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Registration Of Copyright Not Mandatory For Seeking Protection Under Copyright Act: Bombay HC


In a recent, remarkable and reasonable judgment titled Sanjay Soya Pvt Ltd v. Narayani Trading Company in Interim Application (L) No. 5011 of 2020 in Commercial IP Suit No. 2 of 2021 delivered just recently on 9 March 2021, the Bombay High Court has held that registration of copyright is not mandatory under the Copyright Act, 1957 for seeking an injunction against infringement. A Single Judge Bench of Justice GS Patel has observed in clear, cogent and convincing terms that, “Copyright Act gives a range of rights and privileges to the first owner of copyright without requiring prior registration.” Justice Patel underscored that Section 51 of the Copyright Act, which speaks of infringement of copyright, does not restrict itself to works that have been registered with the Registrar of Copyright.

To start with, before stating anything else, it is first and foremost clarified in para 1 by a single Judge Bench of Justice GS Patel of Bombay High Court wherein it is put forth that, “This order will dispose of the present Interim Application in this suit for trade mark and copyright infringement.”

Briefly stated, the Bench then states in para 2 that, “The trade mark in question is a label mark, not a word or a device mark. Apart from trade mark registration, the Plaintiff, Sanjay Soya Private Limited (“Sanjay Soya”), also claims copyright in the artistic work comprised in the label.”

While elaborating further, the Bench then enunciates in para 3 that, “The predominant colour of Sanjay Soya’s label/ artwork is yellow. This is a colour associated with gold, oils or lemons. The package itself is rectangular. Across roughly the middle of the packing is a broad band in red. Across this are the words “SOYA DROP”. These are rendered in white block letters with a drop-shadow effect and in a somewhat cinematic curvilinear fashion so that the beginning and ending letters are larger in size than the ones in the middle. In straight white lettering below this in all capitals are the words “SOYABEAN REFINED OIL”. At the centre of the red band is a green oval device, inset in which we find the words ‘Naturally Healthy’. Above this oval device is an image of a family of four, a husband, wife and two children, a boy and a girl. Below the red band are depictions of scattered soybeans, and overlaid on them is a shiny yellow teardrop device supposed to resemble or evoke a drop of oil. There are other marks at the top and bottom. At the top right corner is a small red rectangle with a green oval device at its top centre, also inset with the words ‘Naturally healthy’.”

As against this, the Bench then states in para 4 that, “Narayani Trading’s label uses very nearly — or indistinguishably the same — principal background colour. It also has a central red band. On this are the words “SOYA AMRUT”. There is again a slightly oval green device at the top centre of the red band. Inset in this are the words ‘Refined Soyabean Oil’. An image of a family of four, differently positioned from the one in the Sajany Soya label, but still a family of four with two children, one male, one female, is positioned above the green oval device. Below the red band are also soybeans, slightly differently shown, and a teardrop oil device.”

As an aside, the Bench then observes in para 5 that, “Mr Burad for Narayani Trading says, first, that the two labels are entirely distinct; no one will mistake one for the other. The points of distinction are many and are easily discernible. That argument is only to be stated to be rejected. The key features, integers or elements that I have described in Sanjay Soya’s label all find place in Narayani Trading’s label with only minor variations. These variations are too irrelevant to warrant consideration. From a look at these products, it would be possible to tell one from the other. That is indeed the only test when it comes to trade mark infringement, passing off or copyright infringement. So far as copyright infringement is concerned, it is sufficient to note that a very substantial part of Sanjay Soya’s label has been taken up by Narayani Trading and used in its product.”

Ostensibly, we ought to pay attention to what is then mentioned in para 6 which states that, “With this, I now turn to the factual background. On 26th October 2020, Mr Justice KR Shriram made an ad-interim order. The matter was then adjourned periodically after Mr Burad entered appearance. There are several affidavits now filed in the Interim Application. I have considered these with the assistance of Mr Khandekar for Sanjay Soya and Mr Burad for Narayani Trading.”

To put things in perspective, the Bench then discloses in para 7 that, “The factual narrative in the Plaint runs, briefly, like this. Sanjay Soya has been manufacturing and selling edible oils of various kinds, including soyabean oil, for many years. Narayani Trading is a sole proprietorship. Sanjay Soya was incorporated on 17th February 2004. It claims to have the necessary ISO certifications for quality and other certifications. Sanjay Soya says that it is the successor-in-title of one SK Oil Industries (“SK Oil”). It claims that in May 2003, SK Oil adopted the label, mark and artistic work in relation to edible oil. This has the distinctive get up, layout and schematic arrangements that I have described above, and which is also described in paragraph 7 of the Plaint.”

Be it noted, the Bench then mentions in para 8 that, “Paragraph 8 of the Plaint is important for the purposes of this order. It reads thus:

“8. The said label was designed by an employee of S. K. Oil Industries, during the course of employment, by exercising skill, judgement and effort. The said label is an original artistic work within the meaning of section 2(c) of the Copyright Act, 1957. S. K. Oil Industries was therefore the owner of copyright subsisting in the said artistic work/ label by virtue of the provisions of section 17 of the Copyright Act, 1957.””

While referring to Mr Burad for Narayani Trading, the Bench then observes in para 27 that, “He draws my attention to a decision of a learned Single Judge of this Court in Dhiraj Dharamdas Dewani v Sonal Info Systems Pvt Ltd And Others, 2012 (3) Mh LJ 888  This was a decision rendered on 6th March 2012. The decision holds that registration under the Copyright Act is mandatory before a plaintiff can claim relief, civil or criminal, under the Copyright Act. The matter came up in appeal from the District Court. The appellant was the plaintiff. He brought suit under Section 60 of the Copyright Act 1957 for a declaration and a permanent injunction in relation to taxation software. The factual details are not relevant. After considering some of the provisions of the Copyright Act and in particular Sections 14, 17, 21, 44, 45, 47, 48, 50-A, 51, 62(1), 63, 63-B and 64, the learned Single Judge concluded in paragraphs 26 and 27:

“26. Reading of the above penal provisions of sections 63, 63-B and 64 the Copyright Act clearly show that a person knowingly making use of a computer by infringing copy of a computer programme shall be criminally liable. It is well settled that provisions relating to penal provisions are required to be interpreted strictly. Now if there is no registration of copyright by its owner and such owner of a copyright is not known to the infringer due to non-registration of the copyright he still would be held criminally liable under these provisions. To make a person liable criminally, it will have to be shown that such a person was fully knowing about the owner of the copyright and that he indulged in infringing the said copyright despite knowing the ownership thereof. If registration is not made and published in the official gazette such infringer cannot be expected to be aware nor can he be attributed knowledge about the ownership of the copyright of a particular copyright owner and in that event the criminal Court would not be able to convict such a person. That may lead to chaotic situations. Similarly, reading of Section 64 regarding power of police to seize shows that police officer will have to get himself satisfied that a particular person (complainant) is the owner of copyright and he will be so satisfied if such a copyright is registered. When both the complainant and the alleged infringer claim that their product was launched first and that their copyright work was made first, in the absence of registration under section 44 of the Act, how the police officer will be satisfied to proceed to take cognisance. The police officer in that case would not be able to move an inch to effect seizure of the alleged infringing copies. After all the provision regarding seizure is another serious act, which infringes upon the privacy of a person. Hence, the word ‘may’ used in section 45 of the Act will have to be read as ‘shall’ having regard to the scheme of the Act of which all materials provisions have been quoted and analysed by me. I am therefore inclined to agree with and to follow the interpretation made by the Division Bench in Andhra Pradesh High Court in AIR 1960 A.P. 415 and Orissa High Court in AIR 1986 Orissa 210.

27. Thus careful survey of the above provisions of the Copyright Act, 1957 to my mind clearly denotes that in the absence of registration under section 44 of the Copyright Act by the owner of the copyright it would be impossible to enforce the remedies under the provisions of the Copyright Act against the infringer for any infringement under section 51 of the Copyright Act. Thus, I answer point No.1 in the affirmative.”

Of course, the Bench then rightly observes in para 28 that, “This decision is entirely per incuriam. It incorrectly notes that there was no decision of the Bombay High Court directly on this point (paragraph 11, last sentence). There were, in fact, four previous decisions, all to the contrary, each binding on the Dhiraj Dewani court.”

As we see, the Bench then makes it a point to mention in para 29 that, “The first of these is the decision of SH Kapadia J (as he then was) sitting singly in Burroughs Wellcome (India) Ltd v Uni-Sole Pvt Ltd And Another, 1997 (3) Mh LJ 914. In paragraph 8, after discussing the essence of copyright, the learned Single Judge noted that there is no provision under the Act that deprives an author of his rights on account of non-registration of the copyright.”

Going ahead, the Bench then observes in para 30 that, “Oddly enough, Burroughs Wellcome was, in fact, cited before the Dhiraj Dewani court, as we can see from the listing in paragraph 6 of the latter. But, beyond stating it was placed, there is absolutely no consideration of Burroughs Wellcome in Dhiraj Dewani. The decision by Kapadia J was clearly binding on the Dhiraj Dewani court, which could not have taken a contrary view without considering Burroughs Wellcome and distinguishing it.”

Furthermore, the Bench then discloses in para 31 that, “Second, there is the 12th September 2002 decision of SJ Vazifdar J (as he then was) sitting singly in Asian Paints (I) Ltd v M/s Jaikishan Paints & Allied Products , 2002 (4) Mh LJ 536 In paragraph 24, the learned Single Judge held:

24. Registration under the Copyright Act is optional and not compulsory. Registration is not necessary to claim a copyright. Registration under the Copyright Act merely raises a prima facie presumption in respect of the particulars entered in the Register of Copyright. The presumption is however not conclusive. Copyright subsists as soon as the work is created and given a material form even if it is not registered. See Buroughs (I) Ltd vs Uni Soni Ltd, 1997(3) Mh L J 914. Thus even if the plaintiff’s work was not registered, the plaintiff having established that it had created the same prior to the defendant, mere registration by the defendant of its work cannot defeat the plaintiff’s claim.”

By the way, the Bench then mentions in para 33 that, “Incidentally, the Asian Paints decision is absolutely on point on the question of priority between the plaintiff claiming copyright and the defendant.”

Moving on, the Bench then states in para 34 that, “The third reported decision is that of SU Kamdar J (as he then was) of 25th January 2006 in International Association of Lions Club v National Association of Indian Lions And Others, 2006(4) Mh L J 527.  In paragraph 14, page 32, the Court was of the opinion that registration of copyright was not mandatory; and that registration, if availed, was only prima facie evidence of ownership of a copyright. This was of course in the context of copyright claimed in a design. But that should make very little difference.

Adding more to it, the Bench then mentions in para 35 that, “There is another unreported decision of this Court in Anand Patwardhan v Director-General of Doordarshan And Others, to the same effect. Order dated 31st March 2009 in Suit No. 2259 of 2004, paragraphs 19 and 20.”

As a corollary, the Bench then envisages in para 36 that, “Any one of these decisions — and each of them — were binding on the learned Single Judge deciding Dhiraj Dewani and, at a minimum, if that Court disagreed, have required that a reference be made to the Hon’ble the Chief Justice to constitute a larger bench to decide the question of law. But, necessarily, that would have required each of the four decisions to be considered and would have needed a reasoned order setting out why, in the view of the Dhiraj Dewani court, these were wrongly decided. There is no such discussion in Dhiraj Dewani.”

It also cannot be glossed over that it is then stated in para 37 that, “The doctrine of precedent or stare decisis requires that a court is bound by the decisions of not only a larger bench but also of a bench of the same or coordinate strength. Such previous judgements of a bench of coordinate strength cannot be ignored. They are fully binding. The rationale is that there must be a certainty to the law and different judges in benches of the same strength cannot take antipodal views. The earlier binds the later. If the later decision is one made without noticing, or in ignorance of the earlier binding decision, then the later decision is one that must be held to be rendered per incuriam and as not being good law. This must, inevitably, therefore be the fate of the decision in Dhiraj Dewani.”

What’s more, the key point of para 39 is that, “A decision rendered per incuriam is never elevated to the status of precedent (State of Assam v Ripa Sarma, (2013) 3 SCC 63, paragraph 7).  Finally, mere noting a previous binding decision while neither distinguishing it nor following it will not make the later decision good law (Swiss Timing Ltd v Commonwealth Games 2010 Organizing Committee, (2014) 6 SCC 677, paragraph 20). It must be shown that the previous decision which was noted — in this case, Burroughs Wellcome — was considered and, for stated reasons, distinguished as being not binding. The Dhiraj Dewani judgment does not even attempt to do this. Further, once Asian Paints followed (and perhaps amplified) Burroughs Wellcome, the Dhiraj Dewani court was entirely bound.”

To state the ostensible, the Bench then states in para 40 that, “On all these grounds, therefore, the decision in Dhiraj Dewani must be held to be rendered per incuriam and consequently not good law.”

More crucially, the Bench then remarkably points out in para 41 that, “There is a large body of decisions of other Courts that hold that registration of copyright is not mandatory. This may not be a complete listing: (1) A Sundaresan v AC Thirulokchandar, (1973) 86 LW 556; (2) Satsang & Anr v Kiron Chandra Mukhopadhyay, AIR 1972 Cal 533; (3) M/s Manojah Cine Productions v A Sundaresan & Anr, (1975) 88 LW 575; (4) Deepak Printery v The Forward Stationery Mart, 1981 (1) PTC 186 (Guj); (5) Radha Krishna Sinha & Ors v The State of Bihar & Ors, 1979 Cri LJ 757; (6) Nav Sahitya Prakash v Anand Kumar & Ors, AIR 1981 All 200; (7) Glaxo Orthopedic UK Ltd v Samrat Pharma, AIR 1984 Delhi 265; (8) R Madhavan v SK Narayan, AIR 1988 Ker 39; (9) K Marari v Muppala Ranganayakamma, MANU/AP/ 0276/ 1987; (10) KC Bokadia & Ors v Dinesh Chandra Dubey, 1999 (1) MPLJ 33; (11) Zahir Ahmed v Azam Khan, 1995 SCC OnLine 433; (12) BN Firos v State of Kerala & Ors, 2006(2) KLJ 396; (13) Rajesh Masrani v Tahiliani Design Pvt Ltd, AIR 2009 Del 44; (14) M Radhakrishnan, Mavelikkara v Surabhi Publication, Kottayam & Ors, 2016 SCC OnLine Ker 13198; (15) Thomas KO (Fr) v State of Kerala & Ors, ILR 2017 2 Kerala 155.”

Quite remarkably, the Bench then also waxes eloquent to hold in para 42 stating that, “The Dhiraj Dewani court was persuaded to follow the contrary view of other High Courts to the effect that registration is mandatory. Mr Burad attempts to do precisely that even today. (Mishra Bandhu Karyalaya & Ors v Shivratanlal Koshal, 1969 SCC OnLine MP 35 : AIR 1970 SC 261; Brundaban Sahu v Rajendra Subudhi, 1986 (6) PTC 322). In view of the binding decisions of this Court, it is not open to me to accept this submission: it would amount to (a) ignoring previous, and binding, decisions of this Court; and possibly (b) overruling the decisions of four benches of coordinate jurisdiction and strength. This is simply impossible, and is not a course available to me. It was also not open to the Dhiraj Dewani court. The four decisions of this Court to which I have referred are all binding on me, as they were on the Dhiraj Dewani court. They cannot be distinguished. A contrary view is plainly impossible, and it was just as impossible on 6th March 2012 when Dhiraj Dewani was decided.”

No doubt, the Bench then enunciates in para 43 that, “Indeed, on principle, it seems to me that the Dhiraj Dewani could not possibly have decided as it did. Consider this: (i) the Burroughs Wellcome decision was cited, but neither distinguished nor followed, though entirely binding; (b) the other decisions of this court (Asian Paints, Lions Club and Anand Patwardhan), all of benches of coordinate strength, and all binding on precisely the same point, were not even noticed; and (c) the Dhiraj Dewani court preferred the Division Bench view of the Madhya Pradesh High Court in Mishra Bandhu Karyalaya & Ors v Shivratanlal Koshal, 1969 SCC OnLine MP 35 : AIR 1970 SC 261 even though this was specifically held not to be good law by a Full Bench to which the question of law was referred in KC Bokadia & Anr v Dinesh Chandra Dubey 1999 (1) MPLJ 33. Curiously, the Dhiraj Dewani court itself noted that the Mishra Bandhu Karyalaya Division Bench decision had not been followed by a Division Bench of the Kerala High Court (Dhiraj Dewani, supra, paragraph 11; R Madhavan v SK Nayar, AIR 1988 Kerala 39 (DB)). There is thus no question of Mr Burad being able to commend today that I should prefer the view of the over-ruled Division Bench of the Madhya Pradesh High Court in Mishra Bandhu.”

In addition, the Bench then also points out aptly in para 44 that, “There is one other decision of another learned Single Judge of this Court in Gulfam Exporters And Ors v Sayed Hamid And Ors, 2000 (20) PTC 496 Bom. under Section 63 of the Copyright Act 1957, which says in paragraphs 6 and 8 that registration is required. The Single Judge relied on a decision of the Orissa High Court in Brundaban Sahu v B Rajendra Subudhi, 1986 (6) PTC 322 to say that copyright registration was mandatory. This was the finding returned in paragraph 8, and to this extent of this finding, the decision in Gulfam Exporters is also per incuriam. It, too, fails to notice the previous decision of this Court in Burroughs Wellcome, which is of 3rd July 1997. Burroughs Wellcome is not referenced in Gulfam Exporters. It was undoubtedly binding. It has not been distinguished. On the question of copyright registration, therefore, Gulfam Exporters joins Dhiraj Dewani in the class of judgments rendered per incuriam on the question of compulsory registration under the Copyright Act.”

Most appropriately and also most remarkably, the Bench then also hastens to add in para 54 stating in short that, “International treaties and obligations to which India is a party also militate against the acceptance of the Dhiraj Dewani view that copyright registration is mandatory. The Berne Convention of 1886 (as modified in Paris in 1971), and of which India is a member since 28th April 1928, has three fundamental principles (https:// www.wipo.int/ treaties/ en/ ip/ berne/ summary_berne.html; accessed on 14th March 2021.):

(a) Works originating in one of the Contracting States (that is, works the author of which is a national of such a State or works first published in such a State) must be given the same protection in each of the other Contracting States as the latter grants to the works of its own nationals (principle of “ national treatment” ).

(b) Protection must not be conditional upon compliance with any formality (principle of “automatic” protection).

(c) Protection is independent of the existence of protection in the country of origin of the work (principle of “ independence” of protection). If, however, a Contracting State provides for a longer term of protection than the minimum prescribed by the Convention and the work ceases to be protected in the country of origin, protection may be denied once protection in the country of origin ceases.”

Needless to say, it is then rightly stated in para 55 that, “Formal ‘registration’ of copyright as a mandatory requirement would be in the teeth of this Convention requirement. Protection must be ‘automatic’, on the coming into existence of the work in which copyright is claimed.”

To say the least, the Bench then also specifically states in para 58 that, “In this delineation by the Supreme Court of the rights of an author of a work, of the owner of copyright, of the concept of copyright, and when and how it can be used, claimed and protected against infringement, there is no finding at all that prior registration is mandatory before such rights and entitlements are claimed. Simply put, Dhiraj Dewani simply cannot stand against this enunciation of law. It is entirely contrary to the Supreme Court decision in Engineering Analysis. Therefore, even if it was not otherwise not good law, it would now stand impliedly over-ruled, as would Gulfam Exporters. And possibly every single decision on which Mr Burad relies to suggest that prior registration of copyright is mandatory.”

More damningly, the Bench then makes it clear in para 62 that, “Mr Burad’s attempts to make fine or nice distinctions between the two labels are of no avail. This is not the established test for copyright infringement. One will not look at the size of a soyabean or the shape or size of the oil teardrop. The difference in nomenclature in the green oval shape device is also immaterial. As I have said, these minor variations are inconsequential. It is impossible to believe, given Sanjay Soya’s prima facie established product popularity and reputation, that Narayani Trading was unaware of Sanjay Soya’s market presence. I have now noted more than once that Narayani Trading does not show that the artistic work and label was in use before Sanjay Soya began using it, or before SK Oil began to using it. It cannot show that Narayani Trading was itself a prior user or that the artistic work is of the original authorship of Narayani Trading. The rest must follow as a matter of inescapable, irresistible and ineluctable conclusion: that knowing of Sanjay Soya’s presence in the market, of its label and of its artistic work, Narayani Trading illicitly and without bona fide intent adopted a label that is confusingly, deceptively and strikingly similar to that of Sanjay Soya; and in doing so, copied substantially, if not wholly, the artistic work comprised in Sanjay Soya’s trade dress and packaging, and of which copyright Sanjay Soya through its predecessor-in-title is indeed the owner.”

Quite pertinently, the Bench then observes in para 69 that, “The conduct of a party is thus a relevant consideration when awarding costs under the Commercial Courts Act. I have no doubt that Narayani Trading’s conduct warrants an order of costs. The defence taken is utterly frivolous and possibly moonshine.”

In this regard, the Bench also minces no words to state it upfront in para 71 that, “The statement of costs handed in by Mr Khandekar is a total of Rs.4,00,230/ – including Court fees, costs up to the ad-interim stage, costs until today, and miscellaneous expenses of Rs.35,000/ -. These costs are eminently reasonable. There will, therefore, be an accompanying order of costs of Rs.4,00,230/ – against Narayani Trading and in favour of Sanjay Soya. These costs are to be paid within two weeks from today. If not paid within that time, the costs will carry interest, as also permitted under the Commercial Courts Act, at the rate of 6% per annum simple interest.”

In essence, it is quite clear from the aforesaid discussion and there can be no gainsaying the irrefutable fact that registration of copyright is not mandatory for seeking protection under the Copyright Act. Justice GS Patel of Bombay High Court has given adequate reasons for ruling so and we have discussed most of them here gainfully. In holding so, Justice GS Patel also declared as per incuriam two Single Bench decisions of the Bombay High Court in Dhiraj Dharamdas Dewani v. Sonal Info Systems Ltd & Ors., 2012 (3) Mh LJ 888 and Gulfam Exporters & Ors. v. Sayed Hamid & Ors. (unreported) as they had held that registration under the Copyright Act is mandatory before a plaintiff can claim relief, civil or criminal, under the Copyright Act which is not the case actually. Justice Patel rightly observed that the above decisions were passed in ignorance of four binding precedents, all to the contrary. There can be no denying it!

Sanjeev Sirohi

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