* 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. IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.1 of 1322. 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.
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.2 of 132
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 auser 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 oninternet 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 ï‚ ï‚ 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. ï‚ ï‚ User clicks on preferred search result. ï‚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.ï‚
MySpace makes a copy of the uploaded video or sound recording
in its own software format, and stores it on its own servers.IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.5 of 132
ï‚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 RAI14. 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 132employees, 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 ofthe plaintiff and against the defendants as may be
deemed fit and proper by this Hon‟ble Court in the
interest of justice and equity.”IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.8 of 132
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 reproducedhereinafter:
“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:
ï‚· The defendant No.1 is a foreign national and is carrying on
business outside the jurisdiction of this court in US.
ï‚· No part of cause of action has occurred with in the territorial
jurisdiction of this court.
ï‚· 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.
ï‚· 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).
ï‚· 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
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.12 of 132
the said rights including internet rights. Thus, the rights which areasserted 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.……
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.13 of 132
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
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.15 of 132
defendants will immediately take the corrective measures to takedown and remove the said content.
o) The defendants have also provided three safeguards on its own:
ï‚· The Hash Block Filter ï‚· Take Down stay Down ï‚· Rights management toolThe 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,
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.16 of 132
register with the defendant No.1 and then create “fingerprints” ofits 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
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.17 of 132
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
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.18 of 132
liability. Consequently, the said interim order represents the onlyfeasible 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
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.19 of 132
authority or licence and thus causing royalty losses in addition tomaking 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
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.20 of 132
interest in operating this kind of arrangement. As per Mr Sibal, itwould 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:
ï‚· Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.
(AIR 2004 SC 3540)ï‚· 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 hotelIA 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:
ï‚· 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.
ï‚· 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 andthe 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:
ï‚· University of New South Wales v. Moorhouse (1975)
CLR 1
ï‚· Universal Music Australia Pty Ltd. and Ors. v.
Sharman License Holdings Ltd. and Ors
ï‚· Australasian Performing Right Association v. Jain,
(1990)18IPR663
ï‚· Roadshow Films Pty. Ltd v iiNet Limited, [2010] FCA
24
ï‚· 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 ofdecisions 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
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bad and puts to the plaintiff into irretrievable harm by causinginfringement 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
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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
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at all. Learned counsel Mr. Kumar has made the submissions which canbe 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 :
ï‚· 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.
ï‚· 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.
ï‚· 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
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(Supra) and thus this court does not have territorialjurisdiction to entertain and try the present proceedings.
ï‚· 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
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videos available on the web-site. The plaint and thedocuments 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.
ï‚· 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.
ï‚· 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.
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 Further, the Plaintiff has sought to establish jurisdiction onthe 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
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reasons and this court should reject the plaint or return it to bepresented 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
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internet and how it emerged. Learned counsel has taken pains toexplain 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
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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.
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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
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defendants on the internet which establish that the defendants areno 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
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and every content which is being uploaded on the website. Thesame 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 beIA 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.
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The most powerful filtering tool that defendant No.1 makesavailable 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
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Copyright Filter, it can avail itself of extremely broad copyrightprotection 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.
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Law Relating To Copyright And Its Relation With InternetComputing
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.
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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 insaying 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.
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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 IndiaExplanation- In the case of a work of joint
authorship, the conditions conferring copyrightIA 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 programmeProvided 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
publicExplanation – 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, orIA 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
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.50 of 132
infringement even if the acts are done which are of the owner or in thealternative 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, orb) gave the permission gratuitously or for a
consideration which was only nominal or (if more
than nominal) did not exceed reasonable estimate ofIA 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.”
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.55 of 132
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 theIA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.58 of 132
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
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.61 of 132
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
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.62 of 132
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).
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.63 of 132
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.
ï‚· 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.
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.64 of 132
ï‚· 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.
ï‚· 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
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.65 of 132
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.
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.66 of 132
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:
ï‚· 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
IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.67 of 132
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.
ï‚· 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.
ï‚· 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
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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.
ï‚· 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
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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)
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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
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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
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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
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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‟IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008 Page No.84 of 132
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
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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:
ï‚· C.B.S. Inc. & C.B.S. United Kingdom v. Ames
Records & Tapes Limited (decided on 13th
February, 1981) (1981) RPC 407.
ï‚· C.B.S. Songs Limited & Others vs. Amstrad
Consumer Electronics Plc. & Another (House of
Lords), (1988) RPC 567)
ï‚· Ong Seow Pheng & Ors. v. Lotus Development
Corp. & Another [1997] 3 SLR.( Singapore Court)
ï‚· 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
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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
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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
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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
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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.
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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
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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.
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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
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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
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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
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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
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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
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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
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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
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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:
ï‚· 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.
ï‚· 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
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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.
ï‚· 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
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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.
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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
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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
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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
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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.
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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
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