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Super Cassetes Industries Ltd. vs Myspace Inc. & Another on 29 July, 2011

Delhi High Court
Super Cassetes Industries Ltd. vs Myspace Inc. & Another on 29 July, 2011
Author: Manmohan Singh
*                 HIGH COURT OF DELHI : NEW DELHI

                                        Judgment pronounced on: 29.07.2011

+ IA No.15781/2008 & IA No. 3085/2009 in CS (OS) No. 2682/2008

SUPER CASSETES INDUSTRIES LTD.                  ..... Plaintiff
               Through: Mr Amit Sibal, Adv. with Mr Harsh
                        Kaushik, Mr Rahul Ajatshatru,
                        Mr Siddharth Silwal and Mr Shravanth
                        Shankar, Advs.

                           Versus

MYSPACE INC. & ANOTHER                       ..... Defendants
               Through: Mr Rajender Kumar, Adv. with
                        Ms Latha R. Nair and Mr Prashant
                        Gupta, Adv.

Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH

1. Whether the Reporters of local papers may
   be allowed to see the judgment?                                       Yes

2. To be referred to Reporter or not?                                    Yes

3. Whether the judgment should be reported                               Yes
   in the Digest?

MANMOHAN SINGH, J.

1. By this order, I shall dispose of the following applications:

a) IA No.15781/2008 under Order 39 Rule 1 & 2 the

Code of Civil Procedure, 1908 (hereinafter referred

to as the CPC).

             b)        IA No.3085/2009 under Order 39 Rule 4 CPC.



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2. The Plaintiff has filed the instant suit for restraining

infringement of copyright, damages etc. The plaintiff claims to be the

owner of the copyright in the repertoire of songs, cinematograph films,

sound recordings etc. The plaintiff claims to have over 20000 Hindi Non

film songs and around 50000 songs in regional languages.

3. The plaintiff further states that the business of the plaintiff

which is film producing, music distribution etc is largely dependant upon

the exploitation of its copyright. The said copyright exploitation enables

the plaintiff to sustain its creative activities thereby giving opportunities

to many talents including composers, artists, singers, etc. The plaintiff

states that the monetary gains arising from copyright exploitation further

empowers it with financial strength to carry on its business of film

making. The infringements of such works of the plaintiff, thus, causes

royalty losses to the plaintiff and are responsible for the loss in the

business of the plaintiff.

4. The plaintiff claims that the copyright exploitation of the

works is done by the licensing system whereby the plaintiff gives public

performance licences to the parties who in turn give the plaintiff the

necessary royalty. The plaintiff has filed the catalogue in which the

plaintiff has claimed copyright and also filed the documents to the effect

of showing its licencing scheme.

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5. The defendant No. 1 is stated to be a social networking and

entertainment website which offers a variety of entertainment

applications including sharing, viewing of music, images, cinematograph

works having its base in the United States of America. The defendant

No. 2 is the owner of the defendant No. 1 which is stated to be a division

of News Corporation, Fox Interactive media which is offering, border

free online network that caters to consumers by giving them platform or

tools.

6. As per the plaintiff, the defendant No.1 describes the website

as a place for friends and projects its website as a place to upload

pictures and videos. The said website myspace.com provides country

specific content and is one of the most popular social networking and

content sharing website in the world. The plaintiff contends that the

defendants‟ basic point of attraction in running this website is to make

available the multimedia content including songs, pictures, clips which

can be seen and shared by the user over the internet space. The said

website of defendant No. 1 not only includes recently released infringing

material but also the material which has not yet been released or is

authorized for broadcast through the authorized distribution channels.

7. The features of the website are being described as that the

user or visitor need not subscribe to the website in order to enable him to

search and view the video on the same. But for the purposes of uploading

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.3 of 132
a video on to the website, the user is required to subscribe and create a

user profile. It is also pointed out in the plaint that when a user in India

visits the said website the said user is immediately forwarded to India

centric version of the website namely in.myspace.com which is catering

to the Indian community.

8. The plaintiff states that the website of the defendants contains

the additional features and instructions which encourages the users and

enables them to learn how to share videos. These additional functions

create additional unauthorized copying, electronically store, transmit the

content that infringes the rights of the others including the plaintiff.

9. The website of the defendants is stated to also generate

revenue by offering of this illegal content/ infringing works. The said

revenue is made through the medium of advertisements being displayed

on each webpage. The whole business of the defendant No. 1 is

specifically depends upon authorizing free uploading and then

distributing the content through downloading or streaming content to end

users.

10. The complaint of the plaintiff emerges from the kind of

business model adopted by the defendants wherein it states that the

songs, cinematograph works including the ones which are for new movies

or upcoming movies distributing which the plaintiff earns its revenue and

completes its cost of film making gets deprived due to illegal

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.4 of 132
dissemination of the songs, cinematographs works by the defendants on

internet whereby the defendants encourages and authorizes the users to

share these contents and the end users are benefitted with the said songs

and films free of charge by in turn distribution by the defendants to the

public at large.

11. The plaintiff has also explained the operation of the website of

the defendants in the following manner:



   User

                                              


   MySpace sends the streaming                 Simultaneously, a copy of the
   video and audio content from                chosen video and/or sound
   MySpace‟s servers to the user‟s             recording is downloaded from
   computer or other device where it           the MySpace website to the
   can be seen and heard.                      user‟s computer.

                                              


   User clicks on preferred search result.

      


MySpace provides for users a search and indexing function which
allows users to search for the video/sound recording and provides a
list of thumbnails search results in response to the search.

MySpace makes a copy of the uploaded video or sound recording
in its own software format, and stores it on its own servers.

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Subscriber uploads video recording (cinematograph film) or sound
recording on MySpace website using facility provided by
MySpace.

12. The plaintiff has stated that in the year 2007 a non disclosure

agreement was signed between the plaintiff and the defendants and

thereafter there were in talks with the defendants whereby the defendants

were called upon to take the licences from the plaintiff. But, the talks

broke down and the defendants rather offered the plaintiff to go for

registration of rights management tool programme by way of email dated

January 18, 2008. However, the plaintiff then gave a legal notice on

20.2.2008 informing the defendants about its rights. The reply to the

notice of the plaintiff by the defendants was issued on 12.3.2008 wherein

the defendants assumed that the content of the plaintiff copyright has

been taken down and also that the same shall not be made available on

the website in future.

13. However, in December 2008, it was realized by the plaintiff

that the defendants have not removed the said infringing material from the

website. The said infringing material despite the assurance of the

defendants was still available on the website of the defendants. The

plaintiff has enumerated the infringing material as on December 2008 in

the plaint which can be outlined as under:

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.6 of 132
LANGUAGE SUB-GENRE TITLE SINGER/ARTIS EXPECTED
RELEASE
DATE
PUNJABI ALBUM Punjaban Pammi Bai 17th Dec 2008
PUNJABI ALBUM As Kudiye Labh Janjua, 17th Dec 2008
Kuldeep Sandhu,
Karan Mahi,
Onkar Onki, Vicky
Bhoi and
Kulwinder Singh
HINDI ALBUM Hari Om Hari Haran 18th Dec 2008
PUNJABI ALBUM Bottle Wargi Ravinder Grewal 18th Dec 2008
PUNJABI ALBUM Don‟t Mind Aman Riar 24th Dec 2008
HINDI FILM JAANE TU YA IMRAN KHAN, 12.12.08
JAANE NA GENELIA
D‟SOURZA,
MANDHRI
PADHNIS,
AIYAZ KHAN &
OTHERS
HINDI COMPILATIO 2008 IT‟S 12.12.08
N ROCKING (SET)
OF TWO CD,
MC-SINGLE)
HARYANVI RAJA NARENDRA 16.12.08
HARISHCHAND KAUSHIK,
RA MEENAKSHI
PANCHAL
PUNJABI ALBUM DEEWANA SANDEEP 18.12.08
TERA SANDHU
PUNJABI ALBUM SARDAR GARY HOTHI 22.12.08
BHOJPURI FILM SWARG JAISAN DHEERAJ 26.12.08
GHAR SANSAR- PANDIT, MILI
PART 1 & 2 PRIYA,
SUBHASH
BHARGAV,
VANDANA,
KSHITIJ
PRAKASH,
RENU MISHRA,
VIJAI RAI

14. Thereafter, the plaintiff filed the present suit feeling

dissatisfied with the assurances of the defendants and sought the interim

reliefs from this court to the following terms:

                 "(i)      grant an order of permanent injunction
                 restraining     the defendants, their officers,

  IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008            Page No.7 of 132

employees, agents, servants and representatives and
all others acting on their behalf and in active
concert or participation with them or any of them
from reproducing, adapting, distributing,
communicating, transmitting, disseminating or
displaying on their website www.myspace.com,
www.in.myspace.com or any sub-domain thereof or
otherwise infringing in any manner the
cinematograph films, sound recordings and/or the
underlying literary or musical works in which the
plaintiff owns exclusive, valid and subsisting
copyright(s);

(ii) grant an order of permanent injunction
restraining the defendants, their officers,
employees, agents, servants and representatives and
all others acting on their behalf and in active
concert or participation with them or any of them
from causing, contributing to, inducing, enabling,
facilitating or participating in the infringement of
the cinematograph films, sound recordings and/or
the underlying literary or musical works in which
the plaintiff owns exclusive, valid and subsisting
copyright(s) on their website www.myspace.com,
www.in.myspace.com or any sub-domain thereof or
otherwise; and

(iii) grant an order of rendition of accounts by
the defendants to the plaintiff;

(iv) grant an order requiring the defendants
jointly and severally to pay damages as stated
hereinabove to the plaintiff;

               (v)        grant costs of the instant suit to the
               plaintiff; and

               (vi)      pass any other such order(s) in favour of

the plaintiff and against the defendants as may be
deemed fit and proper by this Hon‟ble Court in the
interest of justice and equity.”

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15. The matter was first listed before this court on 19.12.2008

when the defendants also appeared as caveators and this court was

passed the following order :

“I.A. No.15781/2008 (u/O 39 R 1 and 2 CPC)

…..Notice. Counsel for the defendants accepts
notice. He seeks and is granted four weeks‟ time to
file a reply to the application, with an advance copy
to the other side, who may file a rejoinder thereto,
if any, before the next date of hearing.

In the meantime, as an interim measure and without
prejudice to the rights and contentions of the
respective parties, the Plaintiff agrees as a gesture
of goodwill, to handover the copies of the albums
mentioned in para 47 of the plaint to the
defendants, for the defendants to ensure that the
copyright of the Plaintiff in any of the aforesaid
audio visual, songs, sound recordings and literary
and musical works is not communicated to the
public through/on/via the website of the Plaintiff
www.myspace.com.

The Plaintiff shall also furnish an updated catalogue
of its works in which it has a copyright, to the
defendants. The defendants shall make an
endeavor to ensure removal of the infringing
contents in which the Plaintiff have a copyright,
from its aforesaid website and file an affidavit of
compliance in this regard before the next date of
hearing……..”

16. The said order was challenged before the Hon‟ble Division

Bench, wherein the Hon‟ble Division Bench passed the following order

with the observation that the said order is an interim measure and will not

come in the way of the Learned Single Judge in deciding the interim

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.9 of 132
applications. The said order of Learned Division Bench is reproduced

hereinafter:

“In our view the prayer in the respondent‟s plaint is
general in nature. It does not refer to specific titles
in respect of which infringement has taken place.
The catalogue when printed out gives the name and
title of songs and films in which the Plaintiff claims
copyright. The plaint does not state that all of the
songs/films have been uploaded on the appellant‟s
web-site. However, the scope and nature of the
plaint is left to be determined in the suit. In light of
this fact, we are of the view that as and when the
respondent provides details of its songs and films
which have been uploaded on the web-site of the
appellant, the appellant shall immediately take
remedial measures to remove the same from its
website not later than one week from the date of
such communication. In our view, if such
requisitions of the respondent are complied with
within a week by the appellant, it would constitute
sufficient protection of the respondent‟s rights as an
interim measure, and would demonstrate the
endeavour of the appellant to comply with the
Order dated 19th December, 2008. We, however,
make it clear that nothing said in this order would
come in the way of the decision of the learned
Single Judge.”

17. The defendants have filed its written statement and replied to

the application seeking interim injunction. The defendants have also filed

an application under Order 39 Rule 4 seeking modification of the order

passed on 19.12.2008. The defendants have also amended the written

statement and in the amended written statement they have raised the

following defences :

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.10 of 132

a) This court does not have territorial jurisdiction to entertain and try

the present proceedings on the grounds:

 The defendant No.1 is a foreign national and is carrying on

business outside the jurisdiction of this court in US.

 No part of cause of action has occurred with in the territorial

jurisdiction of this court.

 The defendant No.1 is not amenable personally to jurisdiction

of this court and therefore cannot be compelled to be under

the jurisdiction of this court.

 The website of defendants cannot close the jurisdiction to this

court as it does not pass the tests laid down in the case of

Banyan Tree Vs. A. Murali Krishna Reddy & Anr, 2010

(42) PTC 361 (Del).

 The exercise of jurisdiction by this court would mean that the

court is giving extraterritorial effect.

b) That the suit is not maintainable as the prayers made in the suit are

non specific and if granted it will impose impossible burden upon

the defendant No. 1. The plaintiff has failed to specify in respect of

which works, it is seeking injunction order and thus the suit is not

maintainable.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.11 of 132

c) The prayers made in the suit are open ended and the blanket

injunction of the kind cannot be granted by the court. No qua timet

action is maintainable in suit for copyright infringements

d) The plaintiff has made certain misrepresentations about the facts

which according to the defendants were not mentioned in the legal

notice in the year 2008 and the defendants have clarified all the

aspect work wise.

e) The acts of defendants are those of intermediatory providing free

of cost platform to the users without any actual or direct

knowledge of the content being uploaded and has no role in

selection of the content so uploaded. The defendants have no

control over the said content being uploaded as the portal of the

defendants is such where it cannot exercise any such control.

f) The acts of the defendants are those of intermediatory and are

protected under the provisions of Section 79 of Information

Technology Act, 2000. The said provision will act as safe harbor

provisions of US Digital Millennium Copyright Act (“DMCA”)

whereby the liability of the defendants shall be exempted by

operation of Section 79 of IT Act, 2000.

g) The agreements or the assignments which are placed on record by

the plaintiff are defective. The said agreement reveals that the

rights of the movies vest with the producers and they have retained

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the said rights including internet rights. Thus, the rights which are

asserted by the plaintiff actually do not belong to the plaintiff.

h) The defendants only provides a means for file sharing where the

acts which are performed may or may not be infringing and thus

mere providing of means is no infringement under the eyes of the

law.

i) The acts of the defendants are protected under the provisions of

Digital Millennium Copyright Act (“DMCA”) of United States.

j) The defendants have provided the term of use agreement with

users which reads as under:

“8. Content / Activity prohibited. The following
are examples of the kind of Content that is illegal or
prohibited to post on or through the MySpace
Services. MySpace reserves the right to investigate
and take appropriate legal action against anyone
who, in MySpace‟s sole discretion, violates this
provision, including without limitation, removing
the offending content from the MySpace Services
and terminating the Membership of such violators.
Prohibited Content includes, but is not limited to
Content that, in the sole discretion of MySpace:
…….

8.8. constitutes or promotes an illegal or
unauthorized copy of another person‟s copyrighted
work, such as providing pirated computer programs
or links to them, providing information to
circumvent manufacturer-installed copy-protect
devices, or providing pirated music or links to
pirated music files.

……

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8.16 Violates the privacy rights, publicity rights,
copyrights, trademark rights, contract rights or any
other rights of any person”

Thus, the defendants themselves require their users to respect

the copyright of the others and have all intention to remove the infringing

content whatsoever from its website.

k) The defendants do not derive the monetary gains against the

advertisement in the user generated content. The advertisements

may exist on the same page as on User Generated Content but they

are not really against the user generated content but against the

licensed content.

l) The defendant No. 1 acts as merely a licensee of the user wherein

it takes a limited license from the user to add, delete or modify the

content so that the same is befitting to its website to make it

viewable. But the said defendant does not have any other license to

sell those works or make it public outside its services.

Vide clause 6.1 of the User Agreement, the said defendant

binds its users to grant it a limited license to use, modify, delete from,

add to, publicly perform, publicly display, reproduce and distribute such

UGC solely for the purposes of the website.

The said clause reads as under:

“6.1 MySpace does not claim any ownership rights in
the text, files, images, photos, video, sounds, musical works,

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.14 of 132
works of authorship, applications, or any other materials
(collectively, “Content”) that you post on or through the
MySpace Services. After posting your Content to the
MySpace Services, you continue to retain any such rights
that you may have in your Content, subject to the limited
license herein. By displaying or publishing (“posting”)
any Content on or through the MySpace Services, you
hereby grant to MySpace a limited license to use,
modify, delete from, add to, publicly perform, publicly
display, reproduce, and distribute such Content solely on
or through the MySpace Services, including without
limitation distributing part or all of the MySpace
Website in any media formats and through any media
channels, except Content marked “private” will not be
distributed outside the MySpace Website. This limited
license does not grant MySpace the right to sell or otherwise
distribute your Content outside of the MySpace Services.
After you remove your Content from the MySpace Website
we will cease distribution as soon as practicable, and at such
time when distribution ceases, the license will terminate. If
after we have distributed your Content outside the MySpace
Website you change the Content‟s privacy setting to
“private,” we will cease distribution of such “private”
Content outside the MySpace Website as soon as
practicable after you make the change.”

m) The uploaded content can be identified only by way of URL

(Uniform Resource locator) as an address and the defendants

cannot thus segregate the infringing or non infringing works.

n) The defendants have installed a notice and take down procedure in

compliance of Digital Millennium Copyright Act (“DMCA”) of

US same as earlier one wherein, any proprietor who has a reason

to believe that the copyrighted content has been posted on the

website, can issue notice and ask to take down the request and the

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defendants will immediately take the corrective measures to take

down and remove the said content.

o) The defendants have also provided three safeguards on its own:

            The Hash Block Filter

            Take Down stay Down

            Rights management tool


The Hash Block filters prevents the deleted content from

being reposted by taking finger print of the content.

The Take Down stay down contents also prevents the

repetitive reposting of the file containing identical content. Thus,

the said filter is also a useful identifier for preventing repetitive

infringement.

The third tool has been explained by the defendants in detail

which is as under:

The most powerful filtering tool that defendant No.1 makes

available to copyright owners is the free RMT Copyright Filter.

The defendant No.1 allows any copyright owner to register for and

use this tool at no charge subject to a single registration agreement.

A copy of the standard RMT Registration Agreement applicable in

this behalf has been filed along with the list of documents. To take

advantage of the RMT, all that the copyright owner needs to do is,

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register with the defendant No.1 and then create “fingerprints” of

its audio or audio visual content (using the free software that the

said defendant makes available through its filtering vendor called

Audible Magic). The copyright owner submits the fingerprints to

the defendant‟s filtering vendor with associated business rules,

e.g., the copyright owner can decide to block all of its content or

rather allow users to post certain pieces of content that it is trying

to promote.

Thereafter, if the copyright owner instructs that all of its

content should be blocked, the defendant No.1‟s RMT Copyright

Filter will be set to block all content uploaded by users that

matches the copyright owner‟s content. This means if any piece of

content is uploaded that matches any 30 seconds of the copyright

owner‟s content, it would be blocked (the 30 seconds of matched

content is the technical limit for the filtering technology). If the

copyright owner, therefore, submits fingerprints to the RMT

Copyright Filter, it can avail themselves of extremely broad

copyright protection on its website. Upon signing up for the RMT

(as well as signing Audible Magic‟s own short agreement

regarding the use of its signature generation software), the content

owner need not ever part with its content to receive the benefits of

filtering. Rather, the content owner need only itself create the

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fingerprints of its content, by using Audible Magic‟s free software,

and then send such fingerprints to Audible Magic with appropriate

usage instructions (i.e., “block” or “allow”). The defendant No.1

also periodically runs the filter retroactively over its website, again

at its own cost, over all the content that has already been posted on

its website. Accordingly, if content was uploaded by a user before

a copyright owner was able to add it to Audible Magic‟s reference

database of fingerprints, the filter will catch such previously

uploaded content and remove it.

Thus, as per the defendants all these measures are nothing but

safeguards to prevent infringement and sufficiently demonstrates

their bonafides and non involvement in the infringing acts.

p) The defendants have launched their India operations in December

2007 and immediately informed all the music companies about its

right management tool so that the infringement can be minimized

and the plaintiff cannot blame the defendants for its own reluctance

to subscribe to such facility and for the resulting infringements due

to its non subscription.

q) That the interim arrangement recorded in the Hon‟ble Division

Bench‟s Order dated March 6, 2009 embraces the “notice and take

down” protocol set forth as a legal norm in the laws across the

world including the laws of India to deal with the issues of on-line

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liability. Consequently, the said interim order represents the only

feasible answer to the grievance of the Plaintiff, if found to be well

founded in law and fact.

r) The Plaintiff has made misrepresentation of facts that the

defendants do not have any control over the content posted on their

website by the users. Further, the defendants do not target Indian

customers. The advertisements that may appear along with the

thumbnails are a result of an automated process carried out by a

search engine, which is term centric and not content centric.

18. The applications came up for hearing from time to time and

clarifications were also sought from the parties after reserving the matter

for orders.

19. Learned counsel Mr. Amit Sibal appearing on behalf of the

plaintiff has made his submissions which can be enunciated as under:

a) Firstly, learned counsel Mr Sibal has submitted that the acts of the

defendants wherein the defendants have used the copyrighted

works of the plaintiff without licence or any authority, amounts to

primary acts of infringement. Learned counsel has placed reliance

on the provisions of Section 51 (a) (i) of the Copyright Act, 1957

(herein after referred as to as „Act‟) and argued that the defendants

are communicating the works of the plaintiff to the public without

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authority or licence and thus causing royalty losses in addition to

making the work available to the public which only owner of the

work is entitled to do. Therefore, the present case is a squarely a

case of primary act of infringement as provided under Section 51

(a)(i) of the Act.

b) Secondly, learned counsel Mr Sibal has argued that the present

case comes within the purview of Section 51 (a) (ii) of the Act as

the defendants by providing a space to the users and enabling them

to communicate the work to the public for the defendants‟ own

profit are actually permitting the place for infringement for their

profit which is an infringement prescribed under Section 51 (a) (ii)

of the Act. Mr. Sibal argued that providing webspace to the user is

amounting to permitting the place. The expression “place” has to

be interpreted to subsume not merely physical place or space but

also space at the virtual world of internet. It is also pointed by the

learned counsel that the defendants has not, in the pleadings,

contested that MySpace website is a “place” within the meaning of

Section 51 (a) (ii) of the Act.

c) Further it is explained by Mr Sibal that the defendants have not

disclosed to the court that the defendants‟ acts are not totally

without consideration in providing the space to the users. But,

actually the defendants have purely and largely have commercial

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interest in operating this kind of arrangement. As per Mr Sibal, it

would not be unapt to call this as purely a commercial model as the

defendants are reaping profits from all the advertisers by putting

the advertisements along side the sound recordings and the

cinematographs works of the plaintiff. By doing all this, the

defendants are permitting a place to be used for infringement for

profit. The same is an act of infringement under Section 51 (a) (ii)

of the Act.

In order to support his contention Mr. Sibal relied upon the

following judgments:

Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.
(AIR
2004 SC 3540)

 Super Cassette Industries Ltd. v. Nirulas Corner
House (P) Ltd.148 (2008) DLT 487 is relied upon to
contend that the similar argument like in the present case
that the defendant business in the website includes the
usage of space for infringing as well as non infringing
purposes by the various users, was raised in that case
wherein the court was concerned with usage of the
infringing works by the Hotels/ the defendants therein who
took the stand that the hotel anyways charge the customers
for viewing the television whether it is an infringing work
or otherwise, thus the defendants therein sought to justify
that the said acts does not come within the purview of
Section 51 (a) (ii) which is permitting the place for profit
for infringement purposes. The court as per the learned
counsel for the plaintiff has rejected the said argument in
the following words:

“22. The plaintiff has been able to show that the
defendants are using cable connection and extending
facilities of television to their patrons in the hotel

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.21 of 132
rooms, for payments are received. In this view, prima
facie, the content of songs and videos broadcast are
communications to the public……..”

d) Learned counsel Mr. Sibal submitted that the case of the

defendants do not fall within the exception provided under Section

51 (a) (ii) of the Act as the defendants are doing the infringement

with knowledge and also they have a reason to believe that such

acts would amount to infringement of copyright.

Mr. Sibal has provided following reasons whereby it can be

said that the defendants‟ acts of communicating the work are

coupled with knowledge:

 Clause 9 of The Terms of Use Agreement of MySpace

with the user itself makes it evident that MySpace itself

reminds its users not to upload content which can infringe

anyone‟s copyright on MySpace.

 In paragraph 29 of the Written statement the defendant No.

1 itself has listed various tools that it is supplying to

copyright owners to deal with the infringement taking

place on the MySpace‟s website.

e) Learned Counsel Mr. Sibal submitted that the argument of the

primary infringement can be strengthened by looking at Section 14

of the Act wherein copyright means right to do or authorize the

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.22 of 132
doing of the act. Thus, the said acts are the acts of the owner and

the defendants while providing a space at the internet is

authorizing the communication of the work to the public by which

large segment of public is able to hear, listen and watch the

cinematograph and musical works of the plaintiff without its

authorization. Thus, the defendants‟ acts amounts to authorizing

the infringement which itself is a separate infringement by way

conjoint reading of Section 14 read with Section 51.

Mr. Sibal has referred to extensive English case laws

included the ones decided in Australia on the subject of authorizing

the infringement which can be enlisted as under:

 University of New South Wales v. Moorhouse (1975)
CLR 1
 Universal Music Australia Pty Ltd. and Ors. v.
Sharman License Holdings Ltd. and Ors
 Australasian Performing Right Association v. Jain,
(1990)18IPR663
 Roadshow Films Pty. Ltd v iiNet Limited, [2010] FCA
24
 Arista Records, Inc. v. Flea World, Inc. 2006 WL
842883 (D.N.J.).

Thus, it is the submission of Mr. Sibal that the defendants‟

acts are nothing less than providing means to an infringement for

profit which is equally considered to be an infringement. The said

infringement also gets established when the defendants‟ exercises

full control over and above the user generated content and other

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determinative factors which are well settled by the new line of

decisions as mentioned above.

f) Learned counsel Mr. Sibal vehemently argued that the “notice and

take down” alternative which has been suggested by the

defendants do not mitigate the wrongs of the defendants and is not

a sufficient safeguard for an infringement which occurs on day to

day basis.

This has been explained by Mr. Sibal by informing that the

new musical and cinematograph works are made from time to time,

as and when there are promotions of new movies. The availability

of the said trailors or musical works on internet would mean

sharing the same with public at large. Notice and turn down

provisions which provides the aggrieved party to get the

defendants to notice the already occurring infringement and

thereafter the defendants remove the contents on internet. The said

procedure is inappropriate and does not remedy the infringement,

as by the time notice to turn down is given by the plaintiff to the

defendants, infringement is already caused whereby the works of

the plaintiff are already circulated to the public at large.

Thus, the procedure suggested by the defendants to first

make the infringing work available and then to delete on request is

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.24 of 132
bad and puts to the plaintiff into irretrievable harm by causing

infringement of each and every new work of the plaintiff and

enough damage is already done prior to making such turn down

request. As per Mr. Sibal, the question has to be seen from the

perspective as why the defendants should be at all allowed to

cause infringement of the plaintiff works at the first place and more

so when the said acts are the conscious acts where the defendants

are also getting benefitted.

g) It is also the contention of Mr. Sibal that the defendants, refuge

under the safe harbor provisions of the law will not be applicable

to the present case. The present case is to be decided upon the

existing legal position and the law of the land and not as per the

US Digital Millenium Copyright Act. The said act and provisions

under the said act does not extend to India and neither there is any

provision under the existing laws which provides such safe harbor

provisions and in the absence of the same, the discussion relating

to the same in relation to infringement of the plaintiff‟s works in

India becomes irrelevant. In short, the Digital Millennium

Copyright Act (“DMCA”) is not applicable to the present dispute.

By making the above submissions, Mr. Sibal argued that the

plaintiff has prima facie case as there is no denial to the title of the

works owned by the plaintiff and there are infringing activities

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.25 of 132
being carried on the internet without authorization of the plaintiff.

Further, the defendants are doing the same deliberately and causing

the plaintiff royalty losses. The balance of convenience also lies in

favour of the plaintiff and they are more inconvenient in the event

of non grant of injunction as their works are continuing to be

infringed on internet. On the other hand, the defendants can still

continue their acts without displaying the works of the plaintiff‟s

on the web.

The plaintiff is put to irretrievable harm due to the illegal acts

of the defendants and its extensive royalty losses due to the same

and the defendants have nothing to loose, except, the illegal

earnings arising out the infringing activities. Thus, as per the

learned counsel Mr Sibal, the present case warrants the grant of

injunction as per the prayers made in the injunction application and

the order dated 19.12.2008 which has been modified by the

Division bench further records that the same shall not come in the

way of the learned single judge to decide the injunction application

and thus this court can conveniently grant and extend the

injunction in terms of the injunction application.

20. Per contra, Mr. Rajinder Kumar, advocate, appearing on

behalf of the defendants has resisted the injunction application and also

submitted that the present case does not warrant the grant any injunction

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.26 of 132
at all. Learned counsel Mr. Kumar has made the submissions which can

be outlined in the following terms.

a) Mr. Kumar firstly submitted that this court lacks necessary

territorial and personal jurisdiction to entertain and try the

proceedings against the defendants who are carrying on business,

residing and personally works for gain in the United States of

America. Mr. Kumar in order to buttress his submissions relied

upon the following :

 The defendants are operating, carrying on its business,

working for again outside the territories of India. The

defendants are not personally amenable to the jurisdiction

of this court.

 This court can exercise jurisdiction only to the extent of

the applicability of the law in India and not otherwise. This

court cannot grant any orders which would have the effect

to extending the same outside the territories of India.

 The present case lacks territorial jurisdiction in view of the

well settled law by this court in the case of Banyan Tree

(Supra) wherein this court has extensively dealt with the

subject of jurisdiction in the cases involving websites. The

said case falls within the observations of Banyan Tree

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.27 of 132
(Supra) and thus this court does not have territorial

jurisdiction to entertain and try the present proceedings.

 Even if the web-site of the defendants is interactive, the

same by itself is not sufficient to clothe jurisdiction upon

this court.

 The defendants‟ web-site, which is accessible and

available to all and sundry from any part of the world, is

not specifically targeted at users in India. The Plaintiff has

not shown or pleaded prima facie that the defendant No.1

„purposefully availed‟ itself of the jurisdiction of this

Hon‟ble Court; that the nature of the activity indulged in

by the defendants by the use of their web-site was with an

intention to conclude a commercial transaction with the

web-site user (since the defendant No.1‟s services are

completely free of charge); and that the specific targeting

of this forum state by the defendants have resulted in an

injury or harm to the Plaintiff within this forum court.

 The Plaintiff has pleaded that the defendants‟ web-site is a

highly interactive web-site which not only permits users to

access the contents thereof but also to subscribe to the

services provided by the defendants by “signing up” for

such services, including, the uploading and downloading of

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.28 of 132
videos available on the web-site. The plaint and the

documents filed by the Plaintiff no-where show that the

defendants‟ use of its web-site is with an intention to

conclude a commercial transaction with its users. On the

contrary, the subscription to the services offered on

defendants‟ web-site is free and does not involve any

future payment.

 Even for the purposes of Section 20(c), CPC, in order to

show that some part of the cause of action has arisen

within the jurisdiction of this Hon‟ble Court by the

defendants‟ use of the internet, the Plaintiff must show and

prove that not only the defendants‟ specifically targeted

viewers within the jurisdiction of this Hon‟ble Court but

also that some commercial transaction using the web-site

was entered into by the defendants with a user of its web-

site within this forum resulting in an injury or harm to the

Plaintiff within the jurisdiction of this Hon‟ble Court.

 No such material has been placed on record by the Plaintiff

that the defendants have entered into commercial

transactions with the users of its web-site in Delhi or

anywhere in India for that matter.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.29 of 132
 Further, the Plaintiff has sought to establish jurisdiction on

the basis of certain print-outs from the defendants‟ web-

site to purportedly show availability of the Plaintiff‟s

works on the said web-site for public performances,

display and communication of the same to the public. No

details of the users involved have been provided anywhere

in the plaint. These print-outs seem to indicate that the

Plaintiff has set-up its own people to access the

defendants‟ web-site and engineer the search results to

suit its convenience. As held by the Hon‟ble Division

Bench in the case of Banyan Tree (Supra), it would have

to be a real commercial transaction that the defendants

have with someone not set-up by the Plaintiff itself. The

Banyan Tree (Supra), opinion further holds that if the

only evidence is in the form of a series of trap transactions,

they have to be shown as having been obtained using fair

means. The Plaintiff in the present case has failed to aver

in the plaint and place alongwith it any supporting material

to

Thus, as per Mr. Kumar, learned counsel for the defendants,

this court lacks the territorial jurisdiction due to the above said

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.30 of 132
reasons and this court should reject the plaint or return it to be

presented before the appropriate forum.

b) Mr. Kumar learned counsel for the defendants has argued by

explaining the meaning of copyright in the cinematograph films

that the copyright in any work can be infringed when the infringer

actually indulge into the said act of infringement. The infringement

cannot occur for the acts which the said defendants may indulge in

future or which are not even entered into occurrence. It is the

contention of learned counsel for the defendants that the plaintiff is

seeking the general kind of injunction which is impermissible in

law as there must be specific acts complained of for infringement

to happen and the court to prevent those.

Mr. Kumar has drawn analogy from Trade Marks Act, 1999

wherein the language of provision under the chapter of

infringement uses the wordings “Likelihood of confusion” which

according to him means permitting the plaintiff to sue for future

wrongs, however the as per the learned counsel no such language

subsists in the Copyright Act and in that event of the matter, it is

inappropriate for this court to consider the grant of injunction for

the future wrongs.

c) Learned counsel thereafter started explaining the working of the

defendant‟s website by showing the technical background of the

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.31 of 132
internet and how it emerged. Learned counsel has taken pains to

explain the meaning of the word internet by citing some English

judgments. Counsel has then submitted that the defendants‟

website is premised on the newer and the latest version of web 2.0

which permits interactive interface with the users using it which

includes, media, games, songs, pictures and other multimedia.

d) Learned counsel further argued that the there is a difference

between the infringement of the copyright happening in the

physical form or the tangible form and the acts which are done in

the virtual world of the internet which are not available in the

physical form. As per the learned counsel, that makes a lot of

difference. As per the learned counsel, there is a world wide

debate over the management of communication on the internet.

There are two international covenants entered into by the countries

who are members of World Intellectual property Organisation

which are known as WIPO Copyright Treaty (WCT) and WIPO

Performance and Phonograms Treaty (WPPT).

Learned counsel argued that the court should consider the

provisions of these two treaties though India has not even ratified

these conventions in order to consider the provisions relating to

communications made over internet and its impact. Learned

counsel in order to support his contention also relies upon the

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.32 of 132
judgment passed by the Apex court in Entertainment Network

(India) Ltd vs. Super Cassettes Industries, 2008 (9) SCALE 69

wherein the apex court has expressed its opinion about the

Application of International Conventions in India in the following

words.

“79. It is for the aforementioned limited purpose, a
visit to the provisions of International Conventions
would be necessary.

80. In interpreting the domestic/municipal laws, this
Court has extensively made use of International law
inter alia for the following purposes :

               (i)         As a means of interpretation;

               (ii)        Justification or fortification of a stance
                           taken;

               (iii)       To fulfill spirit of international obligation
                           which India has entered into, when they are
                           not in conflict with the existing domestic
                           law;

               (iv)        To reflect international changes and reflect
                           the wider civilization;

               (v)         To provide a relief contained in a covenant,
                           but not in a national law;

               (vi)        To fill gaps in law. "

Mr. Kumar thus submitted that the Article 8 of the said

convention may be read into by this court in order to find favour in

the defendant‟s stand that the mere act of facilitating over internet

does not amount to infringement.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.33 of 132

e) Learned counsel has argued that the defendants by providing

online space to the subscribers enabling them to share media online

is acting as an intermediary within the meaning of Section 79 of

the Information Technology Act (as amended in the year 2009) and

the acts of the defendants are thus saved by the Information

Technology Act 2000 wherein its acts are without knowledge of

the infringing nature of the communication.

f) Learned counsel further argued that this court should interpret the

provisions of the Copyright Act and information technology Act

harmoniously wherein the IT Act will come into play in the same

manner as that of the safe harbor provisions of US statute which

saves the liability of the defendants. The argument which has been

raised by the learned counsel for the defendants is that it cannot be

said that on one hand the IT Act saves the intermediaries from the

liability and on the other hand the same intermediaries are exposed

to strict liability provisions of the Copyright Act. Both should

operate simultaneously and the safeguard under IT Act, thus, must

also shield the defendants from the liability under the Copyright

Act as well which is no different from its operations on the

internet.

Learned counsel has further explained the preceding

argument in detail by enumerating the working process of the

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.34 of 132
defendants on the internet which establish that the defendants are

no more than an intermediary who is doing this without knowledge

and despite due diligence the content cannot be known to the

defendants at the first instance. Learned counsel submitted that

defendant No. 1 is predominantly a service provider/ intermediary,

providing a free of cost platform to its users and offering an

interactive user submitted network of friends, personal profiles,

blogs, groups, photos, music, video, instant messaging services,

mobile services and videos. It is further submitted that the said

defendants do not directly upload any content on its website

(except for content that it licenses and creates which constitutes a

very small portion of the content on its website), but merely

provides a platform to its users for uploading content under certain

terms and conditions.

Thus, as per the learned counsel for the defendants, the acts

of the defendants are purely of the kinds of intermediary and the

defendants are just facilitating the space and cannot be held to be

within the knowledge of the content which is being uploaded by

third party unless the right holder brings it to the notice of the

defendants.

g) Learned counsel further submitted that it is not merely without the

knowledge of the defendants but also impossible to monitor each

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.35 of 132
and every content which is being uploaded on the website. The

same is, therefore, the compulsion of the defendants while

operating on internet as the internet portal is open to world at large

and due to the nature of the portal which is such that anyone can

upload anything. The defendants being a facilitating entity cannot

be held responsible due to its impossibility of monitoring each and

every content over the internet unless the active participation of the

defendants is established.

h) Learned counsel for the defendants further submitted that the

defendants are not gaining any monetary benefits arising out the

user generated content. But rather the advertising as per the

learned counsel for the defendants is no doubt a business model of

the defendants but is against the licensed content.

Further it has been argued that the advertisements may also

appear automatically as the user types keywords and search for the

same. This is usually a part of “Adwords” which are in the nature

of hints or options given by the search engines as and when the

user asks any query from search engine. The example of the same

is given that supposingly if the user is typing Punjaban. The song

may appear and along side the same some options of Punjabi

matrimonial may appear automatically which happens due to the

search engines exercise and not due to the acts of the defendants.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.36 of 132

j) Learned counsel submitted that indeed it is correct that the

defendants takes the licence from the user to use, add, delete from

or publicly perform or publicly display, publicly perform,

reproduce and distribute the said content for the purposes of the

website. However, the said licence is a precautionary step to avoid

any objection from any users of the defendants. Learned counsel

also states that the same does not mean that the defendants

requires the licence for such reformatting.

k) Learned counsel for the defendants further submitted that the

defendants have already ensured that its website has measures to

remove or prevent copyright infringements. The said measures are

taken in consonance with the Digitial Millennium Copyright Act of

USA. The said procedure is explained by the defendants below :

“In pursuance of the above stated categories
contemplated in the DMCA, the Defendant No.1
has installed a “notice and take down procedure” as
prescribed in the DMCA and offers the same free
of cost to all copyright holders, who in their
perception are likely to be affected by
transmission/uploading of content by the users.

Accordingly, if a copyright owner believes that his
or her work has been copied and posted on the
Defendant No.1‟s website in such a way that
constitutes copyright infringement, the Defendant
No.1 has provided information in the Frequently
Asked Question (FAQ) section on its website to
enable the copyright owner to file an infringement
notice. Towards this end, the Defendant No.1 has
provided details of its copyright agent in the User
Agreement so that such copyright agent may be

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.37 of 132
notified of the claim of infringement, consisting of
the following information: (i) an electronic or
physical signature of the person authorized to act
on behalf of the owner of the copyright interest; (ii)
a description of the copyrighted work that the
copyright owner claims to have been infringed; (iii)
a description of where the material that the
copyright owner claims to have been infringed is
located on the said Defendant‟s website [providing
the URLs of the claimed infringing material]; (iv)
the address, telephone number, and email address
of the copyright owner; (v) a written statement by
the copyright owner that he/she has a good faith
belief that the disputed use is not authorized by the
copyright owner, its agent, or the law; (vi) a
statement by the copyright owner that the above
information in its notice is accurate and, under
penalty of perjury, that he /she is the copyright
owner or authorized to act on the copyright owner’s
behalf.

The defendant No.1 also automatically, and, at its own

initiative and expense, takes two additional steps to hinder users

from reposting that same content. The defendants records the

“hash” of the file that has been removed which is a unique

identifier for that file. The defendants also create a “fingerprint” of

the content that has been removed, which is a unique identifier for

the content. The defendant No.1 uses both the hash and the

fingerprint to achieve the goal of preventing the same content that

has been removed from being re-posted. After a copyright owner

requests that user-posted content be removed from the defendant

No.1‟s website, it automatically adds the hash to the Hash-Block

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.38 of 132
filter and fingerprint to the Take Down Stay Down Filter.

If any user tries to repost the same exact file, it should be

blocked by the Hash-Block Filter, which will recognize the same

file. If any user tries to repost the identical content (even if the file

is different because the content comes from a different source), the

Take Down Stay Down filter will recognize the identical content

and block it from being reposted. These are both precise filters,

because the goal is to take the copyright owner‟s specific take

down request and apply it prospectively to all new content being

posted. Copyright owners often have policies to allow users to post

shorter pieces of content, but not the entire piece of content.

Further, certain content may be protected under fair dealing

protections or authorized by copyright owners themselves. In such

situations, the defendant No.1 does not presume to know what the

copyright owner might want done with different or shorter portions

of the content. But, for content that the copyright owner has

already removed, the Take Down Stay Down Filter will

automatically block any new content that the filter recognizes as

the identical content. The defendant No.1 employs these two filters

automatically after receiving a take down request from a copyright

owner, and the copyright owner need not take any action on its

own to get the benefits of these two filters.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.39 of 132
The most powerful filtering tool that defendant No.1 makes

available to copyright owners is the free RMT Copyright Filter.

The defendant No.1 allows any copyright owner to register for and

use this tool at no charge subject to a single registration agreement.

A copy of the standard RMT Registration Agreement applicable in

this behalf has been filed to take advantage of the RMT, all that

the copyright owner needs to do is register with the defendant

No.1, and then create “fingerprints” of its audio or audio visual

content (using the free software that the said defendant makes

available through its filtering vendor called Audible Magic). The

copyright owner submits the fingerprints to the defendants‟

filtering vendor with associated business rules- e.g., the copyright

owner can decide to block all of its content or rather allow users to

post certain pieces of content that it is trying to promote.

Thereafter, if the copyright owner instructs that all of its

content should be blocked, the defendant No.1‟s RMT Copyright

Filter will be set to block all content uploaded by users that

matches the copyright owner‟s content. This means, if any piece of

content is uploaded that matches any 30 seconds of the copyright

owner‟s content, it would be blocked (the 30 seconds of matched

content is the technical limit for the filtering technology). If the

copyright owner, therefore, submits fingerprints to the RMT

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.40 of 132
Copyright Filter, it can avail itself of extremely broad copyright

protection on its website. Upon signing up for the RMT (as well

as signing Audible Magic‟s own short agreement regarding the use

of its signature generation software), the content owner need not

ever part with its content to receive the benefits of filtering.

Rather, the content owner need only itself create the fingerprints of

its content, by using Audible Magic‟s free software, and then send

such fingerprints to Audible Magic with appropriate usage

instructions (i.e., “block” or “allow”). The defendant No.1 also

periodically runs the filter retroactively over its website, again at

its own cost, over all content that has already been posted to its

website. Accordingly, if content was uploaded by a user before a

copyright owner was able to add it to Audible Magic‟s reference

database of fingerprints, the filter will catch such previously

uploaded content and remove it”

21. Learned counsel states that once the defendants themselves

vigilant about the right holders right and at their own expense are

operating the measures to cure or filter the infringement. In these

circumstances, the defendants cannot be said to be those who are

indulging in the infringement when they have no connection whatsoever

with the content of the works in question.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.41 of 132

22. By making these aforementioned submissions, Mr. Rajinder

Kumar resisted the grant of injunction and also pressed for the vacation

of the earlier order of Division bench by urging that the defences raised

above prima facie establish that the defendants could not be held liable

for any act of infringement of the copyright being an intermediary. The

defendants already have a provision to remedy the grievance of the

plaintiff which does not require any further orders as it is within the

policy of operation of the defendants that it is required to delete the

works which are infringing in nature. Further, the said acts are without

knowledge sufficiently are not covered by the second part of the

provision of Section 51(a) (ii) read with the provisions of IT Act and

therefore no liability of infringement can be attributed against the

defendants. Thus, the order passed by Division Bench is liable to vacated

and injunction application filed by the plaintiff is to be dismissed.

Although during the course of the arguments the defendants‟ counsel

admitted that the order passed by the division bench can be confirmed

and the same is also stated to be the only answer in the written statement.

23. I have gone through the plaint, written statement and records

of the proceedings and also noted the submissions of the parties.

However, before commenting upon the submissions of the parties, I deem

it fit to first discuss the law on the subject.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.42 of 132
Law Relating To Copyright And Its Relation With Internet

Computing

24. Copyright is a bundle of rights which is meant to encourage

creativity. The said rights are negative rights in as much as the same are

prohibiting others from using the copyrighted works. The traditional

concept of the copyright has undergone a drastic change as traditionally,

the law relating to copyright was meant to encourage the original literary,

books and also to help the poor authors. But, due to advent of the new

technologies, its scope has extended manifolds. Now, the modern law of

copyright encompasses musical works, cinematograph works, computer

programs, performers rights, broadcasting rights.

24.1 The copyright has now become part of the business of the big

organization more specifically in film industry where the major chunk of

money is reaped out of the royalties arising out of the licensing and

assignment of copyrights in the respective works. Rather, it would not be

out of place to state that the royalties have become the backbone of the

film making machinery. The companies like the plaintiff and other

musical companies on one side earning royalities and thereon investing

the same funds in making the films.

24.2 One more stage of complexity has been attained by the

copyright law due to emergence of the virtual world of internet. The

internet computing has also brought many changes in our lives in stages.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.43 of 132
The era in 1990s saw the beginning of the computing internet, wherein,

the TCPIP internet and windows interface which was so user friendly due

to which we became conversant with the emails and network navigation.

Thereafter, in the year 2000 and later the type of computing changed and

it has been refined and set the benchmarks, there has been a sudden rise

in the markets of software be it accounting, designing, photo printing,

office using like notepads, gaming, chatting, user to user protocol, music

sharing programs like napster, kazaa etc.. All these software development

have further taught us that there is much more than emails and typing on

the computer and internet is very vast by which one can navigate in

several spheres of subjects and can share the data with other users.

24.3 The third and more advance stage of computing which we are

witnessing at this stage is the one wherein the level of internet computing

is established and there is a tendency to conduct business online. There is

a large segment of business models which are growing over the internet

wherein the users are participating actively and thereon the companies

are earning solely on the basis of the internet services by facilitating users

to share their contents which are attractive (which includes pictures,

motion pictures, films, songs, graphics, trailors, private communications

amongst the eminent personalities, scam disclosures etc) so as to make it

common to all and enabling them to view it easily by sitting at home. The

more prominent examples of this advance stage is utube, myspace,

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.44 of 132
facebook etc. This is really an advance stage and there is no hesitation in

saying that it is a remarkable development wherein one can see motion

pictures with high quality graphics on internet which includes filming and

other mode of entertainment .

24.4 While facilitating the said sharing process over the internet,

the companies like the defendants are gaining business in the nature of

advertising, sponsorships, other like businesses which makes them

popular and run their show. This can be said to be one more way of

conducting business which is comparatively new in its field. The problem

however crept in when the content which is a subject matter of sharing on

the website operated by the companies are someone else‟s copyright or

proprietary material and not owned by the person or the user supplying

them. The question then arises, as to whether the said company by

providing the medium of sharing to the users and also gaining

commercially alongside the same can be said to have infringed the

copyright of the right holder. This court is faced with the similar kind of

situation wherein the defendants‟ said website operator and the plaintiff

is the right holder and the court is called upon to answer the said question

by applying the copyright law accordingly to this another mode of doing

business which has been innovated by the defendants in the virtual world

of internet.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.45 of 132

25. Copyright and its meaning has been provided under Section

13 and 14 of the Act. The infringement of the copyright has been defined

under Section 51 of the Act. The said provisions are reproduced

hereinafter for the ease of reference:

“13. Works in which copyright subsists- (1)
Subject to the provisions of this section and the
other provisions of this Act, copyright shall subsist
throughout India in the following classes of works,
that is to say –

(a) Original, literary, dramatic, musical and artistic
works,

(b) cinematograph films, and

(c) [sound recordings]

(2) Copyright shall not subsist in any work
specified in sub section (1), other than a work to
which the provisions of Section 40 or Section 41
apply, unless-

(i) In the case of published work, the work is
first published in India, or where the work is
first published outside India, the author is at
the date of such publication, or in a case
where the author was dead at that date, was
at the time of his death, a citizen of India,

(ii) In the case of an unpublished work other
than [work of architecture], the author is at
the date of the making of the work a citizen
of India or domiciled in India; and

(iii) In the case of [work of architecture], the
work is located in India

Explanation- In the case of a work of joint
authorship, the conditions conferring copyright

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.46 of 132
specified in this sub section shall be satisfied by all
the authors of the work.

(3) Copyright shall not subsist-

(a) In any cinematograph film if a substantial part
of the film is an infringement of the copyright in
any other work;

(b) In any [sound recording] made in respect of a
literary, dramatic or musical work, it in making
the [sound recording], copyright in such work
has been infringed.

(4) The copyright in a cinematograph film or
a [sound recording] shall not affect the separate
copyright in any work in respect of which a
substantial part of which, the film, or as the case
may be, the [sound recording] is made.

(5) In the case of a work or architecture,
copyright shall subsist only in the artistic character
and design and shall not extend to processes or
methods or construction.”

“14. Meaning of copyright- For the purposes of
this Act, “copyright” means the exclusive right
subject to the provisions of this Act, to do or
authorise the doing of any of the following acts in
respect of a work or any substantial part thereof,
namely :-

(a) In the case of a literary, dramatic or
musical work not being a computer programme,-

              (i)      to reproduce the work in any material form
                       including the storing of it in any medium by
                       electronic means;

              (ii)     to issue copies of the work to the public not
                       being copies already in circulation;

              (iii)    to perform the work in             public,   or
                       communicate it to the public;

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008         Page No.47 of 132
               (iv)     to make any cinematograph film or sound
                       recording in respect of the work;

              (v)      to make any translation of the work;

              (vi)     to make any adaptation of the work;

              (vii)    to do, in relation to a translation or an
                       adaptation of the work, any of the acts
                       specified in relation to the work in sub
                       clauses (I) to (vi)

              (b)          In the case of a computer programme,-

              (i)      to do any of the acts specified in clause (a)

              (ii)     to sell or give on commercial rental or offer
                       for sale or for commercial rental any copy of
                       the computer programme

Provided that such commercial rental does not apply
in respect of computer programmes where the
programme itself is not the essential object of the
rental.]

(c) In the case of an artistic work,-

              (i)      to reproduce 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;

              (ii)     to communicate the work to the public;

              (iii)    to issue copies of the work to the public not
                       being copies already in circulation;

              (iv)     to include the work in any cinematograph
                       film;

              (v)      to make any adaptation of the work;

              (vi)     to do in relation to an adaptation of the work
                       any of the acts specified in relation to the
                       work in sub clauses (i) to (iv);

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008          Page No.48 of 132
               (d)          In the case of a cinematograph film-

               (i)     to make a copy of the film, including a
                       photograph of any image forming part
                       thereof;

              (ii)     to sell or give on hire, or offer for sale or
                       hire, any copy of the film, regardless of
                       whether such copy has been sold or given on
                       hire on earlier occasions;

              (iii)    to communicate the film to the public

              (e)          In the case of a sound recording-

               (i)     to make any            other     sound   recording
                       embodying it;

               (ii)    to sell or give on hire, or offer for sale or
                       hire, any copy of the sound recording
                       regardless of whether such copy has been
                       sold or given on hire on earlier occasions;

(iii) to communicate the sound recording to the
public

Explanation – For the purposes of this section, a
copy which has been sold once shall be deemed to
be a copy already in circulation.]”

“51. When copyright infringed – Copyright in a
work shall be deemed to be infringed –

(a) When any person, without a licence
granted by the owner of the Copyright or the
Registrar of Copyrights under this Act or in
contravention of the conditions of a licence so
granted or of any conditions imposed by a
competent authority under this Act-

(i) does anything, the exclusive right to do
which is by this Act conferred upon the
owner of the copyright, or

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.49 of 132

(ii) permits for profit any place to be used for the
communication of the work to the public
where such communication constitutes an
infringement of the copyright in the work,
unless he was not aware and had no
reasonable ground for believing that such
communication to the public would be an
infringement of copyright, or]

(b) When any person –

(i) makes for sale on hire, or sells or lets for
hire, or by way of trade displays or offers for
sale or hire, or

(ii) Distributes either for the purposes of trade or
to such an extent as to affect prejudicially the
owner of the copyright, or

(iii) By way of trade exhibits in public, or

(iv) Imports [***] into India, any infringing
copies of the work:

[Provided that nothing in sub-clause (iv) shall apply
to the import of one copy of any work, for the
private and domestic use of the importer.]

Explanation – For the purposes of this section, the
reproduction of a literary, dramatic, musical or
artistic work in the form of a cinematograph film
shall be deemed to be an “infringing copy”.

26. From the bare reading of the Section 51, it becomes apparent

that the infringement is, doing of any act by a person who is not

authorized by the owner, which the owner is conferred to do under the

provisions of the Act or permitting any place for profit for infringement of

the copyright is also an infringement under the Act. The said two

provisions are disjunctive in as much as that there shall be an

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infringement even if the acts are done which are of the owner or in the

alternative the acts of permitting any place for profit.

27. At this stage, it becomes relevant also to examine that the

wordings of Section 51 (a) (ii) which provide permitting “any place” for

profit. The use of the words “any place” would include common public

place or library or any other kind of place. The wordings do not put any

embargo of the kind of the place which is required to be permitted for

profit in order to establish an infringement. But rather the wordings used

in the sub section are “any place” so as to subsume physical place or

place at the internet or webspace. The reference is invited to the

provisions of UK Copyright Act, 1956 which are similar in nature to

Indian Copyright Act in this respect which brings more clarity on this

aspect. The said provisions are reproduced hereinafter:

“Section 5 (5) The copyright in a literary, dramatic or
musical work is also infringed by any person who permits a
place of public entertainment to be used for a performance
in public of the work, where the performance constitutes an
infringement of copyright in the work :

Provided that this sub section shall not apply in a case where
the person permitting the place to be so used –

a) was not aware, and had no reasonable grounds for
suspecting, that the performance would be an
infringement of copyright, or

b) gave the permission gratuitously or for a
consideration which was only nominal or (if more
than nominal) did not exceed reasonable estimate of

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.51 of 132
expenses to be incurred by him in consequence of the
use of the place for the performance.

(6) In this section “place of public entertainment”
includes any premises which are occupied mainly for other
purposes, but are from time to time made available for hire
to such persons as may desire to hire them for purposes of
public entertainment”

28. I am also comparing the provisions of UK Copyright Act,

1988 (CDPA) which has been passed in the year 1988 repealing the

earlier law. The said provisions are:

“Section 25 : Secondary Infringement:
permitting use of premises for infringing
performance.

(1) Where the copyright in a literary,
dramatic or musical work is infringed by a
performance at a place of public entertainment, any
person who gave permission for that place to be
used for the performance is also liable for the
infringement unless when he gave permission he
believed on reasonable grounds that the
performance would not infringe copyright.

(2) In this section “place of public
entertainment” includes premises which are
occupied mainly for other purposes but are from
time to time made available for hire for the
purposes of public entertainment.

Section 26 : Secondary Infringement: provision
of apparatus for infringing performance, etc

(1) Where copyright in a work is infringed by
a public performance of the work, or by the playing
or showing of the work in public, by means of
apparatus for –

                       (a)     playing sound recordings,

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008       Page No.52 of 132
                        (b)     showing films, or
                       (c)    receiving visual images or sounds
                              conveyed by electronic means, the
                              following persons are also liable for
                              the infringement.
               (2)       A person who supplied the apparatus, or any

substantial part of it, is liable for the infringement if when he
supplied the apparatus or part-

                       a)      he knew or had reason to believe that the
                               apparatus was likely to be so used as to
                               infringe copyright, or

                       b)      in the case of apparatus whose normal use
                               involves a public performance, playing or
                               showing, he did not believe on reasonable
                               grounds that it would not be so used as to
                               infringe copyright.

               (3)        An occupier of premises who gave permission for

the apparatus to be brought onto the premises is liable for
the infringement if when he gave permission he knew or had
reason to believe that the apparatus was likely to be so used
as to infringe copyright.

(4) A person who supplied a copy of sound recording
or film used to infringe copyright is liable for the
infringement if when he supplied it he knew or had reason to
believe that what he supplied, or a copy made directly or
indirectly from it, was likely to be so used as to infringe
copyright.”

29. By comparing the situation as exists in 1956 Act of UK and

1957 Act of India in the provisions, it becomes amply clear that the

wordings used in the Section of UK Act are “place of public

entertainment” but in Indian Act, the wordings used are “any place”

which reflects the intention of the legislature which is to provide a

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.53 of 132
provision for permissive infringement wherein it is not merely a place of

public entertainment which is included but any place wherein the

infringement is facilitated would be covered by the provision of the

Indian Copyright Act, 1957.

30. The situation becomes more clear as one further sees carefully

the later enactment of same nature in the UK CDPA Act of 1988 which

provides two kinds of infringements separately which are that the “place

of public entertainment” and “infringement caused by use of an

apparatus”. This fine distinction which is present in the later Act of UK is

not present in the Indian Act. This would demonstrate that UK legislature

was conscious about the kinds of the infringement which are going to be

caused in the light of the development in the technology and mere

provision of facilitating the infringement at public place of entertainment

would not sufficiently cover the protection and the apparatus

infringement must be provided separately under the separate head.

Therefore, in the light of the same, the provision relating to providing

means by way of apparatus is further introduced in addition to the already

existing provision which relates to infringement relates to place of public

entertainment in the 1988 Act.

31. In the sharp contrast, our Indian Act which has been amended

number of times i.e. in 1984, 1994, 1999 which although provided for

several crucial amendments including computer programmes as a subject

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.54 of 132
of copyright under the head of literary work but has not provided any

separate infringement by way of an apparatus under the separate head or

separately and the provision relates to the facilitating infringement is the

same as it stood in the 1957 Act. In absence of such amendment in the

Indian Act and in view of the loosely worded provision which is “any

place”, the same can be given a wider connotation so as to include the

place on the internet not confining it to place of entertainment but to

extend it to other places also.

32. It is now well settled that when there are new technological

inventions or change in circumstances which was not in contemplation at

the time when the statute was enacted, the said invention or technological

advancement may be included in the same enactment if they are falling

within the same genus provided in the existing enactment.

33. The reference in this respect is invited to the decision of

House of Lords in Comdel Commodities Ltd vs. Siporex Trade SA,

(1990) 2 All ER 552, wherein Lord Bridge has said “When a change in

social conditions produces a novel situation which was not in

contemplation at the time when a statute is first enacted, there can be no

a priori assumption that the enactment does not apply to the new

circumstances. If the language of the enactment is wide enough to extend

to those circumstances, there is no reason why it should not apply.”

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On the same principles, general words are construed as to

include new inventions and technological advances not known at the time

when the act was passed. The Photograph copy is held to be a copy

under the Engraving Copyright Act, 1734 in the case of Gambart v. Ball

(1863) 32 LJCP 166. Similarly telephone was not invented in 1869, even

then the telephone was held to be a telegraph under the provisions of

Telegraphs Act 1863 in the case of A.G. vs. Edison Telephone Co of

London (1880) 6 QBD 244 referred in The Senior Electric Inspector

vs. Laxminarayan Chopra & Ors., AIR 1962 SC 159.

34. More Recently Hon‟ble Supreme Court in State of

Maharashtra vs. Praful B Desai (Dr.), (2003) 4 SCC 601, has

accepted the evidence by way of video conferencing as a valid one where

the person being tried will satisfy the requirement of Section 273 of Code

of Criminal Procedure, 1973 when the technique of video conferencing

was not even developed.

35. In view of the same and also the fact that the provision

provides for permitting “any place” which itself is loosely worded and is

unfettered by any qualification, the said words “any place” have to be

construed widely so as to include the place at the webspace or internet in

order to give effect to the provision to be operative in cases of newer

kind of the infringements being caused at the webspace.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.56 of 132

36. This is more so, in the absence of the specific provision

relating to infringement by way of apparatus, the law in that situation

cannot remain static witnessing the infringements which can be otherwise

covered under the Act. The provisions which can conveniently cover the

said acts must also be interpreted to include those new acts to make the

provision workable for the newer kinds of infringement to the extent the

wordings permit so. Therefore, the wordings “any place” under Section

51 (a) (ii) of the Act includes the place at the webspace in order to cover

the infringements or the wrongs caused at the webspace.

37. The proposition which emerges from the above discussion is

that there is an express provision under the Act which prohibits a person

from permitting any place including webspace for profit unless the said

person is having no knowledge or reason to believe that the

communication of the work is infringing in nature.

38. There is, however, another way of approaching the similar

kind of proposition which is popularly known as infringement by way of

authorization. This is done by interpreting Section 51 (a) (i) read with

Section 14 of the Act. The said Sections are reproduced hereinafter:

“51. When copyright infringed – Copyright in a
work shall be deemed to be infringed –

(a) When any person, without a licence granted by
the owner of the Copyright or the Registrar of
Copyrights under this Act or in contravention of the
conditions of a licence so granted or of any

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.57 of 132
conditions imposed by a competent authority under
this Act-

(i) does anything, the exclusive right to do which is
by this Act conferred upon the owner of the
copyright, or……..”

“14. Meaning of copyright- For the purposes of this
Act, “copyright” means the exclusive right subject
to the provisions of this Act, to do or authorise the
doing of any of the following acts in respect of a
work or any substantial part thereof, namely :-

(a) In the case of a literary, dramatic or musical
work not being a computer programme,-……”

39. By reading these provisions together, it can be seen doing the

acts of owner of copyright without permission or licence amounts to

infringement. The acts of owner are defined under Section 14 which

include doing or authorize doing the acts. Thus, by virtue of conjoint

reading one can say that the infringement of copyright can also be in the

cases where there are acts of authorizing the infringement by anyone

without permission.

40. The said concept of authorizing the infringement has been

succinctly discussed by Copinger & Skone James on Copyright

(Fourteenth Edition by Kevin Garnett M.A., Jonathan R. James, MA.

LLB, Gillian Davies, Ph.D., 1999 Edition, London, Sweet & Maxwell),

who is an authority on the subject in the following words:

“7-151 Meaning of “authorize”, Authorization
means the grant or purported grant which may be
express or implied, of the right to do the act
complained of, whether the intention is that the

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grantee should do the act on his own account or
only on account of the grantor. An expression
which has been often used as equivalent to the
word “authorize” is “sanction, approve, or
countenance” but this must be treated with caution
particularly in so far as the word “countenance” is
equivalent to the word “condone”. Thus, in general
an authorization “can only come from someone
having or purporting to have authority and an act is
not authorized by someone who merely enables or
possibly assists or even encourages another to do
that act, but does not purport to have any authority
which he can grant to justify the doing of the act.”

41. It is noteworthy to mention that the said concept of

authorizing the infringement although looks akin to Section 51 (a) (ii) of

the Act but the said authorization does not coincide with the permitting

the place for profit. The concept of authorizing the infringement is rather

bigger and cannot be equated with merely facilitating the place for profit

which is the express provision of the law, which may be said to be one its

facets. The act of authorizing is something more than merely providing

means with knowledge and require further active participation of the

person than that of the permitting the place for infringement. This is due

to the reason that the grant of means to an infringement is different than

the granting the right to do the act of infringement.

41.1 Sometimes the infringement is not done directly but is done

indirectly by the authority of some person for instance where a person

handovers a pirated CD to a friend and also asks him to make number of

copies and sell them to the public on behalf of the former. In that

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.59 of 132
situation, the former is authorizing infringement which he is doing

through another person. Both are parties to an infringement due to their

direct or active involvement. In this example, the person retains his

control where he can say to his friend to do or not to do the same on his

behalf. Besides that, the former person also has knowledge about the

pirated nature of the CD which is also relevant. Thus, it is an

authorization and it is not merely providing a means for infringement but

rather more than the same which is doing the infringement along with the

co infringer or under the authority of a person.

41.2 The act of authorizing infringement is premised on the

concept of joint tort feasors wherein the person is held liable for

commission of equal wrong when there is apparent clear establishment of

his involvement in the wrong along with the other person committing the

same. The active participation, inducement, approval or countenance, are

thus necessary ingredients of authorization may not be sine qua non for

the establishment of permission of place for profit. The knowledge of the

fact that the acts are going to be infringing is again different from the

active participation or any kind of inducement.

41.3 The knowledge is the starting point for authorization which is

going to be established unless the clear active participation or reasonable

degree of control is proved besides knowledge. But on the other hand the

same may not be true with permitting the place for profit wherein there is

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.60 of 132
only knowledge which is sufficient and the further state of affairs may

remain irrelevant. Therefore, the onus of proof for establishing the

authorization is more onerous than that of the establishing facilitation for

profit.

41.4 This distinction between the two concepts is necessary in

order to better comprehend the subject which will make the evaluation of

arguments raised by the parties easier.

42. Now, I shall deal with the contentions of the parties raised by

them relating to the authorization and the applicability of Section 51 (a)

(ii) of the Act.

43. It is the contention of learned counsel for the plaintiff that the

acts of providing the space over the internet and thereafter continuously

doing the same ever after coming to know about the plaintiff‟s

proprietary interests amounts to authorization as the defendants are aware

that the said space is going to be used for infringement purposes. As per

the learned counsel, the said acts become authorization as the defendants

retain the control and power to further distribute or communicate the

work to the public. The said thing is done by the defendants with

knowledge coupled with that of its own participation wherein it is

offering the works of the plaintiff to the public at large by enlisting the

works of the defendants in their search engine in such a way that when

someone types the name of a song or a movie, the same is easily

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available on the search results. Mr. Sibal has narrated the factors by

which the defendants are authorizing the infringement which can be

enumerated as under:

a) The defendants provide a search facility which enables anyone

who visits its website to locate audio-visual or audio files

amongst those uploaded by other users, which files are copied

by the defendants and stored on their servers.

b) The defendants prescribe the terms of use which must

necessarily be subscribed to by a User for becoming a

defendants‟ User.

c) A person has to necessarily be a registered User with the

defendant/MySpace to use the uploading facility (which

ultimately leads to infringement).

d) MySpace /defendant can without anybody‟s approval reject,

refuse to post or delete any content for any or no reason

uploaded on its website.

e) Defendants take license from the User for the content

uploaded and can modify, delete from and add to the said

content.

All these factors as per Mr. Sibal are evidence of the degree

of control which the defendants can exercise and thus, the authorization

gets established once the defendants are found to be controlling the

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infringing activities and has its say in preventing them or controlling

them.

44. Mr. Sibal has also made submissions that the said acts

amounts to infringement as per the provision of Section 51 (a) (ii) of the

Act due to aforesaid reasons.

45. On the other hand, Mr. Kumar resisted the same by stating

that neither the said acts are authorization and nor the same are falling

under Section 51 (a) (ii) due to the following reasons:

a) The defendants are having no control over the works which are

uploaded on the websites everyday and thus they are no privy to

any such works which are infringing in nature.

b) The defendants are not having any knowledge about which are the

works which are infringing or non infringing. It is only subsequent

to uploading and thereafter when the proprietor brings it to their

notice, it becomes clear that the works are infringing in nature.

Therefore, once it is without knowledge coupled by no control

over the works, the defendants cannot be held liable for

infringement.

c) The defendants have cited the safe harbor provisions of US law

and lot of cases decided under English law (which has been

commented on later in the judgment as at this stage, the issue of

infringement is decided).

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d) It is well established, that merely providing means for doing the

acts which may be infringing, the person cannot be held liable for

authorization and therefore, the defendants in the absence of clear

establishment of its role in doing or promoting the infringement

cannot be held liable for infringement.

e) There are several measures or safeguards like notice and turn

down and many more are already undertaken by the defendants

and therefore, the defendants are not infringers.

46. I have examined the submissions of the parties carefully and

have gone through the plaint, written statement and documents filed by

the parties and after doing so, I am of the opinion that the acts of

defendants of providing the space on internet or webspace for profit are

prima facie infringing in nature. The reasons for my prima facie

observations can be discussed as follows:

a) Firstly, it would be wise to reiterate three proposition which I have

already discussed earlier.

 The provision of Section 51 (a) (i) and Section 51 (a) (ii)

of the Act are disjunctive in nature in as much as the word

“or” between the two makes it clear that even on

satisfaction of one provision, there would be an

infringement of copyright.

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 The infringement by way of authorization would fall within

Section 51 (a) (1) read with Section 14 of the Act as

against the act of permitting the place for profit which is

separately provided under Section 51(a) (ii) of the Act.

 There is a distinction between the concept of authorization

as well as the concept of permitting the place for profit and

the essential ingredients for establishing the same are also

different.

Keeping these three propositions in mind, I have no hesitation to

state that the acts of the defendants whereby they are offering the space

over the internet, getting the works uploaded through users, thereafter

saving in their own database with the limited licence to add, amend, or

delete the content and thereafter communicating the said work to the

public by providing some advertisements alongside the work or in the

alternative gaining advertisements or sponsorships on the said basis

thereafter would prima facie tantamounts to permitting the place for profit

for infringement as envisaged under Section 51 (a) (ii) of the Act.

b) The said acts of the defendants are certainly falling within the

realm of an infringement under Section 51(a) (ii) of the Act. This is

due to the reason that the defendants are permitting the place

which is place at webspace to the users at large. The said place is

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not for the profit of the users only but also for the private profits or

gains of the defendants. The defendants do not dispute that they

are running the advertisement but their stand is that some

advertisements are automatically appearing due to the search

engines or key words which are typed by the users. The defendants

although state that they are not advertising anything or earning

anything due to the same. But, I am afraid that it is not the truth,

the advertisements which are attached to movie clips or are

displayed prior to the starting of the clip or after the movie clip is

ended, are not the user provided or automatically emerging ones

but are sponsored. There are third kind of advertisements which

are displayed till the time work is being downloaded on the

website and is ready to play, the said advertisements keep the user

busy uptil the user reaches the definite target which is intended

movie song or movie clips. All this happens only when the

defendants permit this to happen and to the advantage of the

defendants. Thus, the defendants are certainly earning profits or

gains and not doing anything mistakenly or bonafidely without

notice as contended by them. There is certainly complete element

of commerce attached to it to increase the bandwidth of the

users/customers and sponsorship and/or adds. Thus, the defendants

are permitting the place for profit.

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47. Now, the submission of the defendants that their acts are

without knowledge or no reasonable belief of infringement are, therefore,

would not fall within the Section 51 (a) (ii) but would be protected by the

later part of the Section is also meritless. It is also not difficult now to

answer the question of knowledge or reasonable belief which can be

immediately discerned due to following factual situations:

 Firstly, the defendants are themselves providing the

safeguards in the event of the infringing activities being

carried upon their website which means that the

defendants have atleast reasonable apprehension or belief

that the acts which are being carried on the website may

infringe someone else‟s copyright including the plaintiff.

The defendants could immediately turn and say

that the said provisions are made to prevent the

infringement as per the international laws more

specifically Digital Millennium Copyright Act (“DMCA”)

of US. However, the said fact does not preclude this court

from drawing any inference as to the reasonable belief of

the defendants that the activities upon their website are

infringing in nature. Perhaps the legislature in US is more

conscious of these frequent infringements on the internet

and that is the reason it has enacted the special Act for

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these purposes for providing curative measures and

thereby giving such acts a legitimate effect by balancing

the two interests one of internet infringer and another of

the proprietor by providing that the post infringement

curative measures as sufficient safeguards for the

purposes of infringement and protecting any such

infringement liability . But the same may not be legal in

the Indian scenario absenting such situation. Therefore,

this Court can infer the reasonable amount of knowledge

by the defendants about the infringing nature of the acts

which are going to be carried on the defendants‟ website

when the defendants on their own provide with these

measures. Certainly, there is a reasonable belief by the

defendants that the acts are infringing in nature.

 Secondly, the reasonable belief or knowledge specifically

to that of the plaintiff works is also present in this case.

This is due to the reason that the plaintiff has already

notified its company name and lists of the titles owned by

it. The defendants have also been dealing with the

plaintiff prior to the institution of the suit. Thus, the

defendants cannot be said to be totally oblivious to the

fact that the Bollywood songs which are going to be

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.68 of 132
uploaded on their website may not belong to the plaintiff.

Rather the defendants on its own states that while

launching India centric operations, the defendants have

informed all the music companies about their tools.

Furthermore, when the defendants have been notified

time and again by the plaintiff about updated works and

the defendants are hard pressed to remove those contents.

In these circumstances, the defendants‟ stand at this stage

that they are totally unaware of the situation is not

correct. There is complete knowledge to the defendants

of the infringing nature of acts which are going to be

carried on their website and rather it would not be out of

place to say that the defendants are also aware that the

plaintiff‟s works are available on the website which are

infringing in nature.

 Thirdly, the knowledge and reasonable belief for

infringement to the defendants can be seen when one

examines the mechanism of working of the defendants.

The defendants take the limited licence to amend or

delete or modify the works suitably from the user. This

itself makes it evident that before uploading on the

website or making it available on the website, the works

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.69 of 132
in question go into the servers or the computers of the

defendants where the programmers modify the said

contents or amend the said contents suitably. Rather the

said modification also goes to the extent of adding

advertisements prior to the clips or after the clips

embellishing them, adding logos of the companies.

All this is nothing but knowledge about the content

what the defendants are displaying, showing, exhibiting.

Thus, the defendants‟ stand that they are totally unaware

at the time of uploading what is going on and they should

be protected being unconnected with anyone is also ex-

facie bad. On the contrary at the time of uploading and

till the time the said work is made available to the public

on search engine form by the defendants, there are

sufficient steps including modification (which has a

major role) wherein the knowledge of the defendants can

be seen.

 Fourthly, the knowledge and reasonable belief of

infringement is also apparent on behalf of the defendants

when the defendants‟ indulge into India centric

operation as contended by the plaintiff. It is also stated

that the defendants have whole office dedicated to Indian

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.70 of 132
works which caters the Indian consumers. The

modifications of the works, India centric offices or

operations, adding advertisements of the same language,

seeking licences from users to modify or alter the works,

informing the major copyright owners about its tool

anticipating actions by them or preventing need for

licences, all these makes the knowledge more apparent

on the face of the record.

Thus, clearly due to complete satisfaction of the

provision of Section 51 (a) (ii), the acts of defendants are

prima facie infringing in nature, which are violative of

Section 51 (a) (ii) of the Act.

48. So far as the act of authorization is concerned, The said act

requires sanction, approval or countenance which are the wordings used

in English Judgments which are more than the mere act of knowledge. I

have already distinguished the authorization which would fall within

Section 51 (a) (i) from that Section 51 (a) (ii) of the Act which expressly

provides knowledge or reasonable belief as only tests for satisfaction. I

shall now examine and test the acts of defendants on the principles of

authorization.

The principles for satisfaction of authorization are laid down

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in various cases which are cited at bar. However, for the sake of brevity

the same can be culled out as follows:

1. The authorization requires countenance or sanction or

approval from that of the person authorizing the said act.

This means that the said action of sanction or approval

requires more to be shown than mere knowledge ( Kindly

see C.B.S. Inc. & C.B.S. United Kingdom v. Ames

Records & Tapes Limited; (1981) RPC 407 (decided on

13th February, 1981) where court used sanction and

approval as the test).

2. The authorization has to be targeted to the identified

persons so that the clear case is made out. (Although

Copinger(Supra) differs from this view).

3. The authorization requires that the person must have the

authority to permit the infringement in as much as the

person giving the authorization must retain a control over

the subject matter in order to call it as authorization.

(Kindly see C.B.S. Songs Limited & Others vs. Amstrad

Consumer Electronics Plc. & Another (House of Lords),

(1988) RPC 567)

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.72 of 132

4. Merely providing means for infringement does not

establish control and therefore the person cannot be said to

have approved or countenanced such act.

49. Broadly English Courts have tested all the cases on these very

principles while attributing the liability over the infringers or in

alternative rejecting the case of infringement. Mostly, in cases relating to

newer means like tape recorder or in the cases of jukebox which are mere

means for providing recordings of songs, the courts in England or

common law have rejected the claims of infringement on the ground that

these are merely new means for recording and nothing more unless the

participation of providing the means must be shown towards the

infringement. Let me now examine the acts of the defendants on these

principles.

50. It was the contention of the defendants that no clear

establishment of their involvement is made out as the portal of the

defendants is such wherein every day there is much of data which is

being uploaded and thus the defendants could not be held liable for

authorization.

Further, it has been said on behalf of the defendants that the

defendants are themselves cautious by putting notices on the internet by

calling upon to users not to upload infringing contents. It is also said that

the defendants are providing notice and turn down features which shows

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that the said acts are not emanating from the defendants. It is not the

defendants who are promoting those acts.

51. I have gone through the rival submissions of the parties.

While testing the acts of the defendants on the threshold principles

available under the common law, the doubts can be expressed at the

prima facie stage whether the plaintiff has completely discharged its onus

of proving as to whether the acts of communicating the musical works,

sound recordings are actuated by the countenance, approval or not. Mr.

Sibal has taken pains to inform this court that there is an element of

control which has been exercised by the defendants. However, I am not

fully satisfied whether the said factors enumerated by the Mr. Sibal

would sufficiently establish at this prima facie stage such degree of

control by the defendants which can also be called as approval or

countenance or sanctioning. No doubt, I have arrived at the prima facie

view that there is knowledge which is clearly present at this stage

wherein the defendants are aware what they are communicating. But the

act of approval or sanction requires, the defendants‟ participation,

exercise of control besides knowledge which I feel is a question which

can determined only at the time of trial as at this stage it is not clearly

emerging from the documents as to the state of affairs after the

knowledge which may be relevant for establishing the authorization .

This is also more so because the approval or sanction is required to be

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established particularly towards the present acts of infringement which is

difficult to comment upon at this stage.

52. In addition to the above, one more thing which needs to be

considered is that the defendants plead that the acts of the defendants are

not authorization, to which I have already answered the same at this

stage. However, once the plaintiff informs about the works owned by it

to the defendants, the said defendants thereafter attain knowledge not

only of the means to be used for infringement but also the knowledge

about the rights of the plaintiff. The necessary consequence which

follows from the same is that once the defendants are put to notice about

the rights of the plaintiff in relation to the particular works, thereafter the

defendants cannot continue to do the said acts in relation to the works for

which the details have been provided without the permission of the

plaintiff. In that event, the defendants after putting to notice immediately

steps into the shoes of the ordinary infringer under Section 51 (a) (i) of

the Act who is aware of the rights of the plaintiff (copyright owner) and

then the question of authorization becomes irrelevant and the acts are to

be adjudged from the standpoint of ordinary infringement.

53. The defendants have already stated in the written statement

that the arrangement done by the Division Bench is the possible solution

to this proposition arising in the present case. The defendants‟ counsel

has also stated that he would have no objection if the order passed by the

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.75 of 132
Division Bench is continued. Thus, the defendant‟s acts are infringing in

violation of Section 51 (a) (i) of the Act once the defendants are put to

notice about the plaintiff rights in the respective works and in the event

the defendants do not turn down the same or allow the repetition to

happen.

54. In these circumstances, I am of the view that though the acts

of the defendants are prima facie infringing in view of the satisfaction of

provision of Section 51 (a) (ii) of the Act but the question of the

authorization requires further proof of participation which has to be

tested at the time of trial. Nevertheless, the defendants are infringing the

plaintiff‟s work as their acts are falling within the alternative or

disjunctive requirement for infringement under Section 51 (a) (ii) of the

Act. Further, the defendants‟ act may become infringing if the defendants

do not turn down or allow the repeated uploads to happen after put to the

notice about the plaintiff‟s rights in the said works.

Re: Jurisdiction

55. Now I shall deal with other submissions of the parties point

wise including the issue relating to jurisdiction. At the threshold, I would

like to state that I have held that this court has the jurisdiction and

therefore proceeded to decide the aspect of copyright infringement first. I

shall now discuss the reasons for arriving at the conclusion that this Court

has necessary territorial jurisdiction which are as under:

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55.1 Firstly, the present case relates to infringement of copyright

wherein the remedies are conferred under the special statute. The said

suit for infringement of copyright can be filed and initiated at the place

wherein the plaintiff carries on business, or personally works for gain etc.

This is by virtue of non obstante clause provided under Section 62 (2) of

the Act which reads as under:

“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), a “district
court having jurisdiction” shall notwithstanding
anything contained in the Code of Civil Procedure,
1908 (5 of 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 personal works for gain.”

55.2 By mere reading of the provision of Section 62(2) of the Act,

it becomes amply clear that the suit for infringement can be filed at the

forum where the plaintiff resides or carries on business. The opening

words of the provision provides “Notwithstanding anything contained in

the code of civil procedure” which means that the said provision will

operate in addition to what has be provided in the Code of Civil

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.77 of 132
procedure. Thus, the said provision enables the suit to be filed at the

place of the plaintiff which is the additional ground for attracting the

jurisdiction of the court.

55.3 This question is no longer res integra and put to rest by the

Supreme Court while examining the said provision in the case of Exphar

SA & Anr vs Eupharma Laboratories Ltd. & Anr, (2004) 3 SCC 688

wherein the Hon‟ble Court observed.

“It is, therefore, clear that the object and reason for
the introduction of sub-section (2) of Section 62
was not to restrict the owners of the copyright to
exercise their rights but to remove any impediment
from their doing so. Section 62(2) cannot be read as
limiting the jurisdiction of the District Court only to
cases where 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 presently works
for gain. It prescribes an additional ground for
attracting the jurisdiction of a Court over and above
the ‘normal’ grounds as laid down in Section 20 of
the Code.”

Therefore, the plaintiff while it has initiated the said suit at the

forum where it is carrying on business has rightly initiated the suit in

compliance of the provision of Section 62(2) of the Act which is the

additional ground for attracting the jurisdiction. In these circumstances,

by operation of non-obstance clause, the principles relating to defendants

carrying on business or part of cause of action or subject matter becomes

irrelevant as the present case falls under the special provisions prescribed

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.78 of 132
in the special statute. The said provisions under Section 62 are in addition

to and not in derogation or conflict with the general law as envisaged in

the Code of Civil Procedure. Thus, the recourse of the defendants‟

counsel in relation to the principles of general law is misplaced.

55.4 The personal amenability of the defendants are therefore, not

relevant in case of suit for infringement wherein the jurisdiction is sought

to be invoked by way of provisions of the special enactment when it

provides for non obstante clause. The said non obstante clause thus

operate to its full extent and it cannot be said that there is a separate

question of personal amenability of the defendants to be in the forum

state which is still to be considered.

55.5 It is true that that to sue a foreign defendant in this country,

the foreigner either must be resident and or carry on business within the

jurisdiction of forum court. These are the principles applicable in private

International law. The only exception is if such party submits to the

jurisdiction. However the operation of this rule is not absolute but is

subject to the municipal law.

55.6 It is now well settled that when the municipal law provides

otherwise or overrides the private international law, then the municipal

law prevails over and above the principles of private international law.

The said principle has been comprehensively decided by Karnataka High

Court in Airbus Industries Vs. Laura Howell Linton, ILR 1994 KAR

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1370 wherein the Court has stated that even the provisions of Section 20

(c) of the Code of Civil Procedure which provides cause of action wholly

or in part overrides the private international law.

The Madras High Court in Swaminathan v. Somasundaram

AIR 1938 Mad 731 in considering whether the Indian Courts have

jurisdiction over non-resident foreigners, it was held that even with

respect to non-resident foreigners, the Courts in British India have

jurisdiction in personam in suits based upon a cause of action arising in

British India.)

55.7 Thus, in the present case also even assuming that the rules of

private international law may have any role to play, the same stands

overridden by the express provision of the special act which is Copyright

Act, 1957 which speaks otherwise and entitles the plaintiff to sue at the

place of its own forum.

55.8 Secondly, the argument was advanced by the defendants

about the commission of torts outside India. The said argument is also

rejected as meritless. The commission of tort in the present case is in

India. The website of the defendants is one which is engaged in the

online business of providing and exhibiting the songs and cinematograph

films worldwide including India. The said website is usually accessed by

Indians for downloading the songs of upcoming movies from the website

of the defendants. The plaintiff has substantiated the cause of action by

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showing some instances of infringements which has been caused in

relation to the specific works. Thus, the said commission of the tort has

occurred or occurs in India wherein the Indian user goes to the website,

the defendants through its search engine exhibits the said works and the

work is communicated to the public by sending the work to him and

facilitating downloading or reaching to the computer of Indian user.

Similarly, conversely, when the Indian user shares the infringing work

with the defendants‟ website which goes into the servers of the

defendants and saved there after the uploading. The said actions are

sufficient to constitute part of cause of action under Section 20 (c) of the

Code of Civil Procedure.

55.9 In the first case, the tort or civil wrong is caused in India as

the aspect of downloading to the computer has been occurred in India

when the said work is communicated to Indian users without the

permission of the plaintiff. In the second case too, the initiation of the tort

or part of the same has occurred in India as the infringing work without

the authority of the plaintiff is communicated to the defendants with a

limited licence to further modify and communicate further. The said

commission of the acts or the part of the overt acts constitutes the part of

cause of action within the meaning of Section 20 (c) of the Code of Civil

Procedure.

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55.10 Section 20 (c) of the Code confers jurisdiction where the

cause of action wholly or in part arises. Thus, the court where the part of

cause of action will arise would have the jurisdiction to entertain and try

the proceeding like in the present case. So seeing from any standpoint be

from special act or general code of civil procedure, this court has

necessary territorial jurisdiction to entertain and try the proceedings.

However, the discussion to Section 20 (c) of the Code becomes merely

academic as the special act itself confers jurisdiction on this court by

operation of non obstante clause. Still, I have deemed it fit to discuss the

same in view of the categorical objections raised by the defendants on

jurisdiction.

55.11 Thirdly, the reliance of the judgment of the Division Bench in

Banyan Tree (Supra) is equally misplaced by the defendants and thus

does not aid the case of the defendants at all.

55.12 It is a well settled principles the judgment is an authority of

what it decides and not for the proposition which can be logically

deduced therefrom. [The said proposition has been laid down by the

Supreme Court in Bharat Forge Co. Ltd. v. Utam Manohar Nakate

(2005) I LLJ 738 SC ; M.P. Gopalakrishnan Nair and Anr. vs. State

of Kerala & Ors.: AIR 2005 SC2053]

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55.13. In Banyan Tree (Supra), the Hon‟ble Division Bench has

rightly reframed the issue in the following manner:

“For the purposes of a passing-off action, or an
infringement action where the plaintiff is not
carrying on business within the jurisdiction of a
court, in what circumstances can it be said that the
hosting of a universally accessible web-site by the
defendants lends jurisdiction to such court where
such suit is filed (“the forum state”)?

56. By mere reading of the question answered by the Hon‟ble

Division Bench, it becomes patently clear that the Hon‟ble Division

Bench was concerned with the question wherein a passing off action,

whether the jurisdiction of the court can be conferred by way of website

operation of the defendants or not, or the case of infringement where the

plaintiff is not carrying on business within the territorial jurisdiction of

the court. The apparent distinguishing features which make Banyan tree

case inapposite to the present case are outlined as under:

a) Firstly, the case of Banyan Tree (Supra) was a case of passing off,

however, the present case is a case of infringement wherein

plaintiff invokes the jurisdiction on the basis of carrying on his

business at the forum court. It needs no further mention that it is

now well settled that the tests of conferring jurisdiction on the

court in the case of the passing off and the infringement are totally

different. Whereas, the jurisdiction in infringement cases is

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governed by the provisions of special act like Section 62(2) of the

Copyright Act. On the other hand, in the passing off cases, it is

governed by the ordinary law of civil procedure. Thus, the case of

plaintiff carrying on business or working for gain which is a

relevant and significant consideration in the present case in view of

operation of special statute was absent in the case of Banyan Tree

(Supra) and that was the sole reason the court had difficulty in

assuming the jurisdiction in Banyan Tree (Supra) which lead to

referral to division Bench for the question to be answered.

b) Secondly, The Division Bench in Banyan Tree (Supra) also

observed that if the case of Banyan Tree (Supra) would have been

of infringement, then the court would have had jurisdiction and the

special provisions of Section 62(2) of Copyright Act, 1957 as well

as Section 134(2) of the Trade Marks Act are those of the kinds of

the long arm provisions in the limited sense. The relevant excerpt

from the Banyan Tree (Supra) dicta is reproduced hereinafter:

“8. At the outset it needs to be noted that the present
suit is not one for infringement by the defendants of the
Plaintiff‟s trademark and the Plaintiff carries on
business within the jurisdiction of the court. If it were,
then in terms of Section 134 (2) of the Trademarks Act
1999 (TM Act) this court would have jurisdiction to
entertain the suit although the defendants do not reside
or carry on business within its jurisdiction. Section 134
(2) of the TM Act (like and Section 62 (2) of the
Copyright Act, 1957) is therefore a „long arm‟

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provision in a limited sense, confined to infringement
actions by Plaintiffs carrying on business within the
jurisdiction of the forum court. The present suit is an
action for passing off in which neither the Plaintiff nor
any of the defendants voluntarily resides or carries on
business within the local limits of Delhi. Consequently,
neither Section 20 (a) nor Section 20(b) CPC applies.
The Plaintiff seeks to find the territorial jurisdiction of
this Court in terms of Section 20(c) CPC. In other
words, according to the Plaintiff the cause of action,
wholly or in part, arises within the jurisdiction of this
Court. This, according to the Plaintiff is on account of
two factors. One, that the website of the defendants is
accessible in Delhi; it is not a passive website but used
for soliciting business in Delhi. Second, that there was
at least one instance of the defendants‟ brochure being
sent to a Delhi resident for the purposes of sale of
property.”

Thus, the said distinction and the caveat expressed by the

Division Bench itself is sufficient to exclude the present case from

that of the operation of Banyan Tree Judgment as it stands a good

law which it decides and cannot be extended to infringement cases

which are governed by special provisions.

c) Thirdly, assuming that the judgment of Banyan Tree (Supra) may

be applied to the present case, even then the difference in the

factual matrix further takes out the present case from the

application of the said dicta. This is due to the reason in Banyan

Tree’s case (supra), the court was concerned with the hotel

services wherein there was tendency of booking online in the hotel

from every place and thus the mere act of booking cannot be held

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.85 of 132
to clothe jurisdiction on this court unless it forms a part of cause of

action in the case whereas in the present case concerns with the

activities of the defendants which are primarily web based which

are interactive due to media presence, downloading, uploading and

nothing else. The court propounded doctrine of purposeful

availment in Banyan Tree’s case (supra) to show the nexus of the

transaction with cause of action in the suit. In the sharp

contradistinction to the same, the defendants in the present case

are offering to show and communicating the Indian works to the

Indian public with the interactive media inside and the user is able

to view the same online, download it and use it and further

communicate to public. The plaintiff has also substantiated the

same by providing download of the sample infringement which are

also forming part of cause of action. Thus, there is sufficient

interactivity in the website which is aiming at the Indian users and

shows nexus with the complaint with the suit where the plaintiff is

directly aggrieved. The present case would be therefore, different

from the case of Trade Mark infringement wherein some online

transaction or a trap order is shown to clothe cause of action for

the purposes of invoking jurisdiction.

The present case relates to complaints arising directly out of

the online acts and thus cannot be rejected on the counts of

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unconnected cause of action. Therefore, the Banyan Tree’s case

(supra) is inapplicable in the present case and rather if the tests laid

down in the same are applied, the present case sufficiently

qualifies the tests of Banyan Tree (Supra).

57. Hence, for all these aforesaid reasons, this court will have

jurisdiction to entertain and try the proceeding.

58. The related argument as to jurisdiction was also raised by the

learned counsel for the defendants that this Court cannot exercise the

extra territorial jurisdiction as assuming jurisdiction would in this case

would mean exercising extra territorial jurisdiction. The said argument is

rejected as baseless and the reasons for variance are outlined as under:

a) Firstly, this Court has already arrived at the finding that the court

has assumed the jurisdiction on the basis of the part of cause of

action which has arisen in India and the infringement is being

caused in India. Thus, this court would have jurisdiction to

entertain and try the proceedings for infringements which has been

caused in India.

b) Secondly it is merely the apprehension of the defendants that there

will be some effect of extra territorial for which this court is not

concerned, it is neither the case of the plaintiff to give this as an

extra territorial effect and nor this court is giving any such effect as

contended by the defendants. Rather, the court is exercising the

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jurisdiction on the basis of the law of the land which is Copyright

Act of India, 1957.

c) Thirdly, it has already been observed that the commission of tort of

infringement has occurred in India which is prima facie infringing

in nature, the said acts are prohibited under the Copyright Act and

thus this court is proceeding to do what is permissible under the

law. This court is not concerned with any incidental effects which

the defendants are apprehensive of due to the exercise of the

jurisdiction of the Court and that cannot come in the way of

exercise of jurisdiction of this Court.

d) There are lots of cases cited on Article 245 of the Indian

Constitution wherein it has been observed about the parliamentary

power to enact the extra territorial laws. The said reliance of

judgments is equally misplaced as in the present case, this court is

not concerned with the legislative competence of the any extra

territorial laws. The said judgments are not applicable to the

present case as the court is exercising the jurisdiction on the basis

of Indian law having force in India and thus the concerns are mere

apprehensions of the defendants which this court cannot take care

of.

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PROBABLE EFFECT OF AMENDMENTS UNDER THE IT ACT
2000 (AS AMENDED ON 2009) ON THE REMEDIES
PRESCRIBED UNDER COPYRIGHT ACT 1957.

59. Now I shall discuss another aspect of impact of the amended

provisions of Information Technology Act 2000 on the provisions of the

Copyright Act inturn on the present case as it is the defendants‟

contention that the provisions of IT Act relates to internet related wrongs

and thus their acts are protected under the IT laws of India.

60. The submission has been advanced by the defendants that the

amendments made in 2009 in the IT Act, 2000 will have great impact on

the satisfaction of this Court for the purposes of grant or non grant of the

injunction against the defendants. The relevant sections of amended Act

relied upon by the defendants which according to the defendants will

enable the defendants to escape the liability of infringement are

reproduced hereinafter:

“Section 79 of IT Act, 2000 reads as under :

“Exemption from liability of intermediary in
certain cases –

(1) Notwithstanding anything contained in any law
for the time being in force but subject to the
provisions of sub-sections (2) and (3), an
intermediary shall not be liable for any third party
information, data, or communication link made
available or hosted by him.

(2) The provisions of sub-section (1) shall apply
if –

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(a) the function of the intermediary is limited to
providing access to a communication system
over which information made available by third
parties is transmitted or temporarily stored or
hosted; or

(b) the intermediary does not –

(i) initiate the transmission,

(ii) select the receiver of the transmission, and

(iii) select or modify the information contained
in the transmission;

(c) The intermediary observes due diligence while
discharging his duties under this Act and also
observes such other guidelines as the Central
Government may prescribe in this behalf.

(3) The provisions of sub-section (1) shall not apply
if –

(a) the intermediary has conspired or abetted or
aided or induced, whether by threats or promise
or otherwise in the commission of the unlawful
act;

(b) upon receiving actual knowledge, or on being
notified by the appropriate Government or its
agency that any information, data or
communication link residing in or connected to
a computer resource, controlled by the
intermediary is being used to commit the
unlawful act, the intermediary fails to
expeditiously remove or disable access to that
material or that resource without vitiating the
evidence in any manner.

Explanation: For the purposes of this
section, the expression “third party information”
means any information dealt with by an
intermediary in his capacity as an intermediary.”

Section 81 of IT Act, 2000 reads as under :

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Act to have overriding effect.- The provisions of
this Act shall have effect notwithstanding anything
inconsistent therewith contained in any other law
for the time being in force.

[Provided that nothing contained in this Act shall
restrict any person from exercising any right
conferred under the Copyright Act, 1957 (14 of
1957) or the Patents Act, 1970 (39 of 1970)].”

Section 2(w) of the IT Act defines intermediary as :

“Intermediary” with respect to any particular electronic records, means

any person who on behalf of another person receives, stores or transmits

that record or provides any service with respect to that record and

includes telecom service providers, network service providers, internet

service providers, web hosting service providers, search engines, online

payment sites, online-auction sites, online market places and cyber cafes.

61. The submission advanced by the learned counsel for the

defendants is that the acts of the defendants are protected under Section

79 of the Act even if this court is not convinced by the argument of safe

harbor provisions of the Digitial Millenium Act of US as the provision

saves the liability of the intermediaries like the defendants. Thus, the

defendant‟s acts of providing means of infringement and all other acts

communicating the works to the public are mitigated by way of operation

of Section 79 of Information Technology Act, 2000 ( as Amended on

2009). The provision according to the defendants‟ counsel is non

obstante clause and thus will override the other acts.

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62. Per contra, learned counsel Mr. Sibal has advanced the

argument that the provision of Section 79 of Information Technology Act,

2000 cannot be read in isolation and has to be read along with Section 81

which provides for the overriding effect of the Act. The said provisions

also enacts the proviso which is also inserted by way of amendment

which states that nothing contained in this Act shall restrict any person

from exercising any right conferred under the Copyright Act, 1957 or the

Patent Act, 1970. Thus, as per Mr. Sibal, the IT Act may override any

other law, but by way of operation of the proviso to Section 81, the rights

of the copyright owner cannot be curtailed by applying any other

provision of the IT Act.

63. I find that the provisions of Section 79 of the IT Act will have

no bearing on the liability of infringement on the defendants due to the

reasons entailed hereinafter:

a) Firstly, I find merit in the submission of Mr. Sibal that conjoint

reading of Section 79 and Section 81 makes it amply clear that the

proviso to Section 81 prevents any provisions of IT Act to act as

restriction on exercising of the rights by the copyright owner. This

makes it clear when read the Section 81 which provides for the

overriding effect of the IT act over other laws.

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The proviso appended to the said section provides that

nothing contained in this act shall restrict the exercising of right by

any person under the Copyright Act. The said proviso carves out

an exception to the main enactment which is under the head of

overriding effect of the IT Act.

64. The scope and ambit of the proviso to the enactment has been

succinctly discussed by the Apex Court in State of Rajasthan v. Leela

Jain (1965) 1 SCR 276, wherein the Apex court has held :

“So far as a general principle of construction of a
proviso is concerned, it has been broadly stated that
the function of a proviso is to limit the main part of
the section and carve out something which but for
the proviso would have been within the operative
part.”

64.1 In the case of Sales Tax Officer, Circle I, Jabalpur v.

Hanuman Prasad : [1967]1SCR831 , Hon‟ble Bhargava, J. observed :

“It is well-recognised that a proviso is added to a
principal clause primarily with the object of taking
out of the scope of that principal clause what is
included in it and what the legislature desires
should be excluded.”

64.2 Thus, the combine effect of reading Section 81 and the

proviso is that the provisions of IT act may override other laws for the

time being in force but the cannot restrict the rights of the owner under

the Copyright Act and the Patent Act. In other words, the rights of the

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owners under the Copyright Act, 1957 and/ or Patent Act, 1970 shall

remain unfettered by any of the provisions of IT Act.

64.3 Accordingly, Section 79 cannot restrict the rights of the

copyright owner by saving the liability of the defendants of the infringing

acts caused under the provisions of Section 51 (a) (ii) of the Act by

operation of proviso to Section 81 of the Act.

b) Secondly, I am also doubtful that even if the provision of Section

79 of the IT Act is applied to the present case, whether the

defendants qualifies to get the benefit of the same under the IT Act.

This is due to the reason that Section 79 although is a non obstante

clause but is subject to Section 79 (2) and Section 79 (3) which

provides the conditions of applicability and non applicability of the

Section.

The said Section 79 (2) (a) states that the Section will apply if

the function of the intermediary is limited to providing access to a

communication system over which information made available by

third parties is transmitted or temporarily stored or hosted; or

(b) the intermediary does not –

(i) initiate the transmission,

(ii) select the receiver of the transmission, and

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(iii) select or modify the information contained in the

transmission;

(c) The intermediary observes due diligence while

discharging his duties under this Act and also

observes such other guidelines as the Central

Government may prescribe in this behalf.

64.4 The use of the wordings “or” between (a) and (b) makes them

disjunctive, although (c) has to coexist with (a) or (b) whichever is

applicable. In the present case, the provisions of Section 79 (2) (a) is not

fulfilled as the function of the defendants is not confined to only provide

an access to communication system where the third party information is

stored, transmitted or hosted. But rather the defendants provides access

only after a limited licence to add or modify the work and thereon by

adding advertisements to the said works, modifying the works which

means permitting the place for profit with knowledge. The said acts are

thus of not those kinds prescribed under the provision of Section 79 (2)

(a) which are of a limited role of merely providing an access to system

containing storage medium or transmission of the third party information.

65. The acts of the defendants also may not fall with Section 79

(2) (b) as the said situation prescribed in the provision has to be satisfied

conjunctively or collectively as the word used between the (i), (ii), (iii) is

“and” which means all the situations must be satisfied else, the said

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conditions in the provision are not met with. In the present case, the

defendant‟s acts do not satisfy the criteria of modification of information.

The defendants have attained the licence to modify the works provided

by the users suitably. The complaint of the plaintiff is that adding the

advertisement also infringes their rights. Thus, the act of modification of

the works by the defendants also excludes the defendants from the

purview of Section 79 (2) (b) of the Act.

66. The third condition of due diligence is also doubtful as the due

diligence is required while discharging his duties. Thus, if the defendants

are put to notice about the rights of the plaintiff in certain works, the

defendants should do preliminary check in all the cinematograph works

relating Indian titles before communicating the works to the public rather

than falling back on post infringement measures. The due diligence is

also not satisfied when the defendants uploads the contents of the user on

their server and then modify the same as per the limited licence to amend

from users. This means that the defendants have the chances to keep a

check on the works which defendants avoid so to the reasons best

known to them. The due diligence is thus also doubtful although

defendants contend for the satisfaction of due diligence.

67. From the above, it is also clear that the applicability of

Section 79 is also not satisfied although by operation of proviso to

Section 81, the discussion on Section 79 is not really important. I do not

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also find my agreement with the submission of the defendants that there

will be harmonious construction between Copyright Act and IT Act if the

provision of Section 79 will save the liability of the copyright

infringement of the intermediaries like the defendants. I think rather

accepting the submission would lead to apparent disharmony or conflict

between the provisions of two Acts. This can be explained as follows:

68. Firstly it is well settled canon of construction that the court

should adopt the mode of construction which upholds the provisions of

the Act and make them workable and the interpretation which makes any

provision of the Act otiose must be eschewed.

68.1 In High Court of Gujarat and Anr. v. Gujarat Kishan

Mazdoor Panchayat and Ors. [2003] 2 SCR 799 , the Supreme Court

held as under :

“35. The Court while interpreting the provision of a
statute, although, is not entitled to rewrite the
statute itself, is not debarred from “ironing out the
creases”. The court should always make an attempt
to uphold the rules and interpret the same in such a
manner which would make it workable.

36. It is also a well-settled principle of law that an
attempt should be made to give effect to each and
every word employed in a statute and such
interpretation which would render a particular
provision redundant or otiose should be avoided.”

68.2 If Section 79 of the IT Act is allowed to operate as an

embargo or restriction upon the exercise of the right of right holder by

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saving the liability of the copyright infringement, the said interpretation

will render proviso to Section 81 of the IT Act otiose or unworkable. The

said interpretation thus leads the purpose of the proviso as redundant. On

the contrary, if the gamut of the Section 79 is allowed to remain confined

and subject to the proviso of Section 81 which is intended to be so by the

legislature, both the provisions can stand and work in their respective

fields.

68.3 Section 79 is, thus, meant for all other internet wrongs

wherein intermediaries may be involved including auctioning, networking

servicing, news dissemination, uploading of pornographic content but not

certainly relating to the copyright infringement or patent infringement

which has been specifically excluded by way of proviso to Section 81.

This can be only possible harmonious construction between the two Acts

which makes both the Acts workable.

68.4 Secondly, besides making proviso to Section 81 otiose, the

interpretation canvassed by the defendants lead to conflict between two

acts and also leads to absurd results. This is due to the reason that the

Copyright Act, 1957 itself provides for an infringement as well as the

exceptions of the infringement. Once the infringement is established, the

remedies to the same are prescribed by Section 55. In that situation and

given the fact that there is an express proviso excluding the copyright

infringement from the purview of IT Act if not applied leads to

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unnecessary adding further restrictions on the copyright infringements

which is impermissible and therefore leads to absurd results negating the

statutorily prescribed remedies for copyright infringement.

68.5 Further the provisions of authorization or permitting the place

for profit requires knowledge or reasonable belief and other common law

requirements for establishing the infringement as discussed above. Thus,

the said act of authorization and/or permitting the place for profit itself

requires knowledge and reasonable belief of infringement which are

inbuilt exception to the infringement, The operation of Section 79 to

exempt the liability of the intermediary except in cases of knowledge is

rather repetition of the same provision and if the same is allowed to

operate in the way of infringement which itself requires knowledge and

reasonable belief or countenance or approval in respective cases would

lead to anomalous situations and would lead to absurd results.

68.6 Thirdly, there is no legislative disharmony by operation of the

proviso to Section 81 and rather adding of proviso to Section 81 by way

of amendment put the unrest into an end. If Section 79 would have

application to the copyright infringement which saves absolutely the

liability of the intermediary without insertion of the proviso by the

legislature under Section 81, then there would have been apparent

conflict between the acts of infringement by way of permitting the place

for profit provided under Section 51 (a) (ii) and Section 79 which saves

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the liability of the intermediary. Thus, without insertion of the proviso to

Section 81, there would have been two laws, one, providing the acts of

intermediary or facilitator as infringement and another saving the liability.

68.7 In Dwarka Prasad v. Dwarka Das Saraf [1976] 1 SCR 277.

Hon‟ble Krishan Iyer, J. speaking for the Court observed thus:

There is some validity in this submission but if, on a
fair construction, the principal provision is clear, a
proviso cannot expand or limit it. Sometimes a
proviso is engrafted by an apprehensive draftsman
to remove possible doubts, to make matters plain,
to light up ambiguous edges. Here, such is the
case….”

68.8 The adding of proviso is rather not only exclusionary but also

clarificatory in nature which clarifies that the provisions of IT Act may

not restrict the rights under Copyright Act or Patent Act as its tries to

create and confer harmony between two laws and enactments so that they

can operate in their respective fields. Thus, there is harmony by adopting

the proviso rather than negating it.

69. In view of the above discussion, I find that there is no impact

of provisions of Section 79 of IT Act (as amended on 2009) on the

copyright infringements relating to internet wrongs where intermediaries

are involved and the said provision cannot curtail the rights of the

copyright owner by operation of proviso of Section 81 which carves out

an exception cases relating to copyright or patent infringement.

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IMPACT OF PROVISIONS OF DIGITAL MILLENIUM ACT OF
US AND OTHER ENGLISH LAW

70. Now I shall deal with the possible impact of Digital

Millennium Copyright Act (“DMCA”) of US and the other English

judgments cited by the parties.

71. The great stress has been laid on the judgments passed by US

courts in following cases which are passed on analyzing the provisions

of Digital Millennium Copyright Act (“DMCA”):

(i) IO Group, Inc v. VEOH Networks (Case 5:06-cv-03926
HRL)

(ii) UMG Recordings v. VEOH Networks (Case 2:07-cv-

05744-AHM-AJW)

(iii) Viacom Inc. v. Youtube, Inc & ors (07 Civ. 2103 LLS)

72. I have gone through the decisions passed by US Courts under

the US Digital Millennium Copyright Act (“DMCA”) and I am of the

firm view, that there is no corresponding law which is in pari materia to

that of Digital Millennium Copyright Act (“DMCA”). The said Act

specifically addresses the issues relating internet related wrongs, however

our existing law of Copyright Act, 1957 does not provide any such safe

harbor provisions and rather the later enactment of IT Act, 2000 and its

new amendment in 2009 speaks otherwise which I have already

examined Section 81 of IT Act (as amended in 2009), proviso to which

excludes the operation of the IT law in cases of copyright infringement.

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73. It is trite that the court cannot re legislate or add words into

the statute. this has been followed in Association for Development vs.

Union of India & Others, 2010 (115) DRJ 277 wherein this court

approved the literal rule and observed that ―it is not the duty of the court

to enlarge the scope of the legislation when the language of the provision

is plain and unambiguous. The court cannot recast or reframe the

legislation for the very reason it has no power to legislate. The court

cannot add words to a statute or reads words into it which are not there”.

74. It is also well settled that the laws and the provisions which

are not pari materia cannot be compared. This has been followed in the

decision of the Apex Court in the case of Babu Khan vs. Nazim Khan

(2001) 5 SCC 375). The following conclusion of Their Lordships is

relevant: (para 5)

“5……It is true that the courts while construing a
provision of an enactment often follow the
decisions by the courts construing similar provision
of an enactment in pari materia. The object behind
the application of the said rule of construction is to
avoid contradiction between the two statutes
dealing with the same subject. But in the present
case, what we find is that the Madhya Bharat Land
Revenue and Tenancy Act contains one integrated
scheme providing for remedy to a pucca tenant
claiming restoration of possession under Section 91
and 93 of the Act. The Madhya Bharat Land
Revenue and Tenancy Act was repealed by the
M.P. Land Revenue Code. In the repealing Act i.e.
M.P. Land Revenue Code we do not find any
provision like Section 93 of the Act. We are,

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therefore, of the view that Sections 9 1, 92 and 93
of the Act are not in pari materia with the provision
of Section 250 of the M.P. Code. It is not a sound
principle of construction to interpret a provision
of an enactment following the decisions rendered
on a similar provision of an enactment when two
statutes are not in pari materia”

(emphasis supplied)

75. The adoption and drawing aid from the said provisions in the

present scenario would thus mean adding provisions into the statute when

the existing law says otherwise. Thus, in absence of any such law similar

to Digital Millennium Copyright Act (“DMCA”), the reliance of the

provisions and judgments passed under the said law is of no avail to the

defendants and this court under existing law cannot be convinced by the

reliance of the provisions of Digital Millennium Copyright Act

(“DMCA”) of US.

76. The same view was taken by constitutional bench of Supreme

Court in R.L. Arora vs. State of UP, [1962] Supp(2) SCR 149 while

rejecting the reading of American constitution 5th Amendment due to

inconsistent provisions wherein the court observed as under:

“20. It seems that there has been controversy in
America as to the meaning of the words “public
use” used in the above amendment and there are
two views prevalent. The older view was, and it is
still held in some States, that “public use” means
“use by the public – that is, public employment –

and consequently that to make a use public, a duty
must devolve on the person or corporation holding
property appropriated by the right of eminent
domain to furnish the public with the use intended,

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and that there must be a right on the part of the
public, or some portion of it, or some public or
quasi-public agency on behalf of the public, to use
the property after it is condemned”. The later view
is that “public use” means “public advantage,
convenience, or benefit, and that anything which
tends to enlarge the resources, increase the
industrial energies, and promote the productive
power of any considerable number of the
inhabitants of a section of the State, or which leads
to the growth of towns and the creation of new
resources for the employment of capital and labour
contributes to the general welfare and the
prosperity of the whole community and giving the
Constitution a broad and comprehensive
interpretation, constitutes a public use” (see
American Jurisprudence. Vol. 18. pp. 661-62). In
one State, where the older view is still held, the
court pointed out that “if public use were construed
to mean that the public would be benefited in the
sense that the enterprise or improvement for the use
of which the property was taken might contribute to
the comfort or convenience of the public, or a
portion thereof, or be esteemed necessary for their
enjoyment, there would be absolutely no limit to the
right to take private property, that it would not be
difficult to show that a factory, hotel, etc., the
erection of which was contemplated, would result
in benefit to the public, and that, under this power,
the property of the citizen would never be safe from
an invasion.” (see ibid. p. 664) It is the later view
prevalent in some States in America for which the
respondents are contending, and the result of that
would be the same as pointed out above. But we do
not think it necessary to examine the American
cases cited before us because the words in our
statute are not pari materia with the words used
in the fifth amendment to the American
Constitution.” (Emphasis Supplied)

77. Likewise, the defendants as well as the plaintiff in order to

support the arguments on authorization have placed reliance on the

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number of cases which are decided by the UK Courts and the other

courts of common law jurisdiction some granting the injunction and some

refusing the same depending upon the facts and circumstances of the

case. The said cases are enlisted as under:

 C.B.S. Inc. & C.B.S. United Kingdom v. Ames
Records & Tapes Limited (decided on 13th
February, 1981) (1981) RPC 407.

 C.B.S. Songs Limited & Others vs. Amstrad
Consumer Electronics Plc. & Another (House of
Lords), (1988) RPC 567)
 Ong Seow Pheng & Ors. v. Lotus Development
Corp. & Another [1997] 3 SLR.( Singapore Court)
 CCH Canadian Ltd vs. Law Society of Upper
Canada (2004 SCC 13) [Supreme Court of Canada]

78. No doubt the judgments passed by the UK Courts and in other

common law jurisdictions are relevant to take into consideration on the

tests laid down by the courts in order to arrive at the conclusion as to

whether the acts of the defendants amount to authorization or not. I have

already paraphrased the said tests while examining the aspect of

authorization in the preceding paragraphs. Beyond that, I feel the

conclusions set out in each of all those cases are of less value due to the

following reasons:

a) The provisions of UK Act of 1956 and Indian Act 1957 and also

further CDPA Act 1988 are not same. The wordings in the

Sections are although similar with variations but are not identical.

Like in UK Act of 1956, permitting the place of public

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entertainment for profit is an infringement while in Indian Act of

1957, permitting any place for profit are the wordings under

Section 51 which has made the differences in the interpretation as

discussed above.

Similarly, in UK CDPA Act of 1988, there are separate

infringements provided for place for public entertainment for profit

in the form Section 25 and infringement by way of apparatus in the

form of Section 26. Further in UK Act of 1988 there are statutory

indicators which excludes the liability of the persons under certain

circumstances in cases of infringement by way of Appratus.

However, Indian Act of 1957 remains the same with no such

provisions.

Thus, there is difference in provisions and the wordings

which may ascribe difference meaning. This is also the reason for

the English court to rely more on the concept of authorization. In

the absence of pari materia provisions, the complete reliance on

these decisions may not be useful.

b) I have not based my conclusion regarding infringement on

authorization (although I have analysed the tests relating to the

same) as I have found that the same may require active

participation besides knowledge which is a matter of trial and I

have found that still the acts of the defendants are hit by the

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provisions of Section 51 (a) (ii) of the Act. In these circumstances,

the decisions on authorization may become of less aid as the acts

of the defendants are squarely covered under the express

legislative provision.

Accordingly, principally, I accept the decisions rendered on

authorization and tests laid down in the same and the same can be taken

into consideration for the purposes of deciding the acts of authorization

but may not be helpful in the cases involving the permitting the place for

profit which is a statutorily prescribed infringement.

RELIANCE ON INTERNATIONAL COVENANTS

79. Now, I shall be dealing with the submissions advanced by the

learned counsel for the defendants on the reading of International

covenants and adopting the same in interpreting the copyright law and

especially the internet related wrongs which is The WIPO Copyright

Treaty and its Article 8.

It is also equally well settled that the international law and

covenants can be taken recourse of in the municipal law to the extent

they are not inconsistent with the municipal law and to fill the gaps in the

existing law. {This has been accepted by Supreme Court in Visakha &

Ors. vs. State of Rajasthan, (1997) 6 SCC 241)}

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80. In the present case, the defendants themselves have informed

the Court that India has not even ratified the said convention. Thus, the

reliance on the said convention into Indian law is thus misplaced. Further,

The answer to this can be traced if one reads the judgment of

Entertainment Network (Supra) more carefully wherein the court

discusses the extent to which the international covenants can be read into

the national law. The relevant paragraphs of the judgment are

reproduced hereinafter:

“While India is a signatory to the International
Covenants, the law should have been amended in
terms thereof. Only because laws have not been
amended, the same would not by itself mean that
the purport and object of the Act would be allowed
to be defeated. If the ground realities changed, the
interpretation should also change. Ground realities
would not only depend upon the new situations and
changes in the societal conditions vis-a-vis the use
of sound recording extensively by a large public,
but also keeping in view of the fact that the
Government with its eyes wide open have become a
signatory to International Conventions.”

“It is for the aforementioned limited purpose, a
visit to the provisions of International Conventions
would be necessary. In interpreting the
domestic/municipal laws, this Court has
extensively made use of International law inter alia
for the following purposes:

(i) As a means of interpretation;

(ii) Justification or fortification of a stance taken;

(iii) To fulfill spirit of international obligation which

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India has entered into, when they are not in conflict
with the existing domestic law;

(iv) To reflect international changes and reflect the
wider civilization;

(v) To provide a relief contained in a covenant, but
not in a national law;

(vi) To fill gaps in law.”

“Beginning from the decision of this court in
Kesavananda Bharati v. State of Kerala [(1973) 4
SCC 225], there is indeed no dearth of case laws
where this Court has applied the norms of
international laws and in particular the international
covenants to interpret domestic legislation. In all
these cases, this court has categorically held that
there would be no inconsistency in the use of
international norms to the domestic legislation, if by
reason thereof the tenor of domestic law is not
breached and in case of any such inconsistency, the
domestic legislation should prevail.”

“However, applicability of the International
Conventions and Covenants, as also the resolutions,
etc. for the purpose of interpreting domestic statute
will depend upon the acceptability of the
Conventions in question. If the country is a
signatory thereto subject of course to the provisions
of the domestic law, the International Covenants
can be utilized. Where International Conventions
are framed upon undertaking a great deal of
exercise upon giving an opportunity of hearing to
both the parties and filtered at several levels as also
upon taking into consideration the different societal
conditions in different countries by laying down the
minimum norm, as for example, the ILO
Conventions, the court would freely avail the
benefits thereof.”

“Those Conventions to which India may not be a
signatory but have been followed by way of

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enactment of new Parliamentary statute or
amendment to the existing enactment, recourse to
International Convention is permissible.”

81. From the reading of the aforesaid, it is clear that the

international covenant wherein India is a signatory state can be utilized

for limited purposes of bridging the gap between national law and

international to the extent it is not repugnant with the national law. I am

doubtful as to whether any of the tests laid down by Supreme Court are

fulfilled in the present case in order to enable this court to consider the

international covenant relied upon by the defendants. Firstly India has not

ratified the said convention as per the defendants, thus there is no

international obligation which is to be respected in the present case.

Secondly, the defendants‟ counsel wants this court to read into the

following statement to their benefit:

“It is understood that the mere provision of physical
facilities for enabling or making a communication
does not in itself amount to communication within
the meaning of this Treaty or the Berne Convention.
It is further understood that nothing in Article 8
precludes a contacting party from applying Article
11 bis (2).”

82. There is no disputing this proposition and I have in the

preceding paragraphs of my judgment laid down this proposition that

merely providing means does not amount to authorization. But this

statement as such cannot be read into due to the non fulfillment of

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principles which enables this court to read into the international

covenants.

83 This statement is neither bridging any gaps in the law and is

rather part of the statute in India where permitting the place for profit is

an infringement and not providing mere means. The reading of this

statement itself may not aid the case of the defendants in any event and,

thus, I am not convinced and also not sure as to what aid the defendants

intend to draw from reading of this article from the convention. This also

does not affect the invocation of the provision of Section 51 (a) (ii) of the

Act basing upon which I have found prima facie view of the infringement.

84. The submission has been made by the learned counsel for

defendants that the defendants‟ acts of providing the tools relating to

notice and turn down provisions are sufficient safeguards and amounts to

due diligence which should be considered to be a mitigating factor

against the grant of the injunction as the defendants are taking curative

measures against the possible infringement.

85. I have gone through the submission advanced by the learned

counsel for the defendants and I reject it being meritless. This is due to

following reasons I find that the said post infringement measures may not

be prima facie sufficient safeguards for the infringements:

a) Firstly, I wish to again discuss Section 51 (a) (ii) of the Act read

with Section 55 proviso, the wordings of which nowhere permits

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.111 of 132
any room for due diligence to be exercised by the infringer and

only provides an exemption for mistaken infringement on the count

of lack of knowledge or the person was not aware of the said

infringement. Under these circumstances, permitting this kind of

due diligence post infringement would mean reading the words into

the statute which would be impermissible under the canons of

construction when the statute does not provides so.

b) Secondly, I have already concluded separately that provisions of

IT Act would not curtail the remedies under the Copyright Act and

Patent Act by virtue of the proviso of IT Act. In these

circumstances, the provisions of Section 79 cannot also allow to

militate against the case of established infringement under Section

51 and Section 55 of the Act.

c) Thirdly, there are no safeguards provided under the Copyright Act

for the infringement in the cases like the present one wherein there

is a knowledge and exercise of due diligence post infringement.

Rather, the conjoint reading of Section 51 of the Act and proviso

to the Section 55 of the Act makes it clear that the knowledge or

no notice of the infringement can only assist the defendants in

resisting the damages and not the injunction. However, in some

cases like the present one under Section 51 (a) (ii) of the Act, lack

of knowledge can save the liability of infringement as the same is

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.112 of 132
the ingredient of the Section. But certainly, there is no provision

which can save the liability when there is an apparent knowledge

and exercise of due diligence post infringement. I have already

formed an opinion that the defendants are aware and has

reasonable belief of infringement and thus the exercise of due

diligence after the infringement cannot operate in favour of the

defendants to escape the liability.

d) Fourthly, if there is any due diligence which has to be exercised in

the event of absence of any provision under the Act, the said due

diligence must be present at the time of infringement and not when

the infringement has already occurred so that the infringement can

be prevented at the threshold and not when the same has already

occurred. The post infringement measures like the ones informed

by the defendants which are in compliances of US statute may hold

good in US due to the legislative measure but the same are not

operative in India. Such post due diligence on the ground of some

inherent helplessness which the defendants are pleading only

because they are sitting on internet or cyberspace may not be

correct as the law does not exclude cyberspace from its purview to

do infringements there. The defendants have sufficient means to

modify the work by taking licenses from the users, adding

advertisements to the works of the plaintiff. Consequently, the

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.113 of 132
effective means for pre infringement enquires are also necessarily

have to be performed by the defendants only. If the defendants

state that there no means to do so due to some impossibilities, the

defendants must take preliminary measures at the time of

modification of the works and prior to making them available to

the public so as to ensure that the same does not infringe any ones

copyright.

86. It gives me no hesitation to state that the compulsion which

the defendants are pointing out of lack of corrective measures at the first

instance due to multiplicity of the works or uploads and also the

diversified business of the defendants is not only the plea taken by the

defendants for the first time in any infringement action relating to

copyright infringement. It is rather applicable to any case of infringement.

Take for instance, the case of music library or shop selling movies for

hire wherein the defendants take the plea that due to multiplicity of

numbers or titles, one cannot identify the pirated ones from the originals.

But this kind of argument or plea cannot preclude the labour or burden

which the defendants ought to have exercised while taking into the

possession the pirated titles by enquiring as to whether they are belonging

to the owner or emanating from owner or not. The situation will become

more complex when the same movie seller or person giving for hire will

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.114 of 132
start keeping the international titles like Hindi Movies, English Movies,

French Movies and Pakistani titles. The said labour then increases

manifold and the said justification also gains more strength when he says

that the due to several sources, it becomes virtually impossible to keep a

hold of the each and every title whether original or duplicate. Even if the

said person states that once it is brought to his notice by the customer or

the owner that it is an infringement, he immediately removes the said title

from the library or the shop. The said acts cannot save him from the

liability of the infringement.

87. Likewise in the present case, the labour or the due diligence is

the enquiry by the defendants themselves to be exercised. The nature of

portal due to which the defendants feels helpless is of less avail to

mitigate the liability unless there is a statutory exemption to that effect

(like in Digital Millennium Copyright Act (“DMCA”). The defendants

can do many things to stop this, first that it can enquire at the stage when

the defendants modify the works, at that time the defendants can enquire

about the titles of the work and about ownership, secondly at the time of

the uploading by the user, the content should not immediately made the

available to the public, the defendants can put them to the halt subject to

enquiries of the titles or authentication of the proprietor and thereafter

make them available to the public.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.115 of 132

88. There is no reason to axiomatically make each and every

work available to the public solely because user has supplied them unless

the defendants are so sure that it is not infringement. If the defendants

cannot exercise diligence of this nature, the necessary inferences can be

drawn is that the defendants are making itself liable for infringement by

its inactions to enquire about the source of the works at the appropriate

stage.

89. Thus, even if the post infringement measures which may be

acceptable in certain legal systems due to the specific legislations may

not be hold good in India when the statute in India does not culls out any

such exception as mitigating factor.

90. Now I shall be discussing the argument raised by the counsel

for the parties on the reliefs. The extensive submissions have been made

at the Bar about the nature of the relief.

91. Mr. Sibal has submitted that the present case warrants

complete interim injunction in terms of the prayers made in interim

application wherein the defendants can be restrained from communicating

the plaintiff‟s works to the public as the current arrangement as directed

by Division Bench is not sufficiently protecting the rights of the plaintiff.

Mr. Sibal states that the current arrangement enables the infringement to

first happen and then comes corrective action which is belated in cases of

internet wrongs therefore, the plaintiff seeks more directions from this

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.116 of 132
Court so that the defendants do not infringe the works of the plaintiff.

Mr. Sibal submits that even the order of Division Bench itself states that

the same is tentative and cannot come in the way of deciding the

injunction application.

92. On the other hand, Mr. Kumar has submitted that the

injunction in terms of the prayers made in the interim application cannot

be granted due to following reasons:

a) That there cannot be injunction of general nature wherein the

plaintiff has not pointed out what are the specific infringements

against which the plaintiff intended to secure protection and there

can be injunction only to the extent of specific infringement and

not in cases of infringements of future.

b) That there cannot be any quia timet action in copyright

infringement. This is as per the learned counsel due to difference in

the language of the trade mark act and the Copyright Act wherein

the trade mark law protects likelihood of confusion but the

Copyright Act does not provide any such infringement. Thus, the

principle of quia timet is not applicable in copyright infringement.

c) That the injunction of general nature cannot be granted as the same

is also barred under the provisions of Specific Relief Act, 1963

wherein Section 14(1) (d) read with Section 41(e) prevents any

such kind of injunction.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.117 of 132

d) That the term of the order granting an injunction should be such

that it is quite plain what it presents and what it prohibits. An order

which merely prohibits a man from doing what he has no authority

to do, without showing him what the limits of his authority are, and

leaves him to find what is forbidden and what is allowed, is

irregular.

e) That in the present matter, the relief of omnibus injunction as

sought by the Plaintiff is not only impossible to comply with by the

defendants due to the existing technological limitations, but this

Hon‟ble Court will not be able to enforce the same unless the

legitimate website of the defendant No.1 is shut down. Besides,

this Hon‟ble Court would require continuous monitoring of the

defendant No.1‟s website, which is neither feasible nor in the spirit

of law.

f) That the relief of the general injunction cannot be granted as the

plaintiff has not shown the title on the copyright on each and every

work. The defendants also dispute the assignments of the

copyright being not in order. Further, the defendants allege that the

assignment in every work pertains to several restrictions such as

restriction as to terms, restriction as to home viewing etc. Thus, till

the time the assignment deeds are examined. The plaintiff is not

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.118 of 132
entitled to the relief of injunction much less the omnibus

injunction.

Thus, the defendants contend that the injunction of such

nature is difficult to comply which necessitates non grant of such

order which cannot be enforced.

93. I have examined the submissions of the parties on the issue of

grant of wider relief which has been mentioned in the Interim application.

I am of the opinion that the court is not powerless to protect the interest

of the party in cases involving civil wrongs when it involves recurring

infringements or infractions. I shall now proceed to discuss the reasoning

to this effect:

93.1 Firstly, the defendants‟ concern that the plaintiff has not

substantiated the cause of action by certainly providing the infringements

against which it requires prohibitory relief. The said submission of the

defendants do not aid their case as indeed the plaintiff has been able to

procure the sample infringements which are entailed in the plaint out of

the mass infringements which are occurring over the internet on day to

day basis. It is the case of the plaintiff‟s that it is the owner of repertoire

of the musical works and sound recordings. Out of this repertoire, if the

plaintiff is able to show some sets of infringements and is also able to

show that the defendant‟s acts are such which amounts to permitting the

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.119 of 132
place for profit for infringement purposes and there is a complete

certainty of future infringements. There is no reason why this court

should continue to allow the defendants to use that place for profit of the

defendants against the infringement of the plaintiff works which includes

current works and future works of the plaintiff.

93.2 It would be wrong understanding of the law to state that the

infringements can be prohibited only when the torts are perfected. The

principle of quia timet is not only confined to the trade mark

infringements as propounded by the learned counsel for the defendants.

The said submission is also misplaced and rejected as meritless.

93.3 The principle of quia timet is applicable to any tortuous

liability wherever there is an apprehension of infringement likely to

happen. This can be seen even in the cases of trespass where the

injunctions are sought even when there is threat of invasion in the

property of someone. The principle of quia timet has been explained by

John George Woodroffe in his book “The Law Relating to Injunctions”

in the following words :

“9. Relief. Whether it be given by the issue
of an Injunction or the appointment of a Receiver,
is granted general upon the principle quia timet;

that is, the Court assists the party who seeks its
aid, because he fears (quia timet) some future
probable injury to his rights or interests, and not
because an injury has already occurred, which
requires any compensation or other relief. So the
remedy by temporary Injunction being preventive

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.120 of 132
in its nature, it is not necessary that a wrong should
have been actually committed before the Court will
interfere, since if this were required it would in
most cases defeat the very purpose for which the
relief is sought by allowing the commission of the
act which the complainant seeks to restrain. And
satisfactory proof that the defendants threaten the
commission of a wrong (which is within their
power) is sufficient ground to justify the relief.”

93.4 Likewise, Hugh Laddie in his book titled as “The Modern

Law of Copyright” by Laddie, Presscott & Victoria at p. 405 observes

about the nature of relief which can be sought in relation to infringements

by way of authorization like in the present case in the following words:

“Relief can be sought in appropriate
circumstances on quia timet basis even before the
tort is perfected by the commission of the
infringement authorized”

93.5 In Fletcher v Bealey, {1885] 28.Ch.D.688 the principles that

should be followed by a Court when dealing with an application for an

injunction quia timet when infringement of the plaintiff’s rights is only

apprehended were succinctly laid down by Pearson, J. who said as

follows at page 698:

“I do not think, therefore, that I shall be very far
wrong if I lay it down that there are at least two
necessary ingredients for a quia timet action.

There must, if no actual damage is proved, be
proof of imminent danger, and there must also be
proof that the apprehended damage will, if it
comes, be very substantial. I should almost say it
must be proved that it will be irreparable,
because, if the danger is not proved to be so

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.121 of 132
imminent that no one can doubt that, if the
remedy is delayed, the damage will be suffered, I
think it must be shown that, if the damage does
occur at any time, it will come in such a way and
under such circumstances that it will be
impossible for the plaintiff to protect himself
against it if relief is denied to him in a quia timet
action.”

93.6 Thus, the submission that this court cannot prevent future

wrongs on the basis of quia timet injunction is also not correct as it is

equally applicable to infringement of copyright like in any other tortuous

act. Accordingly, the plaintiff is entitled to relief on the basis of quia

timet action as the defendant‟s nature of activities is such where the

plaintiff‟s works is liable to infringe and more so when the defendants are

notified about the plaintiff‟s several works. The said danger of

infringement is imminent risk of substantial damages with certainty as

the defendants have already done several infringements and will continue

to do so in the light of the continuous acts of the defendants. The

plaintiff‟s interest is also to be protected against such infractions which

are possible by way of injunction and any court jurisdictionally

competent can grant the relief prayed for quia timet action.

93.7 Secondly, the submission of the defendants that the injunction

order of the nature wherein the defendants are restrained from infringing

the plaintiff‟s works in general cannot be granted as the defendants must

know for what the defendants are restrained is also not correct. If the

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.122 of 132
defendants at this stage are already notified about the plaintiff‟s works

for the purposes of notice and turn down provisions and is also conscious

of the fact that the plaintiff owns most of Hindi movie titles and its

copyright, there cannot be anything specific than stating that the

defendants are restrained from using the works of the plaintiff.

93.8 It is only the apprehension of the defendants that they could

not trace out the ownership of the plaintiff in each and every work.

However, if one sees carefully the application of the notice and turn

down facility provided by the defendants wherein the owners are chasing

the infringers for turning their infringements down from the website as

against the infringers chasing the owners, the problem of infringement

can be resolved by applying the same conversely wherein infringers must

legitimize the acts with the owners prior to committing any such

infringements. This can be done only by the order of the court of

prohibitory nature wherein the prior notice to the owners and steps to find

ownership can be taken by the defendants by taking preventive actions

prior to infringements.

93.9 These apprehensions of the defendants about inability of

enforce or implement the order of this court are unfounded. Further, the

concern of the defendants that their website hosts the acts which are

infringing as well as non infringing and it is difficult to segregate all this

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.123 of 132
and rather impossible is also unmeritorious. Such concerns are taken care

by the courts while granting injunctions in copyright infringements.

93.10 In Garware Plastics and Polyester Ltd. and Ors. etc. v.

Telelink and Ors. etc.; AIR 1989 Bom 331 wherein Hon‟ble Bombay

High Court had examined this kind of concern wherein the court

observed that it is true that there are certain places like hotels where there

are private viewings as well as public viewings, some of which are

infringement and some are not. But still, the court proceeded to grant the

injunction against the defendants from infringing the plaintiff‟s works in

respect of which the plaintiff is the owners and/or assignees of copyright

without obtaining an assignment of the same from such owners and

assignees or a licensee under the Copyright Act, 1957.

93.11 Similarly in the cases involving mass infringements like the

cases instituted by Performing Rights Society, Phonographic Societies

which not only espouse the cause of one copyright owner but is a

collective action, the mere fact of non crystallization of all the

infringements does not preclude the courts from granting the injunctions

basing on the prima facie ownership of the plaintiff‟s works and sample

infringements. All these injunctions are being granted by this court from

time to time. Thus, this concern of the defendants has no meaning and the

injunction of the nature asked by the plaintiff cannot be faulted with

considering the acts of the defendants which are infringing in nature and

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.124 of 132
the equal level of certainty with which the future infringement may arise.

93.12 Thirdly, the submission that this court cannot grant injunction

in view of the Section 14 of the Specific Relief Act, 1963. I am of the

opinion, that the Section 14 of the Act puts no embargo for the grant of

the relief in the present case. This is due to the following reasons:

 Firstly Section 14 read with Section 41(e) of the Act

would lead to conclusion that the contracts which are not

specifically enforceable, the injunction in negative

enforcing those contracts cannot be granted. However,

the present case does not fall within the purview of

enforcing by way of injunction the contracts which cannot

be enforced by way of operation of Section 14 of the Act.

The present case rather relates to statutory injunction

prescribed by the special law which is Copyright Act.

The said injunction is sought under code of civil

procedure by way of statutory remedy provided under the

Act. Thus, the said analogy of enforcing the contract by

way of injunction cannot be applicable to the present

case.

 The present dispute relates to remedy which is statutorily

prescribed by the special law of Copyright. I have already

stated that quia timet action can be maintained in the

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.125 of 132
appropriate cases as permissible by the law. Thus, in the

present case, the remedies prescribed by the special law

will also operate over and above the remedies prescribed

under the general law relating to contracts.

 Section 14 (d) of the Act has been greatly stressed by the

counsel for the defendants has also no applicability in the

present case. However, in the present case, it would be

incorrect to assume that the court cannot supervise the

infringement of copyrights of the plaintiff‟s works in the

event the court directs the defendants to take pre

infringement measures to cut down infringement of the

plaintiff‟s work. If the defendants are guilty of non

performance or implementation of the order, the court can

call for the records of the cache on the internet and

downloads from the relevant sources whereby it can

supervise whether the defendants have complied with the

said order or not.

94. More importantly, if the plaintiff files separate suits for

number of infringements, the moot question is whether the said acts can

be monitored in that case or not. The answer to my knowledge is in

affirmative. If that is, so then it can be monitored now also by directing

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.126 of 132
the defendants not to do the infringing acts. It would be rather futile

exercise to relegate the plaintiff to file separate suits after perfection of

infringements and allowing the defendants to continue to ride over the

works of the plaintiff till that time.

95. The challenge to the assignment deeds which has been made

by the defendants are only confined to the defects in the respective

assignment pointed by the defendants. The said defects in the

assignments are disputed by the plaintiff by stating that the said

assignments are proper and are in order which can be furnished before

the court. All this is more of a question of trial at the time of evidence. At

this stage, for the purposes of forming a prima facie opinion, the

assignments filed with documents are taken as correct as no contrary or

no cogent evidence to disprove the same has been placed on the record

by the defendants. On the basis of the documents, it can be stated that the

plaintiff is the owner of copyright, otherwise no one would have executed

the assignment deeds. Therefore, the title of the ownership of the plaintiff

is sufficient to form prima facie view.

Accordingly, this court is not precluded from passing interim order

in terms of the prayers made in IA No.15781/2008 whereby the

defendants can be restrained from infringing the copyrighted works of the

plaintiff online by permitting place for profit. No further submission

remains unanswered.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.127 of 132

96. The principles for the grant of temporary injunction have been

succinctly discussed in Dalpat Kumar & Anr. vs. Prahlad Singh &

Ors.; AIR 1993 SC 276 wherein the apex court has stated that for the

purposes of grant of temporary injunction, the court must test the case of

the parties on threefold tests:

a) Prima Facie Case

b) Balance of Convenience

c) Irreparable Damage

97. The plaintiff has been able to make out a prima facie case as

the plaintiff is the owner of the copyright in the works enumerated in the

plaint. The plaintiff has also been able to establish prima facie that the

acts of the defendants are infringing in nature as the same are permitting

the webspace or place on internet for profit. The prima facie case thus is

in favour of the plaintiff. The balance of convenience lies in favour of the

plaintiff as the defendants would be less inconvenienced if they are

directed to not to infringe the plaintiff‟s works as it is their own case is

that the defendants are doing business from multifarious jobs on internet

and the works of the plaintiff is no means of profit. As against the same,

the plaintiff is totally dependants upon its works for the purposes of

royalties, reaping fruits of its copyright for further investments etc. thus,

the plaintiff would be more inconvenienced if its works are continued to

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.128 of 132
be exploited for profit without its permission. The irreparable loss would

also ensue to plaintiff if the works of the plaintiff are allowed to be made

public for permitting the place on internet for profit as against the

defendants who will loose nothing more than users on internet which as

per themselves are trivial part of their business model.

98. Consequently, the present case warrants the grant of interim

injunction for the purposes of prevention of infringement of the plaintiff‟s

works. However, this court is not precluded from granting the interim

relief in the moulded form so that the infringement can be prevented

which is in fact the relief asked by the plaintiff in its interim application.

Accordingly, the following interim directions and orders are passed:

a) The defendants, their agents, representatives, servants, their

officers or any person on their behalf are restrained from

modifying the works (more specifically the works of the

plaintiff), by adding advertisements to the said works of the

plaintiff adding logos and/ or sponsorships to the works, or

earning profit otherwise in any manner in relation to the said

works consequent upon uploading to their website/webspace

of www.myspace.com or in.myspace.com without making

endeavours to enquire the ownership of the plaintiff (as at

that stage of modification, the defendants have all means to

enquire about the same) and thereby making them available

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.129 of 132
to the public either by displaying (or playing or exhibition)

of on the website or allowing the downloading from their

website or otherwise of the said works in the modified form

which will lead to permitting the place for profit within the

meaning of Section 51 (a) (ii) of the Act and causes

infringement of copyright of the plaintiff.

b) In relation to the future works of the plaintiff to be uploaded

by the users other than those which are mentioned in (a), it

has been stated by defendants fairly in the written statement

that the order passed by the division bench is only possible

solution and have also during the course of the arguments

agreed that the defendants would not be inconvenienced if

the order passed by learned division bench is continued.

Accordingly, the defendants shall delete the works of the

plaintiff as and when the plaintiff provides the details of its

songs and films which have been uploaded on the web-site

of the defendants, the defendants shall immediately take

remedial measures to remove the same from its website not

later than one week from the date of such communication.

c) Further the defendants are also directed to verify from the

plaintiff independently without waiting the direction under

(b) to be complied with by the plaintiff on their own by

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.130 of 132
other means continuously or through its India centric

operations about the ownership status or updations in the

works of the plaintiff and shall do their honest endeavours

on their own to remove the offending content or infringing

works immediately after the gaining the said knowledge.

d) In relation to the works of the plaintiff which are already

turned down once by the defendants, the defendants are

restrained from further allowing the continuation of the

uploadings or its existence on its website of the same works

which have already been turned down/ deleted by the

defendants at the behest of the plaintiff request. This has

been already stated by the defendants by explaining their

various tools for preventing infringement wherein the

defendants possess the necessary tools and the technology

which identifies and prevents the repetitions in infringements

after its first posting and deletion. Accordingly, the

defendants are directed to ensure the deletions and the

preventions of repetitions on their own after putting to notice

by the plaintiff about the works by availing their own tools

and not by the calling the plaintiff to do this by some

subscription.

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.131 of 132
In this way, the parties in the interim can prevent the

infringements and its occurrence on the website of the defendants till the

disposal of the suit. The orders passed in the interim applications are

tentative in nature and does not come in the away of the court at the time

of hearing of the matter after the completion of the trial.

99. Consequently, the plaintiff‟s application being IA

No.15781/2009 (U/o 39 R 1 & 2 CPC) is allowed and defendants‟

application being IA No.3085/2009 (U/o 39 R 4 CPC) is dismissed with

cost of Rs.20,000/-.

100. IA No.15781/2009 and IA No.3085/2009 are accordingly

disposed of.

CS (OS) No. 2682/2008

List on 16th August, 2011 for direction.

MANMOHAN SINGH, J

JULY 29, 2011

IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.132 of 132

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