising the copyright in any work are owned by different persons, the owner of any such right shall, to the extent of that right be entitled to the remedies provided by this Act and may individually enforce such right by means of any suit, action or other proceeding without making the owner of any other right a party to such suit, action or proceeding.

Apart from this, in the case of suits filed by an exclusive licensee, Section 61 of the Act requires the copyright owner to be impleaded as a defendant. This is because in cases where such suit filed by the exclusive licensee is successful, there is a statutory bar on the copyright owner, vide Sec. 61(2), from instituting any fresh suit or other proceeding in respect of the same cause of action. However, in Phonographic Performance Ltd v Hotel Gold Regency,2 the Division Bench of the Delhi High Court has held that a copyright society, which is not even an exclusive licensee, can initiate a suit for infringement and that too without complying with Section 61, thus carving out an exception to this provision.

Who may be Sued

Both primary and secondary infringers can be sued for copyright infringement. In addition, there is a special remedy to initiate action against unidentified infringers.

This is known as a John Doe order. The concept of John Doe Orders in ex parte

2 RFA(OS) Nos. 57 & 58 of 2008 vide decision dated 03.11.08, available at http://lobis.nic.in/dhc/SKK/ judgement/04-11-2008/SKK03112008RFAOS582008.pdf (last visited on 21/06/2014).

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8 proceedings for copyright infringement came in due to the peculiar character of copyright piracy, which would normally happen in a rampant fashion over a short period of time in respect of any content before the pirate trains his attention to some fresh content. Because of this, the copyright owner would have a sense of large-scale infringement going on but without much clue about the identity of the infringers.

Orders of this nature were being passed in jurisdictions across the world till they were, probably for the first time, passed in India in 2003. Since then, such orders have become a somewhat regular feature. In short, such orders permit the plaintiff to enforce an injunction order against unidentified / unnamed defendants, ‘John Doe’

being a generic name for such defendants. To understand the nature and mechanism of such enforcement and the various guidelines governing such orders, exploring the genesis of these orders is imperative.

The first such order was passed in Billy Joel v Various John Does.3 Here, Billy Joel, a successful recording artist, found to his annoyance that his success had spawned a curious underground industry that capitalised on his popularity through the sale of merchandise, usually T-shirts bearing his picture and name. These sales were carried on by unauthorised persons who showed up at his concerts with the merchandise and sold them outside the concert halls where he was performing. Billy Joel had in fact granted his recording company the exclusive right to market such merchandise, and the company was doing so inside the concert halls. Obviously, the presence of the unauthorised vendors outside the concert halls hurt the company’s sales and Joel’s revenue share. This compelled him to approach the District Court in Wisconsin seeking injunctive relief against various “John Does” or unidentified defendants who were carrying on the unauthorised sale of merchandise. The order was specifically sought seeking an ex parte temporary restraining order prohibiting certain unnamed persons from selling merchandise bearing Joel’s name or likeness outside the Milwaukee Arena where Joel was scheduled to appear on that day. Thus, the order sought was confined to one particular instance and the situation demanded expedient preventive action since the concert was on the very same day.

3 499 F.Supp. 791 (1980).

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9 The District Court, while finding the propriety of an order against unidentified defendants “troubling”, still went ahead and passed the order sought for. The Court felt that the problem of the defendants’ identities would be met if the copies of the summons, complaint, and restraining order itself were to be served on all persons from whom Billy Joel merchandise was seized on the night of the concert.

Additionally, the Court clarified that all these parties would be entitled to have their names added as parties to the cause title and even otherwise, to contest the seizures.

The plaintiff had also furnished a bond to cover damages that may arise due to the awarding of such relief. The Court applied the principle of ubi jus ibi remedium – where there is a wrong done, there has to be a remedy in law – while granting this relief. This is clear from the last paragraph of the judgement where the Court says :

“Were the injunction to be denied, plaintiffs would be without any legal means to prevent what is clearly a blatant infringement of their valid property rights. While the proposed remedy is novel, that in itself should not weigh against its adoption by this court. A court of equity is free to fashion whatever remedies will adequately protect the rights of the parties before it.”

Subsequently, various courts in the United States have granted such relief. However, most such instances of judicial intervention in cases of piracy have confined themselves to specific instances of piracy as opposed to orders of wider applicability extending to more than one instance of apprehended or real piracy. For instance, in Brockum Intern., Inc. v Various John Does,4 the plaintiff sought a nation-wide order prohibiting the same activity in other cities visited by the popular rock band, The Who, on its national tour. The Court declined to do so.

John Doe Orders in India

The decision in Tej Television Ltd. v Rajan Mandal,5 will have to find first mention since these kind of orders against unidentified defendants hit the shores of the Indian legal landscape through this decision. Here, the plaintiff owned the Ten Sports television channel and had procured the broadcasting rights to several important sporting events including the 2002 Football World Cup matches. Being a paid

4 551 F.Supp. 1054 (D.C.Wis.,1982).

5 [2003] F.S.R. 22

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10 channel, the cable operators had to part with royalty to the plaintiff for airing the broadcast on this channel. To the plaintiff’s consternation, many local cable operators were airing these sporting events without taking licenses from the plaintiff / its authorised marketing agency. This resulted in the channel approaching the Delhi High Court and seeking, for the first time, a John Doe order against unidentified defendants. The channel had some evidence of unauthorised broadcasting of the initial matches by certain cable operators and apprehended that this conduct by more operators would not only result in revenue loss but also cause the 1377 cable operators, who had taken licenses from the plaintiff, to re-think the very necessity of doing so when they could air the sporting events in an unauthorised manner without any fear of liability. Another concern was the ease with which those who carried on the practise of unauthorised transmission could destroy any evidence of such conduct.

The prayer sought by the plaintiff was an ex parte order against six named cable operators and “John Doe” orders against a further fourteen unnamed persons who, the plaintiff claimed, were wrongfully transmitting the Ten Sports channel. The order against unidentified defendants was sought to be justified on two broad grounds : (i) Section 151 of the Code of Civil Procedure, 1908, which gives Courts the inherent power to evolve a fair and reasonable procedure for meeting exigent situations, and (ii) international practise in the form of John Doe orders issued by Courts in various countries including the United States, United Kingdom, Canada and Australia.

The High Court refused to grant a John Doe order on the facts and circumstances of this case but also clarified that in an appropriate situation, Courts could well award a John Doe order even in India. The Court granted relief to the plaintiff by appointing a Court Commissioner who was authorised to visit the premises of various cable operators, and search, make an inventory, and take into custody all equipment / wires used for the broadcast of the plaintiff’s channel. The Court empowered the Commissioner to take the assistance of technical experts and police officials in carrying out this order, and directed him to prepare a report after gathering evidence of cable piracy in the form of video recordings and photographs. The Court also considered itself at liberty, on the basis of this report, to issue notices to all alleged violators. The Court Commissioner was also empowered to issue warnings to such

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11 prospective violators though there was no mention of any contempt proceedings against the violators for ignoring the Commissioner’s warning. Upon close examination, this order was nothing but a mild modification of the power vested in the Court under Order XXVI, Rule 9 of the CPC, discussed in the earlier module on

“Remedies in Intellectual Property Law” under the heading “Anton Piller orders”.

Final and Interim John Doe Orders

The decision in Tej Television has been followed by decisions of the Delhi High Court where possibility of a John Doe order have been considered though not granted.

In Ardath Tobacco Co. Ltd. v Munna Bhai & Ors.,6 the plaintiff was the proprietor of a tobacco brand, “State Express 555”. Aggrieved by the conduct of the defendants who were distributing “Peacock” cigarettes in packaging and trade dress that bore deceptive similarity to that of the plaintiff’s brand, the plaintiff sought a John Doe order against all such distributors including unidentified ones. From the report, it appears that an ex parte order appointing Court Commissioners, similar to the order in Tej Television, was awarded by the High Court initially. In the final order, the Court was constrained to confine the order of permanent injunction to the named defendants since the plaintiff had failed to add any subsequently identified John Doe who was carrying on similar trademark infringement and found to be doing so by the Court Commissioner upon searching his premises, to the array of parties for the purpose of securing injunctive relief. The same was found to be the case in 3M Company v A.

Patel,7 where the final order of injunction was granted only against the 2 identified defendants.

In these cases, a distinction seems to be made between the interim orders that may be passed against the unidentified defendants, and the final relief granted by the Court.

The principle that emerges from these decisions is that orders against unidentified defendants can only go to the extent of collecting evidence against them through search of their premises by the Court Commissioner, or with the assistance of the Station House Officer (S.H.O) as was directed in ESPN Software India Private Ltd. v

6 2009 (39) PTC 208 (Del).

7 Order dated 15.01.2009 in C.S. (O.S.) 1771 / 2006, reported as MANU/DE/1991/2009.

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12 Tudu Enterprises8. No final relief can be granted against any person who is unnamed in the array of parties as a defendant. The purpose of a John Doe order is only to bring such persons on record.

John Doe Orders – Procedure and Guidelines

Recently, the Delhi High Court has enunciated, with sufficient clarity, the procedure to be followed while granting interim orders against unidentified defendants. In Luxottica S.R.L v Mr. Munny & Ors.,9 the plaintiff which owned the popular trade mark “Ray Ban” in respect of sunglasses, sought John Doe orders from the Delhi High Court with the aim of tacking rampant piracy and counterfeiting of its products.

Surprisingly, there was no particularly urgent event being cited as the reason by the plaintiff for such an order, unlike in the Billy Joel case or in Tej Television. Piracy had been going on in the past, and it is still going on – that was broadly the case of the plaintiff here. Despite this, the Delhi High Court went on to issue an order of ex parte injunction restraining third parties from carrying on such counterfeiting activities.

Extending the powers of the Court Commissioner, the High Court held as follows : The Commissioners are also authorized to visit any other premises/warehouse/store where they may have reason to suspect and/or information be received that counterfeit optical sunglasses bearing the Plaintiffs trademark RAY BAN are being stored/sold/offered for sale and thereafter. In respect of such Ashok Kumar Defendants, upon the seizure of any infringing/counterfeit products, the Commissioners shall forthwith serve such Ashok Kumar Defendants with a complete set of papers and a copy of the notice and summons. The Commissioners will seize and make an inventory of all the infringing goods including packaging material, cartons, stationery, literature, dyes, blocks, moulds, etc. bearing the impugned RAY BAN trademark and sign all books of accounts including ledgers, cash books, purchase and sale records etc., and return the seized goods on suprdari to such Ashok Kumar defendants and obtain undertakings from each of them that they will produce the seized goods as and when directed by the Court.

8 MANU/DE/1061/2011.

9 Order dated 25.09.2009 in C.S. (O.S.) 1846 / 2009, available at http://courtnic.nic.in/dhcorder/dhcqrydisp_o.asp?pn=173895&yr=2009.

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13 The object behind this order seems to be the prevention of any destruction of the evidence. In consonance with this object, the High Court has even made provision for return of the seized material to the unnamed defendants during the pendency of this order, and given them the option of approaching the Court and vacating the ex parte order of injunction issued against them. This decision gives a clear roadmap for courts that pass such orders in the future. Considering that John Doe orders have attracted criticism on the ground that they make serious inroads into the rights of the defendant, these safeguards specifically articulated by the Court do go a long way in addressing this criticism and mitigating the hardship caused to the defendants. Hopefully, the practise of awarding John Doe orders to tackle exceptional and rampant acts of piracy shall be confined to the rarest of rare situations and even when so, with appropriate safeguards.

Where to Sue

Section 62, along the same lines as Section 134 of the Trade Marks Act, 1999, provides an additional forum to sue, ie. where the plaintiff resides or carries on business. This provision reads as follows:

62. Jurisdiction of court over matters arising under this Chapter.

(1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.

(2) For the purpose of sub-section (1), any “district court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908, or any other law for the time being in force, include a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.

The advantage of this provision is simply this: the normal rules of civil procedure permit a suit to be instituted in only two locations: (I) where the defendant resides or carries on business, and (2) where the cause of action has arisen, either in part or as a

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14 whole. This provision adds a vital third location to this menu, thus rendering it a lot easier for the copyright owner to initiate action.

Groundless Threats – Suit For Injunction

Section 60 of the Copyright Act provides as follows:

Section 60. Remedy in the case of groundless threat of legal proceedings –

Where any person claiming to be the owner of copyright in any work, by circulars, advertisements or otherwise, threatens any other person with any legal proceedings or liability in respect of an alleged infringement of the copyright, any person aggrieved thereby may, notwithstanding anything contained in Section 34 of the Specific Relief Act, 1963, institute a declaratory suit that the alleged infringement to which the threats related was not in fact an infringement of any legal rights of the person making such threats and may in any such suit -

(a) obtain an injunction against the continuance of such threats, and

(b) recover such damages, if any, as he has sustained by reason of such threats : Provided that this section shall not apply if the person making such threats, with due diligence, commences and prosecutes an action for infringement of the copyright claimed by him.

This provision has been discussed by the Delhi High Court in Super Cassette Industries Ltd. v Bathla Cassettes India (P) Ltd.10 The High Court has held that the object of this provision is to protect a person against any wrongful threats relating to infringement of copyright and the only relief which can be asked for is an injunction against the continuance of such threats and damages occasioned by reason of such threats. The proviso itself makes it amply clear that once a suit is filed for infringement of the copyright by the person who has issued the threat, the suit under Section 60 becomes infructuous as the Section ceases to apply in such a situation. In this factual scenario, if the trial court were to issue an ex parte injunction in the suit filed under Section 60 restraining the defendant in that suit from issuing any such threats in respect of a particular copyright, such an injunction would be without

10 AIR 1994 Del 237.

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15 jurisdiction as the Section 60 suit is itself rendered infructuous by the filing of the subsequent suit by the defendant in the Section 60 suit.

Article 48 of TRIPS provides for indemnification of the defendant, ie. the judicial authority in the member State can order a party at whose request measures were taken and who has abused enforcement procedures to provide to a party wrongfully enjoined or restrained adequate compensation for the injury suffered because of such abuse. Section 60 goes one step ahead and facilitates legal action by the prospective defendant to nip it in the bud by obtaining an order from the Court. However, as seen from the decision discussed above, this would be redundant once the copyright owner actually files a suit.

Delivery Up Orders & Anton Piller Orders - Principles and Guidelines

Apart from issuing Anton Pilller orders that direct the Commissioner to conduct a search in the defendant’s premises and prepare a report, thus preserving the state of evidence against the defendant, the Court can also direct that the seized infringing copies and plates, if any, may be delivered to the copyright owner. Section 58 of the Act assumes importance in this connection, and it reads as follows:

58. Rights of owner against persons possessing or dealing with infringing copies. – All infringing copies of any work in which copyright subsists, and all plates used or intended to be used for the production of such infringing copies, shall be deemed to be the property of the owner of the copyright, who accordingly may take proceedings for the recovery of possession thereof or in respect of the conversion thereof :

Provided that the owner of the copyright shall not be entitled to any remedy in respect of the conversion of any infringing copies, if the opponent proves-

(a) that he was not aware and had no reasonable ground to believe that copyright subsisted in the work of which such copies are alleged to be infringing copies; or (b) that he had reasonable grounds for believing that such copies or plates do not involve infringement of the copyright in any work.

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16 This provision is a statutory recognition of the prohibition against conversion, a classic economic tort.11 Apart from the defences available as per the proviso to Section 58, a specific exception has been carved out in Section 59, which reads:

59. Restriction on remedies in the case of works of architecture. - (1) Notwithstanding anything contained in the Specific Relief Act, 1963, where the construction of a building or other structure which infringes or which, if completed, would infringe the copyright in some other work has been commenced, the owner of the copyright shall not be entitled to obtain an injunction to restrain the construction of such building or structure or to order its demolition.

(2) Nothing in section 58 shall apply in respect of the construction of a building or other structure which infringes or which, if completed, would infringe the copyright in some other work.

An order for delivery up can be asked in the same suit seeking an injunction for copyright infringement, and is absolutely necessary to be sought as a relief in cases of large scale piracy. A recent example is the decision in J.K. Rowling v City Publication,12 where pirated copies of books bearing a striking resemblance to the Harry Potter books were being circulated. The defendants had substantially reproduced the plaintiffs’ works under the Harry Potter series by reproducing the characters, names, expressions, settings, and locations from the Harry Potter series in the infringing copies. The defendants used the covers of the UK and US edition of the book “Harry Potter and the Deathly Hallows” as the front and back cover respectively for their infringing copies. The defendants thus deliberately printed a fake book on the Harry Potter theme with the same characters, settings, location and descriptions as in the Harry Potter series with a cover identical to the cover of the genuine “Harry Potter and the Deathly Hallows” book with the same title as well as bearing the name of the 1st plaintiff as the author and the 2nd plaintiff as the publisher, all calculated to give the impression that it is the genuine publication of the plaintiffs‘

original work titled “Harry Potter and the Deathly Hallows”. In order to ride over the

11 Defined by Lord Atkin in Lancashire & Yorkshire Railway Co. v MacNicoll, (1918) 88 LKJB 601, as “dealing with goods in a manner inconsistent with the rights of the true owner, provided that it is also established that there is also an intention on the part of the defendant, in so doing, to deny the owner’s right, or to assert a right which is inconsistent with the owner’s right.”

12 171 (2010) DLT 791.

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17 immense popularity of the plaintiffs’ “Harry Potter” series, the defendants had deliberately printed and distributed their infringing copies within a week of the release of the plaintiffs’ work “Harry Potter and the Deathly Hallows”. The Delhi High Court, in a suit for copyright infringement, granted an order of permanent injunction restraining the defendants from printing, distributing, selling, or offering for sale their infringing books as well as passed an order under Section 58 of the Act for delivery-up of all the duplicating equipment and other plates, as defined in Section 2(t) of the Act, and all other infringing material which were in the possession of the defendants and/or their agents, servants, representatives etc. to the plaintiffs.

In digital copyright cases where pirated software or confidential information of a copyrightable nature etc. are found loaded on to the hard discs of the infringer upon inspection, the Court will normally appoint a Commissioner to de-seal the computers/CPUs and create backup copies of the hard discs/storage media on new hard discs/storage media provided by the defendant. The unlicensed/pirated software as identified by the representative of the plaintiffs will then be deleted from the new hard discs. The defendants will be permitted to use the new hard discs along with the seized computers/CPUs, and the original hard discs are then sealed and handed over to the defendants on superdari.13 In Autodesk Inc v A.V.T. Shankardass,14 the Division Bench of the Delhi High Court, while acknowledging the practical difficulties in laying down guidelines, which would cater to the numerous kinds of situations that may arise, has enumerated some of the relevant factors and guidelines which the Court may take into consideration on the question of appointment of a Local Commissioner in software infringement and piracy matters:

(i) The object of appointment of a Local Commissioner in software piracy matters is not as much to collect evidence but to preserve and protect the infringing evidence.

The pirated software or incriminating evidence can be obtained from the premises of the opposite party alone and in the absence of an ex parte appointment of a Local Commissioner there is likelihood that such evidence may be lost, removed or destroyed;

13 See Dassault Systems S.A. v Sphinx Worldbiz Ltd., 2009 (41) PTC 759.

14 2008 (37) PTC 58 (Del).

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18 (ii) Request for ex parte appointment of a Local Commissioner in such matters is usual and in fact is intended to subserve the ends of justice as it is imperative to have an element of surprise so that the actual position is not altered;

(iii) The test of reasonable and credible information regarding the existence of pirated software or incriminating evidence should not be subjected to strict proof or the requirement to demonstrate or produce part of the pirated software/incriminating evidence at the initial stage itself. It has to be tested on the touchstone of pragmatism and the natural and normal course of conduct and practice in trade.

(iv) It may not always be possible for a plaintiff to obtain any admission by employing decoy customers and gaining access to the defendant’s premises. Any such attempt also inheres in it the possibility of disappearance of the pirated software/incriminating evidence in case the decoy customer is exposed. Accordingly, visit by a decoy customer or investigator is not to be insisted upon as a pre-condition.

A report by a private Investigator need not be disregarded or rejected simply because he has been engaged by the plaintiff. The information provided by the private Investigator should receive objective evaluation.

(v) In cases where certain and definite information with regard to the existence of pirated software or incriminating evidence is not available or where the Court may nurture some element of doubt, it may consider asking the plaintiff to deposit cost in Court so that in case pirated software or incriminating evidence is not found then the defendant can be suitably compensated for the obtrusion in his work or privacy.

It is submitted that while the above guidelines were specifically laid down in the context of an infringement suit for software piracy, they are equally relevant in other cases of IPR infringement too, where similar relief is sought.

PART III

Criminal Remedies

As already highlighted in Part I, criminal remedies are generally applied to cases of wilful infringement. Section 63 incorporates this principle in its spirit and text, and

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19 seeks to impose criminal liability only on those who knowingly infringe or abet the infringement of the copyright in any work. The punishment stipulated can be anywhere between six months and three years, and the fine, anywhere between fifty thousand and two lakh rupees. The dimension of commercial vs. non-commercial is also factored into the sentencing vide the proviso which permits the Court to go below the lower limits for both imprisonment term and fine, where the infringement has not been made for gain in the course of trade or business, and adequate and special reasons are mentioned in the judgment. Section 63-A deals with repeat offenders, for whom the imprisonment will be anywhere between one and three years and the fine, between one lakh and two lakh rupees.

An interesting issue raised in connection with Section 63, and which has been decided in favour of the State, is whether the owner of the original copyright should come forward in a criminal action under this provision. This case, State of Andhra Pradesh v. Nagoti Venkataramana,15 arose in the context of mass scale video piracy, where the defendant was arrested for unauthorised reproduction and rental of cinematograph films in the video cassette medium. He took up the plea that the copyright owners of these cinematograph films had not complained against his conduct, and in the absence of such a complant, he could not be held liable. Rejecting this contention, the Supreme Court examined the Statement of Objects and Reasons of the 1984 Amendment to the Copyright Act, which enhanced penalties for wilful infringement.

Noticing that video piracy was an alarming concern expressed by Parliament when introducing the Amendment Bill, the Court held that it would be unnecessary for the prosecution to trace out the owner of the copyright to come and adduce evidence of infringement of copyright. The absence of such owner would not constitute lack of essential element of infringement of copyright, and the offence would be committed so long as the particulars on video films mandated under Section 52A16 did not find place in the copy made.

15 (1996) 6 SCC 409.

16 The relevant portion of this provision reads: (2) No person shall publish a video film in respect of any work unless the following particulars are displayed in the video film, when exhibited, and on the video cassette or other container thereof, namely:—

(20)

20 There is no judicial consensus on whether the offence under Section 63 is bailable or not. The following decisions hold that it is a bailable offence: State Govt. of NCT of Delhi v. Naresh Kumar Garg17; Amarnath Vyas v. State of A.P.18 The following decisions hold it to be a non-bailable offence: Jitendra Prasad Singh v. State of Assam19; Sureshkumar S/o. Kumaran v. The Sub Inspector of Police20; Anilbhai Natubhai Patel v. Jayrajbhai Jayantibhai Patel.21

Though Indian law does not as yet criminalise the use of all digital content, ie. movie and audio files downloaded from the internet etc., it does criminalise, vide Section 63- B, the knowing use of an infringing copy of a computer programme on a computer.

The punishment stipulated can be anywhere between seven days and three years, and the fine, anywhere between fifty thousand and two lakh rupees. Here too, the Court can dispense with imprisonment and impose any fine lesser than fifty thousand rupees, where the infringement has not been made for gain in the course of trade or business, and adequate and special reasons are furnished in the judgment.

Contributory infringers are also liable for criminal proceedings vide Section 65, provided they knowingly make, or have in their possession, any plate for the purpose of making infringing copies of any work in which copyright subsists.

In addition to the delivery up remedy discussed above as part of the array of civil remedies available to the copyright owner, Section 64 vests power with the police to seize without warrant, infringing copies and plates used for making them, in the event of being satisfied that an offence under section 63 has been, is being, or is likely to be, committed. Pursuant to such seizure, the Court can, post the 2012 amendment, order the delivery up to the copyright owner, of all copies of the work or all plates in the

(a) if such work is a cinematograph film required to be certified for exhibition under the provisions of the cinematograph Act, 1952 (37 of 1952), a copy of the certificate granted by the Board of Film Certification under section 5-A of that Act in respect of such work;

(b) the name and address of the person who has made the video film and a declaration by him that he has obtained the necessary licence or consent from the owner of the copyright in such work for making such video film; and

(c) the name and address of the owner of the copyright in such work.

17 2013 (56) PTC 282 (Del).

18 2007 Cri. L.J. 2025 (Andh. Pra.) (reasoning that “may extend to three years” is not the same as

“three years and upwards” as used in Sch.II to the Code of Criminal Procedure, 1973).

19 2003 (26) PTC 486 (Gau).

20 2007 (3) KLT 363.

21 (2006) 2 GLR 1233 (though the offence alleged here was under Sec.68-A of the Copyright Act, it mandated similar punishment of “upto three years”).

(21)

21 possession of the alleged offender, which appear to it to be infringing copies, or plates for the purpose of making infringing copies.

References

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