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1.

The Philosophy of Copyright Act

2. Qualification of Copyright Candidate in India10

3. Copyright Contracts......63

4. Copyright Wrong: Copy or Not to Copy.164

5. Intellectual Property Wrongs...195

National Workshop on Copyright Law in India February 22-23,


2017
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Qualification of Copyright Candidate in India
Ghayur Alam

Copyright is a bundle1 of statutory2 exclusive3 economic4 and divisible (fragmentable5) rights in


relation to six types of works, 6 limited both in time7 and space8 and subject to certain statutory

Prof. (Dr.) Ghayur Alam, Ministry of Human Resource Development Chair Professor of
Intellectual Property Law & Chairperson of Centre of Science, Technology and Law at the
National Law Institute University, Bhopal. The author would like to acknowledge the research
assistance provided by Mr. Sumit Bhattachrya and Mr. Abhinav Pradhan, Research Associates,
MHRD Chair on IPR at the National Law Institute University, Bhopal.

1 The constituents of divisible bundle of copyright right in relation to different types of works are enumerated
under Section 14 of the Copyright Act, 1957 (hereinafter referred to as the Act) as under:Meaning of
copyright.-For the purposes of this Act, "copyright" means the exclusive right subject to the provisions of this
Act, to do or authorize 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 program-
(i) to reproduce the work in any material form
(ii) to issue copies of the work to the public
(iii) to perform [or communicate] the work in public
(iv) to make any cinematograph film or sound recording
(v) to make translation
(vi) to make adaptation
(b) in the case of a computer program
(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 program:
(c) in the case of an artistic work,-
(i) to reproduce the work in any material form
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(d) In the case of 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 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
(iii) to communicate the sound recording to the public.
For purposes of meaning the Act has grouped the copyrightable works, which are six in number, into five categories,
namely (i) literary, dramatic or musical work except computer program, (ii) computer program, (iii) artistic work, (iv)

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limitations and exceptions9. Like any other legal rights copyright is also a relative and limited right
and not an absolute right.10

The objective of copyright law is to enrich public domain of knowledge (scientific and non-scientific)
and art so as to get more production and dissemination of knowledge and art to advance learning,
knowledge, entertainment and pleasure for betterment of human life and social good. Law seeks to
achieve this objective by rewarding the author/owner with copyright. Although copyright law claims

cinematograph film, and (v) sound recording. Each of the rights mentioned in the all the clauses of Section 14 are
divisible in as many parts as the owner of the copyright desires them to be divided into. For example, right to issue
copies may be divided into right to issue in newspaper, or in journal, or in a book, on internet etc.
Also see, A HAND BOOK OF COPYRIGHT LAW, Government of India, Ministry of Human Resource Development,
Department of Secondary Education and Higher Education, at http://copyright.gov.in/Documents/handbook.html last
visited on 26-12-2011:
[I]t is a bundle of rights including, inter alia, rights of reproduction, communication to the public, adaptation
and translation of the work. There could be slight variations in the composition of the rights depending on the
work.
Also see Camlin Private Limited v National Pencil Industries, [2002] 96 DLT 8.

2 Copyright is a statutory right and not a common law right by virtue of the provisions of Section 16 of the Act
which provides:No copyright except as provided in this Act:
No person shall be entitled to copyright or any similar right in any work, whether published or unpublished,
otherwise than under and in accordance with the provisions of this Act or any other law for the time being in force,
but nothing in this Section shall be constructed as abrogating any right or jurisdiction to restrain a breach of trust or
confidence.
Also see, Eastern Book Company v. D.B. Modak, AIR 2008 SC 809, 829 for the following proposition:
Copyright is purely a creation of the statute under the 1957 Act. What rights the author has in his work by virtue of
his creation, are defined in Sections 14 and 17 of the Act. These are exclusive rights, but subject to the other
provisions of the Act. In the first place, the work should qualify under the provisions of Section 13, for the
subsistence of copyright. Although the rights have been referred to as exclusive rights, there are various exceptions
to them which are listed in Section 52.
Also see, Ladbroke (Football), Ltd v William Hill (Football, Ltd. [1964] 1 All E.R. 465, 475 for the proposition that
"Copyright is a statutory right which by the terms of the Act would appear to subsist, if at all, in the literary or other
work as one entity."

3 Exclusive means restricted to the person.See C. SOANES (ed.), THE COMPACT OXFORD REFERENCE
DICTIONARY, 284 (Oxford University Press, 2003).] Copyright is described as a negative right because it is not a
positive right. In Deshmukh and Co. (Publishers) Pvt. Ltd. v. Avinash Vishnu Khandekar 2006(32)PTC 358 (Bom.)
(SB) the Bombay High Court observed:Copyright is not a positive right but is negative right that is the right to stop
others from exploiting the work without the copyright owner's consent or licence.

4 The term copyright refers to economic rights and not special rights enumerated under the Act. The Act refers to
authors special right under Section 57. Authors special right is popularly known as moral right as distinguished
from economic right (copyright). The Act also makes provisions for special rights broadcast reproduction right
and performers right under Sections 37 and 38 respectively. These rights are generally referred to as the

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to encourage authorship as a means to promote social good, yet it ends up by largely promoting
appropriation of fruit of labor of author by the owner. Elsewhere I have argued that the existing
regime of copyright law is largely detrimental to authorship and is more favorable to the interest of
the owner of copyright as it fails to adequately protect the interest of authors of the literary, dramatic,
musical and artistic works in particular by creating default rules relating to first ownership, in the
absence of agreement to the contrary, in favor of proprietor, publisher, employer and government. 11
Default rules relating to first ownership of copyright could have been in favor of the author for the
neighboring or related rights as distinguished from economic right.

5 See A Justification for Allowing Fragmentation in Copyright, 124 HARV. L. REV. 1751 (2011).

6 Section 2 (y) of the Act defines work as under:work means any of the following works, namely:
(i) a literary, dramatic, musical or artistic work;
(ii) a cinematograph film;
(iii) a sound recording.

7 Under Section 22 copyright shall subsist in any literary, dramatic, musical or artistic work published within the lifetime
of the author until sixty years from the beginning of the calendar year next following the year in which the author dies.
Under Section 23(1) in the case of a literary, dramatic, musical or artistic work which is published anonymously or
pseudonymously, copyright shall subsist until sixty years from the beginning of the calendar year next following the
year in which the work is first published.
Under Section 24 in the case of a literary, dramatic or musical work or an engraving, in which copyright subsists at the
date of the death of the author, or in the case of any such work of joint authorship, at or immediately before the date of
the death of the author who dies last, but which, or any adaptation of which, has not been published before that date,
copyright shall subsist until sixty years from the beginning of the calendar year next following the year in which the
work is first published or, where an adaptation of the work is published in any earlier year, from the beginning of the
calendar year next following that year.
In the case of a photograph (Section 25), a cinematograph film (Section 26) and a sound recording (Section 27)
copyright shall subsist until sixty years from the beginning of the calendar year next following the year in which the
photograph, film and sound recording are published.
In the case of Government work (Section 28) and public undertaking (Section 28-A) work, where Government and
public undertaking are the first owner of the copyright therein, copyright shall subsist until sixty years from the
beginning of the calendar year next following the year in which the record/work is first published.
Under Section 29 in the case of a work of any international organization to which the provisions of Section 41 apply,
copyright shall subsist until sixty years from the beginning of the calendar year next following the year in which the
work is first published.

8 Copyright is territorial, i.e., limited within the boundary of the country. Section 13 (1) of the Act provides that
Subject to the provisions of this Section and the other provisions of this Act, copyright shall subsist throughout India.
Section 13 (2) further provides: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 a 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 a [work of architecture] the author is at the date of the making
of the work a citizen of India or domiciled in India; and

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basic objective of copyright law is to encourage and promote authorship and not ownership. The issue
of authorship/ownership divide is of seminal importance in copyright jurisprudence. Therefore, what
brings copyright into existence is also of salient significance. A literature review, however, reveals
that this question is a neglected question which creates a gap in copyright jurisprudence. The purpose
of this study, therefore, is to fill up this gap in the Indian copyright jurisprudence. It is submitted that
neither any book nor any article nor any judgment clearly and particularly identify and distinguish the
essential and desirable qualifications of copyright candidate for protection under existing copyright
law. It appears from a perusal of available literature that the question: what makes a work eligible for
protection under copyright law is either a non-issue or the answer is simply very clear and easy, i.e.,
(iii) in the case of [work of architecture] the work is located in India.

Article 5 (3) of the Berne Convention, 1886 provides:

Protection in the country of origin is governed by domestic law. However, when the author is not a national of
the country of origin of the work for which he is protected under this Convention, he shall enjoy in that country
the same rights as national authors.

Under Article 1.1 of the Trade Related Aspects of Intellectual Property Rights (TRIPS) provides:

Members shall give effect to the provisions of this Agreement. Members may, but shall not be obliged to,
implement in their law more extensive protection than is required by this Agreement, provided that such
protection does not contravene the provisions of this Agreement. Members shall be free to determine the
appropriate method of implementing the provisions of this Agreement within their own legal system and
practice.

9 See Sections 31, 31A, 32, 32A and 52 of the Act regarding limitations and exceptions to
copyright. Such limitations and exceptions are provided to further social good for the primary
purpose of law is to promote learning and make knowledge, information and other art accessible
to public.

10 See, The Federation of Hotels and Restaurants Association of India v. Union of India,
MANU/DE/1149/2011, para. 16. in which the Court observed:[T]he amendments carried out in the
Copyright Act, 1957 are calculated to guarantee a fair return to the authors, composers or lyricist or sound
recorders, as the case may be. There is no absolute, untrammeled or unbridled right existing or granted to
the public at large to enjoy fruits of such creation without any payment in recompense or for payments,
which the public may be willing to give.

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existence of copyright is automatic.12 Logically, therefore, there seems to be no need of probing into
this question. This simplicity however is terribly misleading and deceptive and seems to be far from
the truth. For example, the Courts have quashed criminal copyright infringement proceedings merely
on the ground that the work in question was not registered with the Registrar of copyright. 13 This
Paper, therefore, argues that neither the existence nor the enforcement of copyright is automatic. It is
submitted that even the most automatic machines made by man require something to trigger the
automation. This paper therefore seeks to identify and explain the factors which trigger the existence
of copyright. These factors may be identified as essential qualification and desirable
qualification. The essential qualifications are qualifications that a candidate must, and the desirable
qualifications are qualifications that a candidate may, possess to claim copyright. It is hypothesized
that a copyright candidate must possess three essential qualifications, namely: one, the candidate must
be a work in the copyright law sense; two, the work must be original in the copyright law sense and
three the work must be fixed on a tangible medium; and he may have two desirable qualifications
namely: firstly, the work may be published and secondly it may be registered with the copyright
office. It is submitted that the desirable qualifications do not bring copyright in a work in existence
but they do confer certain procedural and evidentiary advantages. It is further submitted that the
question of qualification of the candidate is generally raised in an infringement proceeding and not
only for determining whether a particular work is protected under copyright law. The claim of
copyright is a valid claim only if it is infringed.

For purposes of convenience, this paper is divided into six parts. First three parts deal with the
essential qualifications that a candidate must posses to claim copyright. Part - I seeks to identify the

11 Ghayur Alam, The Philosophy of Copyright Act in S. N. SAXENA ET AL (eds.),


SPOTLIGHTS ON INTELLECTUAL PROPERTY RIGHTS, 74 (Lucknow: New Royal Book
Co., 2005).

12 Mrinalini Kochupillai, The Protection and Utilization of Public Funded Intellectual Property Bill, 2008: A Critique
in the Light of Indias Innovation Environment, 15(1) JIPR 19, 27 (2010). Also see, Dr. Sreenivasulu, N.S. &
Nagarathna A., An Overview of Copyright Law in India, Legal Protection of Copyright, para. 6.
http://www.manupatrafast.in/pers/Personalized.aspx, last visited on 29-03-2012.Further see, JAYASHREE WATAL,
INTELLECTUAL PROPERTY RIGHTS IN THE WTO AND DEVELOPING COUNTRIES, 207(Oxford University
Press, 2005)(2001)
See, Challenger Knitting Mills v. Kothari Hosiery Factory, 2002 (24) PTC 756, 763 (CB).

13 B.K. Dani v. State of M.P. 2005CriLJ876(SB).


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candidates of the copyright. Part - II will explain the proposition that candidate must be a work in the
copyright law sense. Second part seeks to explain the threshold of originality in the sense of
copyright law for different types of candidates. Part - III seeks to explain the requirement of fixation
of the work, for different types of work, on a tangible medium for the existence of copyright.
Remaining two parts deal with the desirable qualifications of the candidate. Part IV deals with the
requirement of publication of the work. Part V deals with the requirement of registration of the work
with the copyright office. Part VI concludes.

Part I

Candidate of Copyright

In the light of the provisions Sections 2 (y) and 13 of the Act, candidate of copyright protection
is work. The term work in the copyright law sense is narrower than its ordinary sense. 14 In the
copyright law sense there are six numbers of works: original literary, dramatic, musical and
artistic works, on the one hand; cinematograph films and sound recordings on the other hand by

14 In the ordinary sense work means use of bodily or mental powers with the purpose of doing
or making something. See, OXFORD ADVANCED LEARNERS DICTIONARY OF
CURRENT ENGLISH, 992 (Delhi: Oxford University Press, 1987).
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virtue of the provisions of Section 2 (y) read with Section 13 15 of the Act. Literary work 16
includes computer programs17, tables and compilations including computer databases. The
definition of literary work is an inclusive18 one for it has employed the connector includes.
This definition is not a definition for it does not provide a test to determine as to what constitutes
a literary work for purposes of copyright law. In University of London Press Ltd.19 it was held
that The meaning of literary work has been explained to cover work which is expressed in print
or writing20, irrespective of the question whether the quality or the style is high 21. The Supreme
Court of India has divided literary work into two categories: (a) primary works and (b)

15 Section 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 a 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 a [work of architecture] the author is at the date of the
making of the work a citizen of India or domiciled in India; and
(iii) in the case of [work of architecture] the work is located in India.
Explanation.- in the case of a work of joint authorship, the conditions conferring copyright 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 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, if 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 or 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 of architecture copyright shall subsist only in the artistic character and design and shall
not extent to processes or methods of construction.

16 See Section 2 (o) of the Act.

17 Section 2(ffc) defines computer program to mean a set of instructions expressed in words,
codes, schemes or in any other form, including a machine readable medium, capable of causing a
computer to perform a particular task or achieve a particular result.

18 Fateh Singh Mehta v. O P Singhal, AIR 1990 Raj 8, 12.The definition of literary work given in
Section 2(o) of the Copyright Act, 1957 . . . is an inclusive definition and, therefore, not exhaustive. . .
Dissertation is, therefore, prima facie a literary work.

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secondary or derivative literary works. 22 In short literary work means works expressed in print
or writing. Printing or writing therefore is a necessary threshold, though not sufficient,
condition for protection of literary work under the copyright law.

Certain examples of literary work are: books 23, novels, songs and lyrics24, articles in journals,
question papers25, compilations26, abridgment27, catalogues and brochures28, computer
databases29, head notes and foot notes of judgments30 etc.

19 University of London Press Ltd. v. University Tutorial Press Ltd., (1916) 2 ChD 601, 608.
This case has been cited in Eastern Book Co. v D.B.Modak, AIR 2008 SC 809, 833.

20 Emphasis added. The idea that work which is expressed in print or writing recognizes the
requirement of fixation of expression on a tangible medium. See infra, Part III of this Paper.

21 Id. As per Peterson J.:Although a literary work is not defined in the Act, s. 35 states what the phrase
includes; the definition is not a completely comprehensive one, but the Section is intended to show what,
amongst other things, is The word literary seems to be used in a sense somewhat similar included in the
description literary work, and the words are Literary work includes maps, charts, plans, tables, and
compilations. It may be difficult to define literary work as used in this Act, but it seems to be plain that
it is not confined to literary work in the sense in which that phrase is applied, for instance, to Merediths
novels and the writings of Robert Louis Stevenson. In speaking of such writings as literary works, one
thinks of the quality, the style, and the literary finish which they exhibit. Under the Act of 1842, which
protected books, many things had no pretensions to literary style acquired copyright; for example, a list of
registered bills of sale, a list of foxhounds and hunting days, the trade catalogues; and I see no ground for
coming to the conclusion that the present Act was intended to curtail the rights of the authors. In my view
the words literary work cover work which is expressed in print or writing, irrespective of the question
whether the quality or style is high. The word literary seems to be used in a sense somewhat similar to the
use of the word literature in political or electioneering literature and refers to written or printed matter.

22 Eastern Book Co. v D.B.Modak, AIR 2008 SC 809, 830. The Court observed as under:Broadly speaking,
there would be two classes of literary works: (a) primary or prior works: These are the literary works not
based on existing subject-matter and, therefore, would be called primary or prior works; and (b) secondary
or derivative works: These are literary works based on existing subject-matter. Since such works are based
on existing subject-matter, they are called derivative work or secondary work.

23 See, Macmillan v. Suresh Chunder Deb, MANU/WB/0106/1890, para. 4. A book contained selected
poems of many English authors of various periods, the Court observed that: In the case of works not
original in the proper sense of the term, but composed of, or compiled or prepared from materials which are
open to all, the fact that one man has produced such a work does not take away from any one else the right
to produce another work of the same kind, and in doing so to use all the materials open to him. this
principle has been applied to maps, to road books, to guide books, to street directories, to dictionaries, to
compilations on scientific and other subjects.

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31
Dramatic work includes any piece for recitation, choreographic work or entertainment in
dumb show, the scenic arrangement or acting form of which is fixed in writing or otherwise but
does not include a cinematograph film. This definition is also an inclusive definition. It is in two
parts. Part one is inclusionary and part two is exclusionary. In Fortune Films International v.
Dev Anand,32 the question before the Court was whether the performance of an actor in a
cinematograph film is covered under the definition of artistic work or dramatic work.
Answering the question in negative and holding that the performance of an actor in a

24 Songs and lyrics are excluded from the definition of "musical work". See, Section 2 (p) of the
Act.

25 See, Jagdish Prasad Gupta v. Parmeshwar Prasad Singh, AIR1966Pat33, 35. In this case the question was that
whether copyright can exist in examination papers. The High Court observed that 'literary works' referred to in
Section 13 are not confined to works of literature in the commonly understood sense, but must be taken to include
all works expressed in writing, whether they have any literary merit or not. The Court referred to University of
London Press Ltd. v. University Tutorial Press Ltd., 1916-2 Ch 60, in which it was held that question papers set
for examinations were 'literary works because they were "work which is expressed in print or writing, irrespective
of the question whether the quality or style is high"; and it was further pointed out that "the word 'literary' seems
to be used in a sense somewhat similar to the use of the word 'literature' in political or electioneering literature and
refers to written or printed matter".Relying upon this observation, the Allahabad High Court in Agarwala
Publishing House v. Board of High School and Intermediate Education, AIR 1967All 91, and Delhi High Court
in The Chancellor Masters and Scholars of The University of Oxford v. Narendera Publishing House,
2008(38)PTC385(Del), 388 observed the same.

26 V. Govindan v. E.M.Gopalkrishna, AIR 1955 Mad 391, 393. the Court observed that:Many men have
not got the brains, skill and labour to compile dictionaries, gazetteers, grammars, maps, almanacs,
encyclopedias and guide books. Nor are all of such compilations of the same nature. Then it will be obvious
that only one dictionary gazetteer, grammar, map, almanac, encyclopedia or guide book will, sell, and not
the rest. Any man who refers to the Oxford Dictionary, Webster dictionary and Chambers dictionary can
easily find out the difference between these dictionaries. There is considerable difference in dealing with
the subject-matter. That, will be specially so when the dictionary is not of all the words in the language, but
of 'select words' considered suitable for high school boys,' where the very same words in one dictionary
being taken over to another and later dictionary will certainly prove piracy.
It further observed that:
It is clearly recognized that all these books are capable of having copyright in them. In law books and
books of" the above description, the amount of 'originality' will be very small," but that small amount is
'protected by law', and no man is entitled to steal or appropriate for himself the result of another's brain,
skill or labour even in such works.

27 See, Macmillan and Co. v. K. and J. Cooper, AIR 1924 PC 75. The Court observed:[A]bridgment of
an author's work means a statement designed to be complete and accurate of the thoughts, opinions and
ideas by him expressed therein, but set forth much more concisely in the compressed language of the
abridger. A publication of the text of which consists of a number of detached passages selected from an
author's work, often not contiguous, but separa.ted from those which precede and follow them by
considerable bodies of print knit together by a few words so as to give these passages, when reprinted, the
appearance as far as possible of a continuous narrative, is not an abridgment at all. It only expresses, in the

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cinematograph film is not covered under the definition of artistic work or dramatic work in
the copyright law sense the Court explained the meaning of dramatic work as under:

On a plain reading of the definition of dramatic work it is not possible to accept that
the motion picture could be regarded as a piece for recitation or a choreographic work or
entertainment in dumb show. Under the definition to be found in Sub-Section (h) of the
Copyright Act, 1957, only for a dramatic work of any of these three types specified i.e. (i)
piece for recitation, (ii) choreographic work or (iii) entertainment in a dumb show would
be included, and then further only where the scenic arrangement or acting form of which
(in the three types) is fixed in writing or otherwise. When this requirement is satisfied
then the work under consideration will amount to a dramatic work which will be
protected by the provision contained in the Copyright Act. It is true that the words or
otherwise are to be found in the definition of dramatic work. But in our opinion these
words are there, it seems, only to provide for the modern means of recording such as a
tape-recorder or a dicta phone and similar instruments. Again, it must be observed that
the concluding portion of the definition of dramatic work. . . excludes a cinematograph
film, would seem to clearly shut out any contention that the dramatic performance of a
cine artiste which is fixed or recorded in the film negative will be dramatic work within
the meaning of this definition and therefore protected by the Copyright Act. It is true that
original author's own words, some of the ideas, thoughts and opinions set forth in his work. And it is
obvious that the learning, judgment, literary taste and skill requisite to compile properly and effectively an
abridgment deserving that name would not be at all needed merely to select such scraps as these taken from
an author and to print them in a narrative form.

28 See, Lamba Brothers Pvt. Ltd. v. Lamba Brothers, AIR1993Delhi347. The High Court held that written
words or "expression" created by stringing words together is copyrightable subject matter; as "tables" are prepared
by expenditure of skill and labor such tables are also protected by copyright; photographs are copyrightable too. The
catalogue/brochure is, therefore, a combination of different types of copyrightable subject matter, which is afforded
protection under the Copyright Act, 1957.

29 Burlington Home Shopping Pvt. Ltd. v. Rajnish Chibber, (1995) 15 PTC 278, 284. The Court observed:
[O]n comparison of the data made available by the plaintiff with the data available on the floppies seized
from the custody of the defendant it is found that a substantial number of entries are compara.ble word by
word, line by line and even space by space. In some of the entries the locations of commas and full stop
(punctuation marks) are compara.ble. In a good number of entries spelling mistakes occurring in the
plaintiff's data are to be found in the data compilation of the defendant as well.

30 Eastern Book Co. v D.B.Modak, AIR 2008 SC 809.

31See Section 2(h) of the Act.

32 AIR1979Bom17.

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the definition is an inclusive definition; but it would not be permissible to extend it to
cover all cases where the work can be popularly described as exertions or efforts of a
dramatic nature. In this connection it may be clarified that we are not concerned with the
work on a stage or performance in a drama (which may be of several types) which may or
may not be covered by the definition of dramatic work. Again, the words fixed in
writing or otherwise would seem to suggest a point of time prior to the acting or scenic
arrangement, which requirement would be required to be satisfied before the work can
qualify to be a dramatic work and secure protection. It is debatable whether the record
of the acting or scenic arrangement made on a film after the scene is arranged or acting
done or contemporaneous therewith, would be covered by the definition.

Musical work 33 means a work consisting of music and includes any graphical notation of such
work but does not include any words or any action intended to be sung, spoken or performed
with the music.
This definition is in three parts. The first part is the main part which says musical work means
a work consisting of music. What constitutes music is not defined in the Act. The second
part of the definition is inclusionary and includes graphical notation of musical work. The third
part is exclusionary and unambiguously excludes words or any action intended to be sung,
spoken or performed with the music. Dictionary meaning of music is art of making pleasing
combinations of sounds in rhythm, harmony and counter point; the sounds and combinations so
made; written or printed signs representing these sounds 34. In the light of this dictionary
meaning it may be said that for the existence of music it is not necessary that it must be fixed on
a tangible medium. Nor it is necessary some musical instrument must have been used to compose
music. What if the combinations of sounds in rhythm are not pleasing but disgusting? It may be
argued that copyright law is not concerned with the dictionary meaning of music or with the
effect of music whether pleasing or disgusting or nauseating. For protection under the copyright
law it seems to be a necessary condition that combination of sounds in rhythm, harmony and
counter point is expressed in an original form and must be fixed on a tangible medium.

33 See Section 2(p) of the Act.

34 See, OXFORD ADVANCED LEARNERS DICTIONARY OF CURRENT ENGLISH, 557


(Delhi: Oxford University Press, 1987).
Page 20 of 255
Artistic work 35 means (i) a painting, a sculpture36, a drawing (including a diagram, map, chart
or plan), an engraving37 or a photograph38, whether or not any such work possesses artistic
quality; (ii) a work of architecture 39; and (iii) any other work of artistic craftsmanship. This
definition lists seven types of works. In case of a painting, a sculpture, and drawing the definition
explicitly provides that the artistic quality of such works has nothing to do with the
copyrightability of the work. In Aananda Expanded40 the works submitted for registration were
reproduction of a series of fonts comprising of alphabets in Bengali language and some other
symbols. The issue before the Registrar was whether fonts/typefaces can be registered as artistic
work. The Registrar observed that there are artistic works which are beyond protection of
copyright as artistic work. If any country desires to protect works of applied art it will have to
provide a term of protection also. Fonts/Typefaces are clearly works of applied art, hence if they
are protected the term of protection will also have to be provided in the Act. Unless such specific
provisions exist, a work does not get protection under copyright. This is clear from Section 16 of
our Act also. The Copyright Board held that typeface design does not constitute a work, which is
entitled copyright protection under the Act. Meaning of artistic work in the copyright law sense,
therefore, is narrower than its ordinary meaning.

Cinematograph film 41 means any work of visual recording on any medium produced through a
process from which a moving image may be produced by any means and includes a sound
35 See Section 2(c) of the Act.

36 Work of sculpture includes casts and models. See Section 2 (za) of the Act.

37 Engravings include etching, lithographs, wood-cuts, prints and other similar works, not
being photographs. See Section 2 (i) of the Act.

38 Photograph includes photo-lithograph and any work produced by any process analogous to
photography but does not include any part of a cinematograph film. See Section 2 (s) of the Act.

39 Work of architecture means any building or structure having as artistic character or design,
or any model for such building or structure. See Section 2 (b) of the Act.

40 2002(24)PTC427(CB) Zakir T. Thomas, Registrar delivered the opinion.

41 See Section 2(f) of the Act.


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recording accompanying such visual recording and cinematograph shall be construed as
including any work produced by any process analogous to cinematography including video
films. In comparison to the definitions of other types of works, this definition seems to be
exhaustive. Necessary conditions for a work to be a cinematograph film are: (i) there must be a
visual recording, and (ii) that recording must be produced through a process from which a
moving image may be produced. In short a cinematograph film is a combination of moving
visual recording which can be reproduced. The Act has created a separate copyright in respect of
a cinematograph film.42 Section 13 of the Act recognizes cinematograph film as a distinct and
separate class of work.43 Owing to the scientific advancement, the technologies those are
analogous to produce the same result, as that of a cinematograph film had, been held by Courts 44
to be included under the definition of a cinematograph film. Before the amending Act 38 of
199445 the Courts have declared that television and video films are cinematograph film 46 but after

42 See, Entertaining Enterprises, Madras v. State of Tamil Nadu, AIR 1984 Mad 278 (DB).

43 See, Indian Performing Right Society Ltd. v.Eastern Indian Motion Pictures Association,
[1977]3SCR206.

44See,Entertaining Enterprises, Madras v. State of Tamil Nadu, AIR 1984 Mad 278; Tulsidas v.
Vasanthakumari, [1991] 1 LW 220 and Cine India v. Muthu Enterprises, [1992] 1 LW 74.

45 Amendment was brought into force with effect from May 10, 1995.

46 See, Entertaining Enterprises, Madras v. State of Tamil Nadu, AIR 1984 Mad 278, 290
in which it was observed:As a result of the inclusive definition of cinematograph film including any
work produced by any process analogous to cinematography, the exhibition of film right was recognized in
a television through video tapes in which a cinematograph film is recorded, will also fall within the
definition of cinematograph film.
Though there is no separate provision creating a copyright in a video film, we have to hold that since video
tape comes within the expression cinematograph film in view of the extended definition contained in the
Act, the copyright should also be taken to have been created in respect of a video film under the Copyright
Act, 1957.
In Raj Video Vision v. K. Mohanakrishnan, AIR 1998 Mad 294, 298 in which the Court has observed:
In Rathna Movies v. Muthu Enterprises (1991) 2 LW 581, 586 this Court held that it is well established
principle of case laws that both the video and television are cinematograph and that both jointly and
severally become the appara.tus for representation of movie pictures or series of pictures, and that the video
is an appliance capable of, use for the reception of sign, signals, images and sounds. When a Video Cassette
Recorder is used for playing pa-recorded cassettes of movies on the television screen it is certainly used as
art appara.tus for the representation of moving pictures or series of pictures and comes within the definition
of cinematograph as defined under the Cinematograph Act.
The above decision has to be affirmed for the proposition that both video and television are cinematograph.

Page 22 of 255
this amendment the Parliament has put this controversy at rest by expressly including video films
in the definition of cinematograph film. The copyright in a cinematograph film is infringed only
when actual copy is made of a film by a process of duplication i.e., by using mechanical
contrivance that it falls under Section 14(d) (i). The expression to make a copy of the film
would mean to make a physical copy of the film itself and not an another film which merely
resembles the film.47 In order to constitute infringement of copyright two elements must be
present. First, there must be sufficient objective substantial similarity between the allegedly
infringing cinema and the copyrighted cinema. Secondly, the copyrighted cinema must be the
source from which the infringing work is derived, but, it need not be the direct source. 48 It is
therefore, abundantly clear that a protectable copyright comes to vest in a cinematograph film on
its completion which is said to take place when the visual portion and audible portion are
synchronized.49

Sound recording 50 means a recording of sounds from which such sounds may be produced
regardless of the medium on which such recording is the method by which the sounds are
produced. This definition is exhaustive. In short sound recording is a recording of sounds
which can be reproduced. In Gramophone Co. of India Ltd. v. Supper Cassette Industries Ltd.,
the Court observed as under:

[P]rinted or written word or something graphically produced or reproduced relates to the


visual and in some cases to the sensation of touch. A written or printed word produces no
sensation in the organs of hearing. Sound, on the other hand, produces such sensation
when the surrounding air is set in vibration in such a way as to affect these. Sound, thus,
is not a printed or written word. It is the audible articulation corresponding to them.51

47 See, Star India Pvt. Ltd. v Leo Burnett (India) Pvt. Ltd., MANU/MH/1030/2002. para 6.

48 See, Raj Video Vision v. K. Mohanakrishnan, AIR 1998 Mad 294, 297.

49 See, Indian Performing Right Society Ltd. v.Eastern Indian Motion Pictures Association,
[1977]3SCR206, 221.

50 See Section 2 (xx) of the Act.

51 See, Gramophone Co. of India Ltd. v. Supper Cassette Industries Ltd., MANU/DE/0696/1995,
para. 13.
Page 23 of 255
Explaining the meaning of sound recording the Court observed:

The definition of sound recording in Section 2(xx), in fact, distinguishes between the
material/medium on which the sound is recorded and the recording itself. This is clear
from the use of the words in the definition means a recording of sounds and not the
words means the material containing the recording of sounds. Secondly the words in
Section 2(xx): regardless of the medium on which such recording is made or the method
by which the sounds are produced militates against ...[the] submission[s], both as
regards the medium on which the recording is made as well as the method by which the
recording is made and the sounds are produced from such medium[52]. The copyright
subsists, therefore, in the sound recording meaning thereby that particular recording of
the musical and literary work transposed on the medium by any process. ... [T]his does
not obliterate the separate copyright that exists in the underlying musical and literary
works independent of or otherwise than as contained in the authorized sound recording.
It can hardly be suggested that the producer of the sound recording has a copyright in the
hardware/medium. He cannot possibly acquire a copyright, if there is one, in hardware by
recording therein a performance of musical and literary works. Nor can he thereby
possibly acquire a copyright, assuming there is one, in the technological process of
recording sounds on to a medium. The producer of a sound recording would then not
acquire a copyright in anything at all. The interpretation would render Section 14 (e) (i)
otiose.53
While interpreting the provisions of Section 14 (e) (i) & (iii) of the Act as to the meaning and
scope of copyright in sound recording, the Court further observed:

That this interpretation is erroneous is also clear from Section 14 (e) (iii) which permits
the owner of a copyright in a sound recording to communicate the sound recording to the
public.

Section 14(e)(iii) entitles him to communicate the sound recording to the public.

52 See, Music Broadcast Private Ltd. v. IPRS, MANU/MH/0923/2011, para. 25. It was argued by one of
the parties that:
[A] sound recording is only the medium i.e. the hardware such as a compact disc, cassette or
record on which the recording is made and from which sounds are produced. This, he stated, was
the product of technological developments and innovations over the years entailing the
fixing/fixation of sounds on a particular medium. In other words, according to him, a sound
recording comprises of the hardware and the technical process of recording the sounds and
nothing more. It does not include the sounds viz. the musical and literary works.
The above argument was disapproved by the court which observed that, The submission is contrary to
the plain language of Section 2(xx). In [such a] case the section would have been worded entirely
differently.

53 See, Music Broadcast Private Ltd. v. IPRS, MANU/MH/0923/2011, para. 26, 27.
Page 24 of 255
The [argument] that sound recording only means the material / hardware and the
technological innovation in making the same and nothing more, if accepted, would in
effect require Section 14 (e)(iii) to be read thus:

to communicate the material on and the technological process by which the sounds are
recorded to the public.54

The Court further observed:

The owner of the material/hardware does not communicate the material/hardware even
assuming he is the owner of the copyright, in the hardware. It is difficult to understand
how hardware can be communicated to the public especially by broadcasting it. It is
equally difficult to see how the technological or scientific innovation enabling the making
of a sound recording is or can be communicated to the public by broadcasting the sound
recording. The listener of a broadcast on an FM station does not see the hardware when
the sound recording is broadcast. The listener does not see or hear the technological or
scientific innovation. Neither of these elements can be communicated to the public. It is
axiomatic, therefore, that what the Legislature intended by Section 14(1)(e)(iii) was the
right to communicate the sound recorded on the material by whatever device.55
In the light of above discussion, this Part of the Paper may be concluded by noting that as to the
meaning of work in the sense of copyright law, the work must be a work in the sense of the
provisions of Section 13 read with Section 2 (y) of the Act. The Supreme Court has observed that
the types of work are not exclusive of each other, but one work may have an interface with the
other.56 In this Part we have identified the candidate eligible for the protection of copyright. Now
we move on to explain the requirement of originality, the second essential qualification that the
candidate must possess to claim protection under the copyright law.

Part II

Requirement of Originality

54 See, Music Broadcast Private Ltd. v. IPRS, MANU/MH/0923/2011, para. 28.

55 See, Music Broadcast Private Ltd. v. IPRS, MANU/MH/0923/2011, para. 29.

56 See, Academy of General Edu., Manipal v. B. Malini Mallya, AIR 2009 SC 1982, 1987(FB), the Court
observed as under :Broadly speaking, a dramatic work may also come within the purview of literary work
being a part of dramatic literature.

Page 25 of 255
The term original has been used in the Act. But the same has not been defined or explained by
or under the Act. Dictionary meaning of the term original is first or earliest . . . newly formed
or created; not copied or imitated57. It is italicized dictionary meaning which is relevant for our
purposes. The term originality in the copyright law sense is narrower than its dictionary sense.

As per the Copyright Act, 1957, the classification of works in which copyright subsists has been
provided in Section 13. Therefore, emphasis is on the originality.58 To claim protection under
the copyright law a work is required to be original though the threshold of originality varies from
work to work. Section 13 of the Act provides as under:

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;
Section 13 recognizes three classes of work in which copyright can subsist. The works
enumerated in clause (a) of Section 13 have a qualifier original. But the works mentioned in
clauses (b) and (c) do not have the qualifier original. It follows from here that originality is
an essential qualification for the works mentioned in clause (a). But for the works mentioned in
clauses (b) and (c) there seems to be no requirement of originality59. However, the provisions of
Section 13 (3) makes it abundantly clear that even in case of cinematograph film and sound
recording copy of copyrighted work will disqualify such works from copyrightablity.60

57 See, OXFORD ADVANCED LEARNERS DICTIONARY OF CURRENT ENGLISH, 592


(Delhi: Oxford University Press, 1987).

58 Glaxo Orthopaedic U.K. Ltd. v. Samrat Pharm AIR 1984 Delhi 265.

59 In Eastern Book Co. v D.B.Modak, AIR 2008 SC 809, 829. the Court observed:Copyright Act of 1957,
which is the current statute, has followed and adopted the principles and provisions contained in the U.K.
Act of 1956 along with introduction of many new provisions.
Reference on this point therefore can be made to Hansard, H.L. Vol.493, cols 1057; HL Deb 23 February 1988 vol.
493 cc1054-120 for the proposition that the requirement of 'originality' is deliberately omitted in case of "sound
recording" and "cinematograph film".

60 See infra Part 2.5 of this Paper.


Page 26 of 255
Now we move on to explain the meaning of originality in general as enunciated by the Courts. In
Eastern Book Company, the Supreme Court explaining the meaning of originality observed as
under:

The word original does not mean that the work must be the expression of original or
inventive thought. Copyright Acts are not concerned with the originality of ideas, but
with the expression of thought, and in the case of literary work, with the expression of
thought in print or writing. The originality which is required relates to the expression of
the thought. But the Act does not require that the expression must be in an original or
novel form, but that the work must not be copied from another work - that it should
originate from the author; and as regards compilation, originality is a matter of degree
depending on the amount of skill, judgment or labor that has been involved in making the
compilation. The words literary work cover work which is expressed in print or writing
irrespective of the question whether the quality or style is high. The commonplace matter
put together or arranged without the exercise of more than negligible work, labor and
skill in making the selection will not be entitled to copyright. The word original does
not demand original or inventive thought, but only that the work should not be copied but
should originate from the author. In deciding, therefore, whether a work in the nature of a
compilation is original, it is wrong to consider individual parts of it apart from the whole.
For many compilations have nothing original in their parts, yet the sum total of the
compilation may be original. In such cases the courts have looked to see whether the
compilation of the unoriginal material called for work or skill or expense. If it did, it is
entitled to be considered original and to be protected against those who wish to steal the
fruits of the work or skill or expense by copying it without taking the trouble to compile
it themselves. In each case, it is a question of degree whether the labor or skill or
ingenuity or expense involved in the compilation is sufficient to warrant a claim to
originality in a compilation.
Originality therefore means not a copy. The meaning of copy is also not given in the Act.
However, the term infringing copy is defined at two places in the Act. Section 2 (m) of the Act
provides as under:

infringing copy means:

(i) in relation to a literary, dramatic, musical or artistic work, a reproduction thereof


otherwise than in the form of a cinematograph film;

(ii) in relation to a cinematograph film, a copy of the film made on any medium by
any means;

(iii) in relation to a sound recording, any other recording embodying the same sound
recording, made by any means;

Page 27 of 255
(iv) in relation to a program or performance in which such a broadcast reproduction
right or a performers right subsists under the provisions of this Act, the sound
recording or a cinematograph film of such program or performance,

if such reproduction, copy, or sound recording is made or imported in contravention of


the provisions of this Act.

Explanation to the provisions of Section 51 of the Act provides:


For 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.
The gist of copy therefore seems to be reproduction61. In R.G. Anand v. Deluxe Films62for the
meaning of originality reference was made to an English decision for the proposition that a
copy is that which comes so near to the original as to give to every person seeing it the idea
created by the original63.

Therefore, we may say that what is not original is a copy and a copy gives an irresistible
impression of the original. Both the terminologies copy and original are referral points of
each other and are both a determinant and determined at once. These terms are
complementary and supplementary to each other and are circuitous by nature. The Supreme

61See Ladbroke (Football), Ltd v. William Hill (Football), Ltd. [1964] 1 All E.R. 465, 469. Lord Reid
observed as under:Broadly, reproduction means copying, and does not include cases where an author or
compiler produces a substantially similar result by independent work without copying. If he does copy, the
question whether he has copied a substantial part depends much more on the quality than on the quantity of
what has been taken. One test may be whether the part which he has taken I novel or striking, or is merely a
commonplace arrangement of ordinary words or well-known data. So I may sometimes be a convenient
shortcut to ask whether the part taken could by itself be the subject of copyright. But, in my view, that is
only a short cut, and the more correct approach is first to determine whether the plaintiffs work as a whole
is original and protected by copyright, and then to inquire whether the part taken by defendant is
substantial. A wrong result can easily be reached if one begins by dissecting the plaintiffs work and asking,
could Section A be the subject of copyright if it stood by itself, could Section B be protected if it stood by
itself , and so on. To my mind, it does not follow that, because the fragments taken separa.tely would not be
copyright, therefore the whole can not be. Indeed, it has often been recognized that if sufficient skill and
judgment have been exercised in devising the arrangements of the whole work, that can be an important or
even decisive element in deciding whether the work as a whole is protected by copyright.

62 R.G.Anand v. Delux Films, [1979]1SCR218.

63 See Hanfstaengl v. W.H. Smith and Sons [1905] 1 Ch. D. 519 cited in R. G. Anand,
[1979]1SCR218, 230.
Page 28 of 255
Court has said it time and again that copy must be a substantial and material one which at
once leads to the conclusion that the defendant is guilty of an act of piracy. 64

As to the provisions of subsections (2) and (3) of Section 13 65 of the Act, it has been observed by
the Court that:

The rights of the owners of the copyrights in each type of work are prescribed by the
provisions of the Act.
Chapter IV deals with the ownership of copyright and the rights of the owner. Section 14
stipulates the exclusive right to do or authorize the doing of the acts mentioned therein in
respect of a work or any substantial part thereof. Rights which may be exercised in
respect of each class of work are stipulated in Section 14. Section 14 does not indicate
any order of priority between the different classes of works. Nor does it place any
particular work above the others. It merely prescribes the rights that can be exercised in
respect of each class of work.66
According to the Supreme Court of India:
The definition of the term ... sound recording must be given a wide meaning. Clause (a)
of Section 13 protects original work whereas Clauses (b) and (c) protect derivative works.
It provides for commercial manifestation of original work and the fields specified therein.
Clause (a) of Sub-Section (1) of Section 14 deals with original work. It is extremely
broad. In contrast thereto, the copyright on films or sound recording work operates in
restrictive field; they provide for a restrictive right as would appear from the provisions
contained in Section 14(1) (e) of the Act.67

64 See Academy of General Edu., Manipal v. B. Malini Mallya, AIR 2009 SC 1982 (FB).

65 Section 13(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 a
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 [a work of architecture] the author is at the date
of the making of the work a citizen of India or domiciled in India; and
(iii) in the case of work of architecture the work is located in India.
Explanation.- in the case of a work of joint authorship, the conditions conferring copyright
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 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, if in making the
sound recording, copyright in such work has been infringed.

66 Music Broadcast Private Ltd. v. IPRS, MANU/MH/0923/2011, para. 22.


Page 29 of 255
While explaining the differences between the Section 13 (1) (a) and that of (b) & (c) the Supreme
Court further observed as under:

It must also be noticed that whereas the term of a copyright in original literary, dramatic,
musical and artistic works not only remains protected in the entire life time of the author
but also until 60 years from the beginning of the calendar year next following the year in
which the author dies, the term of copyright in sound recording subsists only for 60 years,
but as indicated hereinbefore, the same would not mean that the right of an owner of
sound recording is in any way inferior to that of right of an owner of copyright on
original literary work etc.68
In another case the Court observed as under:
[A]lthough Clauses (b) and (c) of Section 13 protects derivative works in a restricted
field, whereas Clause (a) thereof protects original works in a broader field, it does not
mean that the rights of an owner of a sound recording are, in any way, inferior to those of
an owner of copyright in the original literary or musical work.69
Now we move on to explain the threshold of originality as enunciated by the Courts for each
type of works in particular.

2.1 Threshold of Originality in Literary Work


Although the Courts have observed that a copyright is merely the right of multiplying copies of
a published writing and has nothing to do with the originality or literary merits 70, yet this paper
argues that originality is an essential qualification of the claimant of copyright. In University of
London Press, Limited v. University Tutorial Press, Limited71 it has been observed:

67 Entertainment Network (India) Ltd. v. Super Cassette Industries, 2008(37)PTC353(SC).

68 Entertainment Network (India) Ltd. v. Super Cassette Industries, 2008(37)PTC353(SC).

69 Music Broadcast Private Ltd. v. IPRS, MANU/MH/0923/2011.

70 Macmillan and Company Ltd. v K. And J. Cooper MANU/MH/0175/1923, para. 33,The Court observed:
Lord Davey in his judgment pointed out that copyright is merely the right of multiplying copies of a
published writing and has nothing to do with the originality or literary merits of the author or composer,
and that the appellant in that particular case only sought to prevent the respondents from multiplying copies
of this (the appellant's own report of the speech of Lord Rosebery) and availing himself for his own profit
of the skill, labor and expense by which that report was produced and published.

71 University of London Press, Limited v. University Tutorial Press, Limited [1910] 2 Ch 601.
Also see, Macmillan And Company Ltd. v K. And J. Cooper MANU/MH/0175/1923and Camlin
Page 30 of 255
The word original does not in this connection mean that the work must be the
expression of original or inventive thought. Copyright Acts are not concerned with the
originality of ideas, but with the expression of thought; and in the case of literary work,
with the expression of thought in print or writing. The originality which is required
relates to the expression of the thought. But the Act does not require that the expression
must be in an original or novel form, but that the work must not be copied from another
work- that it should originate from the author.

In Ladbroke (Football) Ltd.72 while dealing with the concept of originality and infringement in a
compilation work the Court held that:

The correct approach in deciding if there is infringement of copyright in a literary


compilation is first to determine whether the work as a whole is entitled to copyright, and
second, to enquire whether the part reproduced by the defendant is a substantial part of
the whole; but it is not the correct approach to dissect the work into fragments and, if the
fragments are not entitled to copyright, to deduce that the whole compilation could not be
so entitled. 73

Courts have recognized that it is not possible to lay down a precise test to determine originality.
It is much easier to arrive at what does not; than to define what does constitute the proper test 74.
So it depends on the subject matter put to test as well as on the facts of the individual case,
wherein all the reasons may not be explained in words but the effect produced upon the mind 75

Private Limited v National Pencil Industries, [2002] 96 DLT 8.

72 Ladbroke (Football), Ltd v William Hill (Football), Ltd. [1964] 1 All E.R. 465.

73 Ladbroke (Football), Ltd v William Hill (Football), Ltd. [1964] 1 All E.R. 465.

74 House of Lords in Hanfstaengl v. Baines and Co., [1895] A. C. 26, Lord Watson states:The possibility of
laying down any canon which will afford in every case a useful test of what constitutes a copy or
colourable imitation of the work or its design is in my opinion, very doubtful. At all events, it is much
easier to arrive at what does not than to define what does constitute the proper test.

75 In C. Cunniah and Co. v Balraj and Co. [1961] AIR Mad111, the Court held:In arriving at a conclusion
, we find ourselves In a predicament being unable to put into words all the reasons for our conclusion,
though we are certain that the effect produced upon our minds by a study of the two pictures is that the
defendants picture is a copy of the plaintiffs'.
Also, the Court goes on to quote Lord Herschell L. C. in Hanfstaengl v. Baines and Co., as under:
Lord Herschell L. C. in delivering his speech if that case, after referring to the similarities and
dissimilarities which led him to conclude that the defendants' sketches were not copies of the plaintiffs
printing, concluded thus:

Page 31 of 255
helps the judges to reach a conclusion. The issue must be solved by the judiciary by taking each
of the works to be compared as a whole, 76so as to comparatively determine the degree of
imitation of the original work. It should be analyzed by the Courts that, whether any mischief
which the Act has been designed to repress has been committed by the infringing party77.
In view of the above it may be said that:

i. The word original does not in this connection mean that the work must be the
expression of original or inventive thought.

ii. Copyright Acts are not concerned with the originality of ideas, but with the expression of
thought; and in the case of literary work, with the expression of thought in print or
writing.

The requirement of originality contributes in maintaining the interests of the author as well as
that of public in protecting the matters in public domain 78that is you cannot take the work from
the public domain and claim copyright for it. The word original used in Section 13 does not
imply any originality of ideas but merely means that the work in question should not be copied

"My Lords, it is difficult, if not impossible, to put into words all the reasons which lead to the conclusion
arrived at on such a question as that now before your Lordships. I have tried to Indicate some of those
which have led me to my conclusion; but it depends really on the effect produced upon the mind by a study
of the picture, and of that which is alleged to be a copy of it, or at least of its design."

76 House of Lords in Hanfstaengl v. Baines and Co., [1895] A. C. 26, according to Lord Shand:All that can
I think be said is that the question of infringement of the right depends on the degree of resemblance. It
must be solved by taking each of the work to be compared as a whole and determining whether there is not
merely a similarity or resemblance in some leading feature or in certain of the details, but whether, keeping
in view the idea and general effect created by the original, there is sucha degree of similarity as would lead
one to say that the alleged infringement is a copy or reproduction of the original or the design having
adopted its essential features and substance.

77 House of Lords in Hanfstaengl v. Baines and Co., [1895] A. C. 26 , Lord Macnaghten observed:If the
object of the Act be to protect the reputation of the artist and to preserve the commercial value of the
artists work complained of are not within the mischief which the Act was designed to repress they
cannot I think by any possibility have any injurious effect on the artists reputation,commercial value of
artists work, or come into competition with it, or reproduction of it. In these circumstances, in a case in
which there has been no unfair use and no copying of anything which the artist can claim as his, it
would be straining the Act unduly and using it to no good purpose to any relief under the provisions of
the Act.

78 Eastern Book Co. v. D.B.Modak, AIR 2008 SC 809.


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from some other work but should originate from the author, being the product of his labor and
skill79. For originality neither an original thought nor original research is a required 80. A work of
compilation may be a mediocre one, but if involves labor and skill 81 it meets the requirement of
originality. Extent or amount of originality in expression or material form may be very small, but
that small amount is protected by law 82. Whether enough work, labor and skill is involved, and
what its value is, must always be a question of degree. 83 Therefore much depends on the skill,
labor, knowledge and the capacity to digest and utilize the raw materials contributed by others in
imparting to the product the quality and character which those materials did not possess and
which differentiates the product from the materials used 84. In other words, the whole of the
expression must be more than the sum total of the expression available in the public domain. The
fact that one man has produced a work, does not take away from any one else the right to

79 Agarwala Publishing House v. Board of High School and Intermediate Education. AIR 1967
All 91.

80 Mishra Bandhu Karyalaya v. Shivaratanlal Koshal AIR 1970 MP 261.Neither original thought nor
original research is essential for a literary work to be original under Section 1, Schedule I, of the Indian
Copyright Act, 1914.

81 Jadish Prasad Gupta v. Parmeshwar Prasad Singh AIR 1966 Pat 3.A syllabus is prescribed for the
examination in each subject and in setting questions the paper-setter has to keep in view the syllabus and
the questions must be set within the four corners of that syllabus. The questions should not be lengthy as
they have to be answered within specified hours. The questions should be such so that they cover the entire
syllabus as far as practicable. These things have to be kept in constant view by a paper-setter and he has to
devote himself and apply his mind for the purpose of selecting and arranging the questions, even if he
chooses to take the help of some text books for picking out his questions. Section 2(c) itself indicates that
"literary work" includes compilations as well.

82 Govindan v. Gopalkrishna AIR 1955 Mad 393.

83 Ladbroke (Football), Ltd v. William Hill (Football), Ltd. [1964] 1 All E.R. 465, 475. Lord Hodson
observed as under:[C]ommonplace matter put together or arranged without the exercise of more than
negligible work, labor and skill in making the selection will not be entitled to copyright. (quoting Lord
Porter in Cramp & Sons, Ltd. v. Frank Smythson Ltd [1944] 2 All E.R.at p. 97; [1944] A.C. at p. 340.).
Whether enough work, labour and skill is involved, and what its value is, must always be a question of
degree.

84 V Errabhadrarao v. B N Sarma AIR 1960 AP 415.


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produce another work of the same kind and in doing so to use all the materials open to him 85. Not
every author has the art or the necessary skill to make a compilation nor all compilations are of
the same nature or quality86. All books are capable of having a copyright in them.87 Originality
does not mean that the composition must be new, non-obvious and revolutionary as most of the
literary works are incremental and evolutionary in character.88. Where the theme is the same but
is presented and treated differently so that the subsequent work becomes a completely new work,
no question of violation of copyright arises.89 . It is a well-accepted principle of copyright law
that there is no copyright in the facts per se, as the facts are not created nor have they originated
with the author of any work which embodies these facts 90. However, work having some character

85 Macmillan v. Suresh Chunder Deb [1890] ILR 17 Cal 951. The Court observed as under:In the case of
works not original in the proper sense of the term, but composed of, or compiled or prepared from materials
which are open to all, the fact that one man has produced such a work does not take away from any one else
the right to produce another work of the same kind, and in doing so to use all the materials open to him.

86 Mishra Bandhu Karyalaya v. Shivaratanlal Koshal AIR 1970 MP 261, the Court observed that:[T]he
originality in writing of a successful text-book in a subject like arithmetic lies upon the skill of the author.
Some authors have not the art or the necessary skill to make a compilation nor are all compilations of the
same nature or quality. That is the reason why one dictionary, gazetteer, grammar, map, almanac,
encyclopedia, guide-book, etc., would sell and not the others. There lies the skill of the author of the work
which brings to him commercial success. The contention that no originality can be claimed in such works
can, therefore, hardly be accepted. For instance, a reference to the Shorter Oxford Dictionary or the
Webster's New International Dictionary would plainly show the difference in treatment of the same words
in contrasting ways.

87 In Mishra Bandhu Karyalaya v. Shivaratanlal Koshal AIR 1970 MP 261.the Court further held:Thus, it
is clearly recognized that all such books are capable of having a copyright in them. In text-books on
arithmetic or books of the above description, the amount of originality of the author may be small, but the
extent of his thought, skill and labour may be tremendous, and it is that which is protected by law.

88 V Errabhadrarao v. B N Sarma AIR 1960 AP 415.By an original composition we do not mean to


convey that it is confined to a field which has never been traversed hitherto by any other person or persons,
either in respect of ideas or material comprised therein. Indeed such contributions are few, as most works
must depend upon the contribution of others, using them as steps in aid of reaching a particular object
which may be original In its design and conception.

89 Academy of General Edu., Manipal v. B. Malini Mallya ([2009]1SCR615)(FB).

90 Eastern Book Co. v. D.B.Modak, AIR 2008 SC 809. Also see R.G. Anand v. Delux Films,
[1979]1SCR218.
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and quality of its own different from the raw material91 used may not qualify as an original
work.

The Supreme Court in the Eastern Book Company v. D. B. Modak considered the two doctrines
followed by the courts these are (i) doctrine of Sweat of the Brow 92 and (ii) doctrine of
Creativity93. The Court describing these two doctrines as too low and too high standard of
originality constructed a middle path - following CCH Canadian Ltd. v. Law Society of Upper
Canada94- of modicum of creativity, minimum amount of creativity or some amount of

91 Nag Book House v. State of West Bengal, AIR 1982 Cal 245.The syllabi merely prescribing the
guidelines to be followed by the textbook writers cannot be termed as an original work having some
character and quality of its own different from the raw material used.

92 The Supreme Court referred to the following case law:Ladbroke (Football) Ltd. v. Willim Hill (Football) Ltd.,
Walter v. Lane [1900] AC 539 (HL), Designers Guild Ltd. v. Russell Williams (Textiles) Ltd, University of London
Press Limited v. University Tutorial Press Limited [1916] 2 Ch 601, Kelly v. Morris, Parry v. Moring and
Gollancz, Cop Cas, Gopal Das v. Jagannath Prasad and Anr. MANU/UP/0148/1938, V . Govindan v. E.M.
Gopalakrishna Kone and Anr. MANU/TN/0165/1955, C. Cunniah S Co. v. Balraj S Co. MANU/TN/0167/1961,
Agarwala Publishing House v. Board of High School and Intermediate Education MANU/UP/0031/1967,
Gangavishnu Shrikisondas v. Moreshvar Bapuji Hegishte ILR 13 Bom 358, Rai Toys Industrie. v. Munir Printing
Press 1982 PTC 85, Macmillan and Anr. v. Suresh Chandra Deb ILR 17 Cal 952.

93 The Supreme Court referred to the following case law:Feist Publications Inc. v. Rural Telephone Service Co.
Inc, Matthew Bender & Co., Inc. v. West Publishing Co. 158 F.3d 674 (2nd Cir. 1933), Key Publications, Inc. v.
Chinatown Today Publishing Enterprises, Inc., Macmillan and Co. v. K. and J. Cooper.

94 The Supreme Court of Canada in the matter of CCH Canadian Ltd. v. Law Society of Upper Canada
2004 (1) SCR 339 (Canada) has noticed the competing views on the meaning of original. The court held
that:[T]hose cases which had adopted the sweat of the brow approach to originality should not be
interpreted as concluding that labor, in and of itself, would be a ground for finding of originality On
consideration of various cases, it was held that to be original under the Copyright Act the work must
originate from an author, not be copied from another work, and must be the product of an author's exercise
of skill and judgment. The exercise of skill and judgment required to produce the work must not be so
trivial that it could be characterized as a purely mechanical exercise. Creative works by definition are
original and are protected by copyright, but creativity is not required in order to render a work original. The
original work should be the product of an exercise of skill and judgment and it is a workable yet fair
standard. The sweat of the brow approach to originality is too low a standard which shifts the balance of
copyright protection too far in favor of the owner's right, and fails to allow copyright to protect the public's
interest in maximizing the production and dissemination of intellectual works. On the other hand, the
creativity standard of originality is too high. A creative standard implies that something must be novel or
non-obvious - concepts more properly associated with patent law than copyright law. By way of
contrast, a standard requiring the exercise of skill and judgment in the production of a work avoids these
difficulties and provides a workable and appropriate standard for copyright protection that is consistent
with the policy of the objectives of the Copyright Act. Thus, the Canadian Supreme Court is of the view
that to claim copyright in a compilation, the author must produce a material with exercise of his skill and
judgment which may not be creativity in the sense that it is not novel or non-obvious, but at the same time

Page 35 of 255
creativity based on skill and judgment applied by the author to a primary work to create a
derivative work. The Supreme Court made it categorically clear that:

We make it clear that the decisions of ours would be confined to the judgments of the
courts which are in the public domain as by virtue of Section 52 of the Act there claim
copyright in a compilation, the author must produce the material with exercise of his skill
and judgment which may not be creativity in the sense that it is novel or non-obvious,
but at the same time it is not a product of merely labor and capital. The derivative work
produced by the author must have some distinguishable features and flavor to raw text of
the judgments delivered by the court. The trivial variation or inputs put in the judgment
would not satisfy the test of copyright of an author.
In view of the above observation of the Court, there remains no doubt that the middle path of
modicum of creativity, minimum amount of creativity or some amount of creativity based
on skill and judgment is the test of originality confined to the judgments of the Court. The
Supreme Court in this case has defined the limits of the ratio only to the judgments of the Courts
available in the public domain. The limitation put on the ratio of the case by the deciding court
cannot be avoided or extended to the areas explicitly excluded by it. If we want to take the ratio
of this case to a higher level of abstraction, the highest level of abstraction will be derivative
works and by no stretch of construction or imagination the test laid down in this case can be
extended to cover primary works. The threshold of originality in the primary works, therefore,
still remains the same, i.e., of the Sweat of the Brow, wherein the four determinant factor are
(i) Skill, (ii) Judgment, (iii) Labor and (iv) Capital seems to remain the determinants of
originality. This distinction between the thresholds of primary works and derivative works
seems to reasonable and plausible for creation of primary works by and in itself is original
whereas creation of derivative work is necessarily based on some other works. It is submitted,
however, that there will hardly be any work which is truly and strictly primary.

Following explains the threshold of originality in dramatic work.

2.2 Threshold of Originality in Dramatic Work

The Court reiterating the test of substantial similarity observed as under:

it is not the product of merely labor and capital.

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Where however apart from the similarities appearing in the two works there are also
material and broad dissimilarities which negative to the intention to copy 95 the original
and the coincidences appearing in the two works are clearly incidental no infringement of
the copyright comes into existence.96
R.G. Anand v. Delux Films involved a question whether there was an infringement of copyright
of a dramatic work by a cinematograph film. Answering this question in negative the Court
observed as under:
The position appears to be that an idea, principle, theme, or subject matter or historical or
legendary facts being common property cannot be the subject matter of copyright of a
particular person.
It is always open to any person to choose an idea as a subject matter and develop it in his
own manner and give expression to the idea by treating it differently from others.
Where two writers write on the same subject similarities are bound to occur because the
central idea of both are the same but the similarities or coincidences by themselves
cannot lead to an irresistible inference of plagiarism or piracy.
Take for instance the great poet and dramatist Shakespeare most of whose plays are based
on Greek-Roman and British mythology or legendary stories like Merchant of Venice,
Hamlet, Romeo Juliet, Jullius Caesar etc.
But the treatment of the subject by Shakespeare in each of his dramas is so fresh, so
different, so full of poetic exuberance, elegance and erudition and so novel in character as
a result of which the end product becomes an original in itself.
In fact, the power and passion of his expression, the uniqueness, eloquence and
excellence of his style and pathos and bathos of the dramas become peculiar to
Shakespeare and leaves precious little of the original theme adopted by him.
. . .similarities as exist between the stage play ...and the film ... do not make out a case of
infringement. The dissimilarities, ... axe so material that it is not possible to say that the ...
copyright has been infringed.
. . .it is not necessary, ... for the Court to examine all97 the several themes embraced
within the plot of the [work] in order to decide whether infringement has been
established.98

95 Emphasis supplied.

96 Academy of General Edu., Manipal v. B. Malini Mallya ([2009]1SCR615)(FB).

97 Emphasis added.

98 R.G. Anand v. Delux Films, [1979]1SCR218.


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It is submitted that we have not been able to find a case law in which the Court has enunciated
the threshold of originality in dramatic works. The question of originality has arisen in
infringement proceedings. The question of originality has not arisen in relation to the issue
whether a dramatic work is original.

Following seeks to explain the threshold of originality in case of musical works.

2.3 Threshold of Originality in Musical Work


In Ram Sampath v. Rajesh Roshan99 explaining the threshold requirement of originality in
musical work, the Court observed as under:

[T]he following factors would be required to be taken into consideration. First is to


identify the similarities and the differences between the two works. Second is to find out
whether the latter would meaningfully exist without the copied part. It may be necessary
to find the soul of a musical work. The soul cannot be determined merely by comparing
the length of the part copied but whether the part copied is an essential part of a musical
work. Though a musical work may have a length of several minutes, the listener often
remembers a catch part to which he is immediately hooked on. It is necessary to look
for such catch part or the hook part. If the catch part or hook part, howsoever
small, is copied the whole of the latter work would amount to actionable infringement. It
is necessary to remind oneself that the desire, of an infringer, is necessarily to copy the
attractive, the catchy, the grain and leave the chaff, for he would attract the audience
only by the attractive, and not by the ordinary. These factors are only illustrative and
there would be many other factors which may be required to be looked into depending
upon the facts and circumstances of each case.
The position taken by the Supreme Court of India in the R.G. Anand v. Delux Films100 has been
relied upon by the Delhi High Court in its decision while laying down the test for determining
the originality of a musical work. The court held as under:

The position of the law laid down by the Honble Supreme Court applies clearly in
[a] case [where] :
(a) The work is nothing but a colorable imitation of the original musical soundtrack
with some minor and insignificant variations.
(b) A lay listener though not an expert listener, on hearing both the works will
unmistakably get the impression that the work [in question] is not different from
the original.

99 See, Ram Sampath v. Rajesh Roshan, 2009(40)PTC78, 85(Bom).

100 R.G. Anand v. Delux Films [1979]1SCR218


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(c) There [is] no material or broad dissimilarities which negative the intention to copy
the original except
(d) This court should look strictly at such examples of copying.101
The Court extended the logic of lay observer test laid down in R.G. Anand to musical work by
supplanting lay observer test with lay listener test. The test of substantive similarity between
the two works was once again reiterated by the Court. It is noticeable that the question of
originality in case of musical work has only arisen in infringement proceedings.

Following explains the threshold of originality in artistic work.

2.4 Threshold of Originality in Artistic Work

In determining the threshold of originality in case of artistic work, the Court in Microfibres
Inc. v. Girdhar & Co., has observed as under:

a. The definition of artistic work has a very wide connotation as it is not


circumscribed by any limitation of the work possessing any artistic quality. Even an
abstract work, such as a few lines or curves arbitrarily drawn would qualify as an
artistic work. It may be two dimensional or three dimensional. The artistic work
may or may not have visual appeal.

b. The rights to which a holder of an original artistic work is entitled are enumerated in
Section 14(c) of the Copyright act.

c. It is the exclusive right of the holder of a Copyright in an original artistic work to


reproduce the work in any material form. For example, a drawing of an imaginary
futuristic automobile, which is an original artistic work, may be reproduced in the
three-dimensional material form using an element, such as a metal sheet.

d. The design protection in case of registered works under the Designs Act cannot be
extended to include the copyright protection to the works which were industrially
produced.

e. A perusal of the Copyright Act and the Designs Act and indeed the Preamble and
the Statement of Objects and Reasons of the Designs Act makes it clear that the
legislative intent was to grant a higher protection to pure original artistic works such
as paintings, sculptures etc and lesser protection to design activity which is
commercial in nature. The legislative intent is, thus, clear that the protection

101 Super Cassette Industries Limited v. Bathla Cassette Industries Pvt. Limited,
2003(27)PTC280(Del)
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accorded to a work which is commercial in nature is lesser than and not to be
equated with the protection granted to a work of pure Article

f. The original paintings/artistic works which may be used to industrially produce the
designed article would continue to fall within the meaning of the artistic work
defined under Section 2(c) of the Copyright Act, 1957 and would be entitled to the
full period of copyright protection as evident from the definition of the design under
Section 2(d) of the Designs Act. However, the intention of producing the artistic
work is not relevant.

g. This is precisely why the legislature not only limited the protection by mandating
that the copyright shall cease under the Copyright Act in a registered design but in
addition, also deprived copyright protection to designs capable of being registered
under the Designs Act, but not so registered, as soon as the concerned design had
been applied more than 50 times by industrial process by the owner of the copyright
or his licensee.

h. In the original work of art, copyright would exist and the author/holder would
continue enjoying the longer protection granted under the Copyright Act in respect
of the original artistic work per se.102

In an artistic work the threshold of originality is not dependant on the conception of a similar
idea by the same artist or a different artist who creates a work as it was held in a decision of
the Copyright Board that the artists who created the two artistic works, namely, [X] and [Y],
may have been driven by similar ideas but then they applied their originality, skill, knowledge
and labor and the result of the efforts was an artistic work which is independent of each other
and not a copy of the other103.

In another decision a High Court opined that:

The law protects originally of expression but not originality of the central idea, not
merely because of the balancing of two conflicting policies. The first is that the law
must protect originality of artistic work, thereby allowing artists to reap the fruits of
their labor and stopping unscrupulous pirates from enjoying those fruits. The second
policy is that the protection must not become an over protection, thus, curbing down
future artistic activity. If mere plots and character were to be protected by copyright,
on original artist could not write anything original at all, on a similar plot or on
similar characters. The law recognizes these policies; but the law is also in accordance
with, what could be called the idea of fair protection, even if that idea of fairness were

102 Microfibres Inc. v. Girdhar & Co., 2009(40)PTC519(Del)

103 Abdul Rashid v. M.R. Bidi Factory 2005 (30) PTC 287 CB
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to be formed by an artist or a writer, who does not know even a single thing about
copyright law.104

In the above decision the Court defined the threshold of originality of an artistic work. In
determining the threshold of originality and protection of an artistic work the Court further
stated that:

The copyright law does not protect basic plots and stock characters. If it granted such
protection, four or five writers writing 15 or 20 novels with stock characters and stock
plots could stop all writers of pop literature from writing anything thenceforth.105

In another case the Court observed that No doubt ... (titles) will not as a rule be protected,
since alone they would not be regarded as a sufficiently substantial part of the book or other
copyright document to justify the preventing of copying by others.106

Following seeks to explain the threshold of originality in case of cinematograph films.

2.5 Threshold of Originality in Cinematograph Films

The threshold of originality in the case of cinematograph film is lower than those in the case of
literary, dramatic or artistic work for the term cinematograph film is qualified by the term
original under Section 13 (1) of the Act. 107 In Star India Pvt. Ltd. v. Leo Burnett (India) Pvt.
Ltd. the Court held as under:

A comparative analysis of the provisions of Section 14(d) and (e) on the one hand and
Section 14(a),(b) and (c) on the other, in the latter case the owner of the copyright has
exclusive right to reproduce the work in any material form. This is absent and excluded
insofar as the former case (cinematograph film/sound recording). The exclusive right in
the former is to copy the recording of a particular film/sound recording. It is, therefore,

104 Barbara Taylor Bradford v. Sahara Media Entertainment Ltd.2004(28)PTC474(Cal)

105 Barbara Taylor Bradford v. Sahara Media Entertainment Ltd.2004(28)PTC474(Cal)

106 V.T.Thomas v. Malayala Manorama co. Ltd., AIR1988Ker291.

107Reference on this point can be made to Hansard, H.L. Vol.493, cols 1057; HL Deb 23
February 1988 vol. 493 cc1054-120 for the proposition that the requirement of 'originality' is
deliberately omitted in case of "sound recording" and "cinematograph film".
Page 41 of 255
clear that production by another person of even the same cinematographic film does not
constitute infringement of a copyright in a cinematograph film. It is only when actual
copy is made of a film by a process of duplication i.e., by using mechanical contrivance
that it falls under Section 14(d)(i). The expression to make a copy of the film would
mean to make a physical copy of the film itself and not an another film which merely
resembles the film.
The making of another film is not included under Section 14(d)(i) and such other film,
even though it resembles completely the copyrighted film, does not fall within the
expression to make a copy of the film. Therefore, if the film has been filmed or shot
separately by a person and it resembles the earlier film, the subsequent film is not a copy
of the first film and, therefore, does not amount to infringement of whole of the copyright
of the first film. The position in the case of literary, dramatic or artistic work seems to be
different. A narrow copyright protection is accorded to film/sound recordings than for
literary, dramatic or artistic work. The reason perhaps could be that they have to be
original to satisfy the test of copyrightability, whereas the requirement of originality is
absent for claiming copyright in cinematograph films/sound recordings. 108
Reiterating the above point, in Zee Entertainment Enterprises Ltd. v. Gajendra Singh,109 the
Court observed that:

As pointed earlier contrasting Sections 14(d) and (e) on the one hand and Sections 14(a),
(b) and (c) on the other, in the latter case the owner of the copyright has exclusive right to
reproduce the work in any material form. This is absent and excluded insofar as the
former case (cinematograph film/ sound recording). The exclusive right in the former is
to copy the recording of a particular film/sound recording. It is, therefore, clear that
production by another person of even the same cinematographic film does not constitute
infringement of a copyright in a cinematograph film. It is only when actual copy is made
of a film by a process of duplication i.e. by using mechanical contrivance that it falls
under Section 14(d)(i). The expression to make a copy of the film would mean to make a
physical copy of the film itself and not another film which merely resembles the film.
The making of another film is not included under Section 14(d)(i) and such other film,
even though it resembles completely the copyrighted film, does not fall within the
expression to make a copy of the film. Therefore, if the film has been filmed or shot
separately by a person and it resembles the earlier film, the subsequent film is not a copy
of the first film and, therefore, does not amount to infringement of whole of the copyright
of the first film. The position in case of literary, dramatic or artistic work seems to be
different. A narrow copyright protection is accorded to a film/sound recording than for
literary, dramatic or artistic work. The reason perhaps could be that they have to be
original to satisfy the test of copyrightability, whereas the requirement of originality is
absent for claiming copying in cinematograph films/sound recordings....

108 Star India Pvt. Ltd. v. Leo Burnett (India) Pvt. Ltd. [2003] 27 PTC 81 (Bom).

109 2008(36)PTC53(Bom)(SB)
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It is submitted that the above approach of the Court cannot withstand the demands of Section 13
(3) of the Act which provides:

Copyright shall not subsist


(a)in any cinematograph film 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,
if in making the sound recording, copyright in such work has been infringed.

In view of the provisions of Section 13 (3), it may be safely concluded, or at least may be argued,
that in case of works mentioned in clause (a) of Section 13 (1), it is immaterial whether the work
claiming protection of copyright is a copy of a copyrighted work or a copy of an uncopyrighted
work. To disqualify such works from copyrightability it is sufficient if the claimant is a copy of
any work copyrighted or uncopyrighted. But in case of works mentioned in clauses (b) and (c) of
Section 13 (1) the claimant cannot be denied copyright if it is copy of uncopyrighted work unless
it is also shown that the claimant is a copy of a copyrighted work.

Following explains the threshold of originality in sound recording.

2.6 Threshold of Originality in Sound Recording

The threshold requirement of originality in cinematograph film and sound recording seems to be
the same for these works are not qualified by the word original. It has been observed by the
Courts that, the right of an owner of sound recording is in any way inferior to that of right of an
owner of copyright on original literary work, etc.110 In case of a sound recording the owner of
the copyright is the producer of the sound recording 111. The Legislature has conferred specific

110 Music Broadcast Private Ltd. v. IPRS, MANU/MH/0923/2011.

111 See, Id. (Music Broadcast Private Ltd. v. IPRS, MANU/MH/0923/2011) in this decision the Court
opined on the ownership of copyright of a sound recording as :Once a sound recording is made, it is
only the producer, as the owner thereof, who can exploit it exclusively in the manner provided in Section
14(1)(e). However, those rights are confined to that particular sound recording and that sound recording
alone. The owner of the sound recording can communicate the same to the public, inter-alia, by
broadcasting it or playing it in public places. The owners of the underlying musical and literary work
embodied in such sound recording cannot interfere with these rights of the owner of the sound recording

Page 43 of 255
rights upon the owners of copyrights in each class of works and it is not open to the Court to
restrict the rights based on the Courts perception as to which of the works is more valuable or
important than the other.112 However, the rights conferred upon the owner of derivative works
[sound recording & cinematograph films] [is to be construed] in a restricted manner viz-a-
viz the rights conferred by Sections 14 on the owners of copyright in the original work, is not
well founded.113
While explaining the requirement of originality in sound recording the Court quoted Nimmer on
Copyright:

A sound recording must be distinguished from, on the one hand, the material object on
which the sound is recorded, and, on the other hand, the underlying musical composition,
or dramatic or literary work that is recorded and transposed into aural form by the sound
recording. Clearly, a sound recording copyright vests no proprietary rights in the material
object as such. Likewise, the sound recording copyright does not attach to the underlying
work per se, but only to the aural version of such work as fixed on the material object. A
sound recording is, in this sense, a derivative work. Thus, the originality that may be
claimed in a given musical work will not in itself constitute the originality necessary to
support a copyright in a sound recording of such musical work.
....
A phonorecord is a material object in which sounds are fixed. . . . Such sounds may
consist of a literary, musical or dramatic work. No copyright may be claimed in a
phonorecord as such, but a literary, musical or dramatic work will be eligible for
copyright if it is fixed in any tangible medium of expression, including that of a
phonorecord. See 203(B) supra. In addition, a separate copyright may be claimed in the
manner in which such a work is performed or rendered on the phonorecord. This is the
sound recording copyright. See 2.10 supra. The distinction may be summed up as the
difference between a copyright in a Cole Porter song, and a copyright in Frank Sinatras
recorded performance of that song. The former would be a musical work copyright and
the latter would be a sound recording copyright, although both may be embodied in the
same phonorecord. Daboub v. Gibbons, 42 F. 3d 285, 388 (5th Cir. 1995) (Treatise
quoted). A further distinction pertains between recorded performances and live
performances. . . .
The Court observed:

qua that sound recording.

112 Music Broadcast Private Ltd. v. IPRS, MANU/MH/0923/2011.

113 Music Broadcast Private Ltd. v. IPRS,Page


MANU/MH/0923/2011.
44 of 255
The making of sound recording pursuant to authority to do so by the owners of the
underlying works does not affect in any manner whatever, the existence of the copyright
in the underlying works de-hors the sound recording. In particular, it does not prevent the
owners of the copyright in the underlying musical and literary works from making any
other sound recording embodying the same underlying work. This is clear from Section
14(1)(a)(iv) which provides that copyright means the exclusive right, inter-alia, to make
any cinematograph film or sound recording in respect of a literary, dramatic or musical
work not being a computer program. The word any makes this clear. This, of course,
would be subject to a contract to the contrary. For instance, if the authors of the literary,
dramatic or musical work agree to transfer all their rights in the underlying work to
another subject to any statutory bar, they would divest themselves of any ownership right
therein. However, absent any contract to this effect, the owners of literary and musical
work retain the right to make any sound recording in respect of a work even though they
may have permitted another to make a sound recording thereof.114
In another case, the Court observed as under:

The limited rights conferred by Section 14(e) on the owner of copyright in a sound
recording (viz. the exclusive right to make other sound recording embodying it; to sell or
hire any copy of the sound recording; or to communicate the sound recording to the
public) harmonizes with the rights which vest in the owner of the primary literary,
dramatic and musical work utilized to make a sound recording. The owner(s) of copyright
in the literary, dramatic and musical works can make or authorize the making of a new
sound recording by utilizing the same literary, dramatic or musical work which may
earlier have been utilized for making an earlier sound recording. This right is not
abridged or taken away by the said provision. Therefore, it is permissible to make another
sound recording, may be by utilizing the same or different set of musicians, singers or
artists by utilizing the same literary, dramatic or musical work. The owner of the
Copyright in the earlier produced sound recording cannot object to the making of such
subsequent sound recordings or version recordings merely because he is the owner of the
copyright in the earlier made sound recording. His exclusive rights are confined to the
exploitation of his work i.e. his sound recording in which he owns the copyright and
does not give him the right to interfere or intermeddle with the exploitation of
copyright(s) in the original primary works viz. the literary, dramatic and musical works
by the author(s). This position is clear from Sub-Section (4) of Section 13 of the Act,
which states that the copyright in a sound recording shall not affect the separate copyright
in any work in respect of which the sound recording is made. Any other interpretation
would render Sub-Section (4) of Section 13 otiose, and nullify the copyrights conferred
on the author of a literary, dramatic or musical work to make or authorize, inter alia, the
making of any subsequent sound recording of his work, once his work has been utilized
by any person to make a sound recording. From Section 2(m) it is clear that unless a
sound recording actually embodies a previous sound recording or a substantial part
thereof, there is no copying or infringement of the copyright of the owner of a sound
recording. The copyright of the owner of a sound recording does not get infringed on

114 Music Broadcast Private Ltd. v. IPRS, MANU/MH/0923/2011.


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account of the making of another sound recording by using the same original literary,
musical or dramatic work.115
In the light of the above, it may be said that in case of literary, dramatic, musical and artistic
works the requirement of originality is a directly essential qualification. And in case of
cinematograph film and sound recording originality is an indirect essential qualification.

Part III

Requirement of Fixation

It is hypothesized that the Copyright Act, 1957 requires that for claiming copyright protection,
subject matter of copyright must be tied to a physical, material or tangible form. Fixation of a
work in a tangible medium is an essential condition for copyrightability.116 To fix means to
make permanent117 or reify. Copyright Law of the United States of America explicitly provides

115 Gramphone Company of India Ltd. v. Super Cassette Industries Ltd. 2010 (44) PTC 541
(Del.).

116 See Zee Telefilms Ltd. v. Sundial Communications Pvt.Ltd. 2003(27) PTC 457(Bom) it
was observed that Copyright protects material that has been reduced to permanent from. This
point was reiterated in Urmi Juvekar Chiang v. Global Broadcast News Ltd. 2008 (36) PTC 377
(Bom.). Also see HALSBURYS LAW OF INDIA, INTELLECTUAL PROPERTY, Vol. 20(1),
24 para.[185.020] (New Delhi: Lexis Nexis Butterworths, 2004)Fixation in material form:
The requirement of fixation in material form is a precondition for copyright to subsist in work. The rational
of this principle is the requirement of certainty as to what the work is. Another reason or it is to define the
limits of copyright so that it does not extend to ideas or underlying information. Fixation may not be
permanent but may be temporary or transient. To illustrate the original extempore speech is protected as a
literary work, provided some record of it is maintained.
It may further be noted that the word work has been footnoted and explained as under:
As the work in which copyright subsists, the word literary is used in a sense somewhat similar to the use of
the word literature in political or electioneering literature and refers to written or printed matter.

117 See, HENERY CAMBELL BLACK, BLACKS LAW DICTIONARY WITH PRONUNCIATION, 6 th
Edition, 637, (Minneapolis: west Publishing, 1990).Term (fix) imports finality; stability; certainty;
definiteness.

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that copyright subsists in creative works that are fixed 118 in any tangible medium of
expression.119The Copyright Act, 1957 is not worded like the US copyright law. However, the
requirement of fixation has been incorporated under the provisions of the Act both explicitly
and implicitly. In case of dramatic work, cinematograph film and sound recording the
requirement is explicit. Whereas, in case of literary, musical and artistic work the requirement of
fixation is implicit. At this juncture, it must be submitted that the most contested work regarding
fixation is musical work for which there is an argument after the amendment of the Act in 1994
the requirement of fixation has been done away with.120 Further, a careful reading of the Section
14 of the Act makes it clear that a holder of the exclusive right is authorized to do certain acts in
respect of a work under the provisions of the Act. Any of the acts authorized to be done by the
copyright holder has to be carried out from a work that physically exists or fixed in some
tangible medium otherwise copyright in a work will be meaningless. Research on this point is
few and far between121. A few Indian scholars have merely paid a lip service to fixation
requirement122. Interestingly, there exist a category of the scholars, who are of the opinion that

118 17 U.S.C. 101 (2006).A work is fixed in a tangible medium of expression when its embodiment in
a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit
it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A
work consisting of sounds, images, or both, that are being transmitted, is fixed for purpose of this title if a
fixation of the work is being made simultaneously with its transmission.
Also see, CORPUS JURIS SECUNDUM, 18, West Publishing Co., 102.

119 17 U.S.C. 102(a) (2006).

120 T. C. James, Copyright Law of India and the Academic Community 9 JIPR 207, 214 (2004).

121 A few scholarly works which fall in this category are:T. VIDHYA KUMARI, COPYRIGHT PROTECTION,
(Hyderabad: Asia Law House, 2004).: A.SUBBIAN, INTELLECTUAL PROPERTY RIGHTS HERITAGE
SCIENCE AND SOCIETY UNDER INTERNATIONAL TREATIES, (New Delhi: Deep & Deep Publications
Pvt.Ltd.,); A. Nagarathana, Protection of Copyrights: An Appraisal of Copyright Law in India, in
SREENIVASULU N.S., INTELLECTUAL PROPERTY RIGHTS (New Delhi: Regal Publication, 2007);
N.S.GOPALAKRISHNAN, INTELLECTUAL PROPERTY & CRIMINAL LAW, (Bangalore: National Law
School of India University, 1994); JAYASHREE WATAL, INTELLECTUAL PROPERTY RIGHTS IN THE
WTO AND DEVELOPING COUNTRIES, (New Delhi: Oxford University Press, 2005) 2001; P.NARAYANAN,
INTELLECTUAL PROPERTY RIGHTS, 2nd Ed., (Kolkata: Estern Law House, 1997 ).

122 P.NARAYANAN, COPYRIGHT AND INDUSTRIAL DESIGNS, 3RD ED., 16 (Kolkata: Eastern
Law House, 2002).Copyright exists in a work only when it is represented in a material form. This
principle is referred to as fixation.

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fixation is not an essential requirement at all for the purposes of copyrightability. 123 However,
this view is not supported either by any authority - statutory or judicial - nor any reason
whatsoever.

We now proceed to examine the hypothesis that that the Copyright Act, 1957 requires that for
claiming copyright protection, subject matter of copyright must be tied to a physical, material or
tangible form.

3.1 Requirement of Fixation in case of Literary Work

The Section 2(o)124 of the Act provides that literary work computer programs, tables and
compilations including computer data bases. About the literary work the Courts have
vehemently reiterated that the work must exist in print or writing. 125 Further, none of the
works enumerated in the definition of literary work can exist without a tangible medium in
ejusdem generis sense for the meaning of words of general import literary work is to be
understood in the light of the words of particular import, i.e., computer programs, tables and
compilations including computer data bases. Fixation of the literary work on a tangible medium
therefore is an essential qualification for protection under the copyright law at least for two
reasons. Firstly, the Courts have said so if the Act has no said so in so many words. Secondly, it
is clearly implicit in the words of the Act that only those works which are tied to a tangible
medium are the subject matter of protection under the copyright law.

123 N.S.GOPALKRISHNAN & T.G. AGITHA, PRINCIPLES OF INTELLECTUAL PROPERTY,


143 (Lucknow: Eastern Book Company, 2009). [I]t is important that unlike the English Law, the
Indian Copyright Act does not necessitate that a work, to be entitled to copyright protection should be
fixed in any tangible form.
Also see page 160 of the above book, wherein the authors while comparing the definition of musical work as
has been incorporated under Section 2(p) of the Act by the amendment of 1994; makes an arbitrary
interpretation without any citation of sources that:
The earlier definition insisted for requirement of fixation the new definition is included to cover all
forms of music irrespective of it being fixed.

124 Section 2(o) literary work includes computer programs, tables and compilations including
computer "literary data bases.

125 See Eastern Book Company v. D.B. Modak AIR 2008 SC 809(DB). Also see, Agarwala
Publishing House v. Board of High School and Intermediate Education. AIR 1967 All 91, 92;
University of London Press Ltd. v. University Tutorial Press Ltd. 1916-2 Ch 601.
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Recently in Emergent Genetics India Pvt. Ltd. v. Shailendra Shivam 126 the Delhi High Court
heard an argument on the requirement of fixation. But the Court preferred to remain silent on
the issue leaving the question undecided.

3.2 Requirement of Fixation in case of Dramatic Work


Section 2 (h) of the Act defines dramatic work to include any piece for recitation,
choreographic work or entertainment in dumb show, the scenic arrangement or acting form of
which is fixed127 in writing or otherwise but does not include a cinematograph film. Here the
statutory provisions themselves make it categorically clear that fixation is an essential eligibility
qualification of dramatic work for protection under the copyright law. Here, the text of the
Statute is explicit and hence it is conclusive.

3.3 Requirement of Fixation in case of Musical Work


Section 2(p) of the Act provides that musical work means a work consisting of music and
includes any graphical notation of such work but does not include any words or any action
intended to be sung, spoken or performed with the music. There is a view that In order to
provide copyright protection to improvised Indian music, an exception to principle of fixation
exists in India law as regards musical works. Since, a composer is defined as a person who
composes music, regardless of whether he records it in any form of graphical notation 128. This
view, however, cannot withstand the judicial scrutiny as the following analysis reveals.

126 Emergent Genetics India Pvt. Ltd. v. Shailendra Shiva, MANU/DE/3012/2011(SB) para. 11. It was argued
as under:It was urged that unlike the United Kingdom, fixation (i.e. the existence of a literary or
copyrightable work in tangible form) is not a pre-condition for a copyright to subsist in a work in India.
Learned Counsel relied on the definition of work and literary work under the Copyright Act, and further
submitted that according to Article 2(2) of the Berne Convention it is a matter for municipal legislation in
the signatories to prescribe that works in general or any specified categories of works shall not be protected
unless they have been fixed in some material form. It was also argued that the actual DNA sequence will be
a matter of evidence, but evidence of fixation is not necessary to show the subsistence of copyright. It was
also argued that even before the amendment of the laws, in the UK and in the USA, computer databases and
computer programs were afforded copyright protection. It was further argued that while fixation may not
be required under Indian law, knowledge and expression of an idea are required. Knowledge exists though it
may be intangible. In the case of hybridization of cross pollination, the knowledge as to DNA sequencing is
not known.

127 Emphasis added.

128 HALSBURYS LAW OF INDIA, INTELLECTUAL PROPERTY-I, Vol. 20(1), 24, para.
[185.020] (New Delhi: LexisNexis Butterworts, 2004).
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In Indian Performing Right Society Limited v. Aditya Pandey 129the Court while dealing with the
requirement of fixation in the case of a musical work referred to Sawkins v. Hyperion
Records130and held that:

In the absence of a special statutory definition of music, ordinary usage assists: as


indicated in the dictionaries, the essence of music is combining sounds for listening to.
Music is not the same as mere noise. The sound of music is intended to produce effects of
some kind on the listeners emotions and intellect. The sounds may be produced by an
organized performance on instruments played from a musical score, though that is not
essential for the existence of the music or of copyright in it. Music must be distinguished
from the fact and form of its fixation as a record of a musical composition. The score is
the traditional and convenient form of fixation of the music and conforms to the
requirement that a copyright work must be recorded in some material form. But the
fixation in the written score or on a record is not in itself the music in which copyright
subsists. There is no reason why, for example, a recording of a persons spontaneous
singing, whistling or humming or of improvisations of sounds by a group of people with
or without musical instruments should not be regarded as music for copyright
purposes.131
The fact that in musical copyright the sounds are more important than the notes in the text
is recognized, for example, in the approach to infringement. The test of substantial
reproduction is not a note-by-note textual comparison of the scores. It involves listening
to and comparing the sounds of the copyright work and of the infringing work. So it is
possible to infringe the copyright in a musical work without taking the actual
notes. . . .132In principle, there is no reason for regarding the actual notes of music as the
only matter covered by musical copyright, any more than, in the case of a dramatic work,
only the words to be spoken by the actors are covered by dramatic copyright. Added stage
directions may affect the performance of the play on the stage or on the screen and have
an impact on the performance seen by the audience. Stage directions are as much part of
a dramatic work as plot, character and dialogue.
....
It is wrong in principle to single out the notes as uniquely significant for copyright purposes
and to proceed to deny copyright to the other elements that make some contribution to the sound
of the music when performed, such as performing indications, tempo and performance

129 Indian Performing Right Society Limited v. Aditya Pandey, 2011(47)PTC392, 424(Del)

130 Sawkins v. Hyperion Records, All 2005 3 ER 636, 648.

131 Emphasis added.

132 Footnotes omitted.


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practice indicators, if they are the product of a persons effort, skill and time, bearing in mind,
of course, the relatively modest level . . .

The observation of the Court that There is no reason why, for example, a recording of a persons
spontaneous singing, whistling or humming or of improvisations of sounds by a group of people
with or without musical instruments should not be regarded as music for copyright purposes
goes on to show that recording of the music on a tangible medium is an essential eligibility
requirement. Although it is not necessary that the music must be recorded by way of graphical
notation, yet if recorded by way of graphical notation the requirement of fixation is fulfilled.

3.4 Requirement of Fixation in case of Artistic Work


Section 2(c) of the Act defines artistic work to mean-

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or


plan), an engraving or a photograph, whether or not any such work
possesses artistic quality;

(ii) work of architecture; and

(iii) any other work of artistic craftsmanship;

In view of the above provisions it may be said that none of the works enumerated in the
definition of artistic work can exist without a tangible medium in ejusdem generis sense for the
meaning of words of general import artistic work is to be understood in the light of the words
of particular import, i.e., a painting, a sculpture, a drawing (including a diagram, map, chart or
plan), an engraving or a photograph, work of architecture; and any other work of artistic
craftsmanship. Fixation of the artistic work on a tangible medium therefore is an essential
qualification for protection under the copyright law at least for one reason, namely, it is clearly
implicit in the words of the Act that only those works which are tied to a tangible medium are the
subject matter of protection under the copyright law.

3.5 Requirement of Fixation in case of Cinematograph Films


Section 2(f) of the Act defines cinematograph film to mean any work of visual recording133
on any medium produced through a process from which a moving image may be produced by

133 Emphasis added. The word record is not defined in the Act of 1957. Blacks Law dictionary reads as
under:record (v.) To commit to writing, to printing, to inscription, or the like. To make an official note of; to
write, transcribe, or enter in a book, file docket, register, computer tape or disc, or the like, for the purpose
of preserving authentic evidence of . . . the act or fact of recording or being recorded; reduction to wring as
evidence, also, the writing to made. See, HENRY CAMPBELL BLACK, BLACK'S LAW DICTIONARY
WITH PRONUNCIATIONS, 6th Ed.,1273, (Minneapolis: West Publishing, 1990).

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any means and includes a sound recording accompanying such visual recording and
cinematograph shall be construed as including any work produced by any process analogous to
cinematography including video films. Here the statutory provisions themselves make it
categorically clear that recording (fixation) is an essential eligibility qualification of
cinematograph films for protection under the copyright law. Here, the text of the Statute is
explicit and hence it is conclusive.

3.6 Requirement of Fixation in case of Sound Recording


Section 2(xx) defines sound recording to mean a recording of sounds from which such sounds
may be produced regardless of the medium on which such recording is made or the method by
which the sounds are produced. Here the very name of the work is record and hence the
statutory provisions themselves make it categorically clear that recording (fixation) is an
essential eligibility qualification of sound recording for protection under the copyright law. Here,
the text of the Statute is explicit and hence it is conclusive.

In view of the above, it may be said that the Act of 1957 requires that to claim copyright
protection, the work must be fixed on a tangible medium.

Now we move on to amylase the desirable qualification of copyright candidate.

Part IV

Publication

It is hypothesized that publication of work is only a desirable qualification and not an essential
eligibility qualification for the existence of copyright in a work. A perusal of the provisions of
Section 13 (2) of the Act makes it abundantly clear that copyright subsists in an unpublished
work. Section 13 (2) reads as under:

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 a published134 work, . . .


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

134 See HALSBURYS LAWS OF INDIA, INTELLECTUAL PROPERTY, Vol. 20(1), 139
(New Delhi: Lexis Nexis Butterworths , 2004) for the proposition that "a work cannot be orally
published and there can be no publication of a work of which there exists only a single copy."
Page 52 of 255
Under Section 40 (b) of the Act the Central Government may by order direct that the provisions
of this Act shall apply to unpublished foreign works.135 Section 41 of the Act makes provisions
for existence of copyright in the works of certain international organization and provides that in
any work is made136 or first published . . .there shall be . . . be copyright in the work throughout
India. The word work made in Section 41 is an alternative to first published. In other words
making of the work is necessary but publication is of the work is not necessary for the existence
of the copyright in a work.

A perusal of the other provisions of the Act reveals that publication of the work is not an
essential requirement. Section 3 of the Act provides that publication means making a work
available to the public by issue of copies or by communicating the work to the public 137.
Publication generally refers to issue of copies of the work to public 138. Section 4139 identifies the
situations under which a work would not be deemed to be published or performed in public.
Section 5140 identifies the condition when work deemed to be first published in India. In Warner

135 See International Copyright Order, 1958, Gazette of India, Extraordinary, Part II, Section 3
at 181.

136 Emphasis added.

137 Under Section 2 (ff) "communication to the public" means making any work available for being seen or
heard or otherwise enjoyed by the public directly or by any means of display or diffusion other than by issuing
copies of such work regardless of whether any member of the public actually sees, hears or otherwise enjoys the
work so made available.Explanation.- For the purposes of this clause, communication through satellite or cable
or any other means of simultaneous communication to more than one household or place of residence including
residential rooms of any hotel or hostel shall be deemed to be communication to the public.

138 Warner Bros. Entertainment Inc. v. Santosh V.G. (MANU/DE/0406/2009)(SB)

139 Under Section 4 except in relation to infringement of copyright, a work shall not be deemed
to be published or performed in public, if published, or performed in public, without the licence
of the owner of the copyright.

140 Under Section 5 a work published in India shall be deemed to be first published in India,
notwithstanding that it has been published simultaneously in some other country, unless such
other country provides a shorter term of copyright for such work; and a work shall be deemed to
be published simultaneously in India and in another country if the time between the publication
in India and the publication in such other country does not exceed thirty days or such other
Page 53 of 255
Bros. Entertainment Inc. v. Santosh V.G.141 while explaining the meaning of publication the High
Court observed that, [I]mportation for the specified purpose may be a necessary step in the
process of issuing to the public, and therefore it amounts to publishing. Under Section 6 certain
disputes like question relating to publication of a work; or as to the date on which a work was
published for the purposes of determination of term of copyright; or the term of copyright for any
work is shorter in any other country shall be decided by Copyright Board. Section 6 further
provides that if in the opinion of the Copyright Board, the issue of copies or communication to
the public referred to in Section 3 was of an insignificant nature it shall not be deemed to be
publication.142 In Lahari Recording Company Private Limited v. Sourabh Marketing and
Agencies Private Limited143, considering the nature of the questions to be decided by the Board
under Section 6 and the machinery provided for its decision, the Court held that, [T]he Board
has the exclusive jurisdiction to decide such questions and the Civil Courts will have no
jurisdiction to decide them.

Under Section 16 of the Copyright Act, the copyright subsists in both the published as well as
unpublished work144. Though copyright subsists in unpublished work also, the significance of
publication cannot be undermined. Under the Act, its significance remains for different purposes,

period as the Central Government may, in relation to any specified country, determine.

141 (MANU/DE/0406/2009)(SB), para. 37.

142But certain questions are not clear like how many copies are essentials to constitute a
significant nature is not clear. Similarly the other questions will be like what constitutes a copy,
how is it different from the original-copy dichotomy.

143 MANU/KA/0212/2001(SB),para. 24.

144 Section 16 No person shall be entitled to copyright or any similar right in any work, whether published or
unpublished, otherwise than under and in accordance with the provisions of this Act or any other law for the time
being in force, but nothing in this Section shall be constructed as abrogating any right or jurisdiction to restrain a
breach of trust or confidence.

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including in determination of citizenship and domicile 145, place of first publication146, calculating
the time within which the copyright owner must act to take advantage of copyright protection.147
Another respect in which publication remains significant is that the Copyright Act measures the
term of copyright148.

Under Indian copyright law149 publication of the work is not necessary at the time of making an
application for copyright registration. Both published and unpublished works can be
registered.150 Chapter IV of the Copyright Rules, 1956 sets out the procedure for the registration
of a work. Under Rule 15 of the Copyrights Rules 1958 the Registration Office shall kept the
register in the four parts (one part for each works) and under Form III particulars relating to
whether the work is published or unpublished have to be furnished.

145 Under Section 7 Where, in the case of an unpublished work, the making of the work is
extended over a considerable period, the author of the work shall, for the purposes of this Act, be
deemed to be a citizen of, or domiciled in, that country of which he was a citizen or wherein he
was domiciled during any substantial part of that period.

146 See Section 13(2) of the Act.

147 Section 31A(1) Where, in the case of an Indian work referred to in sub-clause (iii) of clause (a) of Section 2,
the author is dead or unknown or cannot be traced, or the owner of the copyright in such work cannot be found, any
person may apply to the Copyright Board for a licence to publish such work or a translation thereof in any language.

148 Chapter V (Sections 22 to 29) of the Copyright Act deals with the term of Copyright.

149 Under US Copyright Law publication assumes greater significance, particularly when applying for copyright
registration. See Melville B. Nimmer, Copyright Publication, 56(2) COLUM. L. REV., 185(1956)
http://www.jstor.org/stable/1119728
Ilan Jenkins, What is a Publication under the Copyright Act?
http://www.scottandscottllp.com/main/publication_under_copyright_act.aspx.
Thomas F. Cotter, Toward a Functional Definition of Publication in Copyright Law, 92 Minn. L. Rev. 1724,
2008. http://www.lexisnexis.com/hottopics/lnacademic/

150 When a work has been registered as unpublished and subsequently is it published, the
applicant may apply for changes in particulars entered in the Register of Copyright in Form V as
prescribed in the first schedule to the Copyright Rules, 1958, along with the prescribed fee and in
accordance with Rule 16 of the Copyright Rules, 1958.
Page 55 of 255
In view of the above discussion, it may be concluded that publication is not an essential
qualification for the existence of copyright in a work. However, if the owner of the work fails to
publish the work, he may be compelled to forgo certain rights in the work as discussed above.

Following explains the requirement of registration of copyright.

Part V

Registration

It is hypothesized that registration of the work is not an essential requirement for existence of
copyright in a work. 151 Registration means recording; enrolling; inserting in an official register,
act of making a list, catalogue, schedule, or register particularly of an official character or of
making entries therein.152Since copyright is an intellectual property which is a branch of property
right, the question arises whether registration is always compulsorily necessary for the existence
of property and transfer of property. For example for the ownership and transfer by way of sale
of an immovable property it is compulsorily necessary that there must be an official record or
registration ownership. But it is not compulsorily necessary for the existence and transfer of all
types of property. Most of sale of goods transactions of daily use take place without any official
record or registration. Same is the case with copyright. Copyright in a work exists and is
assigned without any registration for the provisions of Section 19 of the Act while making
provisions for mode of assignment does not make registration of assignment a compulsorily

151 Similar view was taken by the Division Bench of Kerala High Court in R. Madhavan v. S. K. Nayar
AIR1988Ker39 that Section 44 and 45 of the Copyright Act are only enabling provisions and do not effect the
common law right to sue for infringement of copyright. While reiterating that an idea per se has no copyright, in
Anil Gupta v. Kunal (AIR2002Delhi379)(SB) Delhi High Court held that if the idea is developed into a concept
fledged with adequate details, then the same is capable of registration under the Copyright Act.

152 See, HENERY CAMBELL BLACK, BLACKS LAW DICTIONARY WITH


PRONUNCIATION, 6th Edition, 1284, (Minneapolis: west Publishing, 1990.Register
means an officer authorized by law to keep a record called a register or registry; as the register for the
probate of wills. A book containing a record of facts as they occur, kept by public authority; a register for
births, marriage, and burials.
Raja Bhattacharya, Intellectual Property Rights in outer space and Patents, in SHIV SAHAI SINGH (Ed.), THE
LAW OF INTELLECTUAL PROPERTY RIGHTS, 121(New Delhi: Deep & Deep Publication, 2004)
Registration means entering or recording the name of the owner and his/her creation in the statutory
Register in prescribed form.

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necessary requirement. It does not follow from here that a work may not be registered. For
copyright and other intellectual property rights law has made provisions for registration which
only creates a prima facie presumption as to the validity of the right.153

Provisions of the Copyright Act, 1957 nowhere provide that registration of the work shall be or
shall not a necessary requirement for the protection of work. Further, none of the decisions of
the Supreme Court say that registration is or is not a necessary and essential qualification.
However, in none of the decisions given by the Supreme Court involved a registered
copyright. The position of the Supreme Court on this point therefore is abundantly clear in
view of its speaking silence. It may be noted that an author is of the view that registration is a
prerequisite for copyright protection.154 Others are of the view that registration is not prerequisite

153 Section 48 of the Copyright Act 1957 Register of Copyrights to be prima facie evidence of particulars
entered therein-- The Register of Copyrights shall be prima facie evidence of the particulars entered therein and
documents purporting to be copies of any entries therein, or extracts there from certified by the Registrar of
Copyrights and sealed with the seal of the Copyright Office shall be admissible in evidence in all Courts without
further proof or production of the original.Section 31 of the Trademarks Act 1999 Registration to be prima facie
evidence of validity (1) In all legal proceedings relating to a trade mark registered under this Act (including
applications under Section 57), the original registration of the trade mark and of all subsequent assignments and
transmissions of the trade mark shall be prima facie evidence of the validity thereof.
Section 23(1) of the Geographical Indication Act 1999, Registration to be prima facie evidence of validity: In all
legal proceeding relating to a geographical indication, the certificate of registration granted in this regard by the
Registrar under the Act, being a copy of the entry in the register under the seal of the Geographical Indication
Registry, shall be prima facie evidence of the validity thereof and be admission in all Courts and before the
Appellate Board without further proof or production of the original.
Section 10 of the Designs Act 2000 Register of designs, sub-Section (4) The register of designs shall be prima
facie evidence of any matter by this Act directed or authorized to be entered therein.
Only under Section 28 the Protection of Plant Varieties and Farmers Rights Act, 2001 it confer an irrebuttable
presumption on registration as under sub Section (5) The Registrar shall issue a certificate of registration under
sub-Section (4) to the applicant after such registration and shall enter in the certificate the brief conditions of
entitlement, if any, in the prescribed manner, and such certificate shall be the conclusive proof of such
entitlement and the conditions or restriction thereof, if any.

154 Registration, Protection and Infringement of IPRs which have become the integral part of the IPRs, it may
be right to establish a correlation between the three by stating that law prescribes registration to ensure protection
against infringement to facilitate transfer/trade. The owner a legally enforceable right over the IP only after
he/she gets his/her creation registered.Raja Bhattacharya, Intellectual Property Rights in outer space and Patents,
in SHIV SAHAI SINGH (Ed.), THE LAW OF INTELLECTUAL PROPERTY RIGHTS, 121(New Delhi: Deep
& Deep Publication, 2004).

Page 57 of 255
for copyright155. Registration is merely a piece of evidence156, or it only raises a presumption that
the person shown is the actual author of the work 157. Some authors have discussed the procedure
relating to registration of work.158There are conflicting scholarly opinions on this point but the
majority view is that registration of the work is not necessary. The High Courts have also taken
conflicting views on the point. This Paper, therefore, seeks to analyze the relevant statutory
provisions and case law on the point.

155 Unlike the other intellectual property rights, such as, patents and trademarks, registration is
not pre requisite for claiming copyright rights. See Nawnnet Vibhaw & Abishek Venkataraman,
Recording that Different Version-An Indian Raga, 12(5) JIPR 2007, 480, 481. Also see Anirban
Mazumdar, Copyright: Overview, in CASES AND MATERIALS ON COPYRIGHT, 174
(Kolkata: The West Bengal National University of Juridical Sciences, 2002); .R.SRINIVAS
IYENGER, COMMENTRY ON THE COYRIGHT ACT, 7 th Ed., RAGHBIR SINGH (Re.) 188,
(New Delhi: Universal Law Publishing, 2010); P.NARAYANAN, COPYRIGHT AND
INDUSTRIAL DESIGNS, 3rd Ed., 338 (Kolkata: Eastern Law House, 2002); Praveen Dalal,
Data Protection Law in India: The TRIPS Perspective, 11(2) JIPR 125, 127, 2006;
P.NARAYANAN, INTELLECTUAL PROPERTY LAW, 2nd Ed., 220(Kolkata: Eastern Law
House, 1997); JAYASHREE WATAL, INTELLECTUAL PROPERTY RIGHTS IN THE WTO
AND DEVELOPING COUNTRIES, 207(New Delhi: Oxford University Press, 2005).

156 HALSBURYS LAWS OF INDIA, INTELLECTUAL PROPERTY, Vol. 20(1), 148 (New
Delhi: Lexis Nexis Butterworths , 2004).

157 T. VIDHYA KUMARI, COPYRIGHT PROTECTION, 88,(Hyderabad: Asia Law House,


2004)

158 B.L.WADEHRA, LAW RELATING TO INTELLECTUAL PROPERTY, 4 th Ed., 338 (New Delhi: Universal
Law Publishing 2007), A. Nagarathana, Protection of Copyrights: An Appraisal of Copyright Law in India, 86, in
SREENIVASULU N.S., INTELLECTUAL PROPERTY RIGHTS (New Delhi: Regal Publication, 2007), Sanjay
Pandey, Neighbouring Rights Protection in India, 9(4) JIPR 356 ,357, 2004

Page 58 of 255
There was a mandatory provision for registration in the Indian Copyright Act, 1847 159 but under
the Indian Copyright Act, 1914 it was made optional160. Under the Copyright Act, 1957, on the
one hand the Statement of Objects and Reasons of the Act encourages registration of
copyright161, and on the other hand there is no provision in the Act which makes a provision in
furtherance to the words of Statement of Objects and Reasons. Judicial opinions as to the legal
weight of Statement of Objects and Reasons are not uniform. 162 In majority of the cases Supreme
Court has been of the opinion that the statement of objects and reasons appended to the Bill
159 Section 14 of the Indian Copyright Act 1847.no proprietor of copyright shall maintain, under the
provisions of this Act, any action or suit at law or in equity, or any summary proceedings in respect of any
infringement of such copyright, or any summary proceedings in respect of any infringement of such
copyright unless he shall before commencing such action, suit or proceeding, have caused an entry to be
made in the book of registry, provided always that the omission to make such entry shall not effect the
copyright in any book, nor the right to sue or proceed in respect of the infringement thereof under the
provisions of this Act.
Venkta Rao v. Padmonabha Raju AIR 1927 Mad. 1981.
Similarly in the former State of Hyderabad had its own Hyderabad Copyright Act II of 1334F, under which
Section 3 there was a provision that every author shall enjoy the copyright in regard to every book
registered.
V. Errabhadrarao v. B.N. Sarma AIR 1960 AP 415.

160 Section 14 of the Indian Copyright Act, 1914 dealt with effect of non registration under
the Act XX of 1847- No suit or other civil proceeding instituted after the 30 th of Octber,1912
regarding infringement of copyright in any book the author whereof was at the time of making
the book resident in India, or of any book first published in India shall be dismissed by reason
only that the registration of such book had not had been affected in accordance with the
provisions of the Indian Copyright Act 1847 (XX of 1847). In Mishra Bandhu Karyalaya v.
Shivratanlal Koshal AIR 1970 MP 261, 267(DB) it was held that the Indian Copyright Act, 1914, had nowhere
made any provision for the registration of copyrights. Under the law relating to copyright then prevalent, the
Imperial Copyright Act, 1911, as adopted or modified to suit Indian conditions by the Indian Copyright Act,
1914, a person had an inherent copyright in an original composition or compilation without the necessity of its
registration.
The Indian Copyright Act, 1914 was silent about registration.
N.S.GOPALKRISHNAN, INTELLECTUAL PROPERTY AND CRIMINAL LAW, 239(National Law School of
India University, 1994)

161 It provides that "In order to encourage registration of copyrights, provision is made that no proceeding
regarding infringement of copyright shall be instituted unless copyright is registered in the copyright office."

162 In State of West Bengal v. Subodh Gopal Bose [1954]1SCR587 (CB), Das J., was of the opinion that
referring to it (statement of objects and reasons) only for the limited purpose of ascertaining the conditions
prevailing at the time which actuated the sponsor of the Bill to introduce the same and the extend and urgency of
the evil which he sought to remedy. In The Central India Spinning and Weaving and Manufacturing Company,
Limited, The Empress Mills,Nagpur v. The Municipal Committee, Wardha [1958]1SCR1102, (CB) Kapur J. held
that it is also a recognised principle of construction that general words and phrases however wide and
comprehensive they may be in their literal sense must usually be construed as being limited to the actual objects

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should be ruled out as an aid to the construction of a statute. 163 While explaining this view in
Aswini Kumar Ghosh v. Arabinda Bose164 the Supreme Court observed as under:

[I]t (the statement of objects and reasons) seeks only to explain what reasons induced the
mover to introduce the Bill in the House and what objects he sought to achieve. But those
objects and reasons may or may not correspond to the objective which the majority of
members had in view when they passed it into law. The Bill may have undergone radical
changes during its passage through the House of Houses, and there is no guarantee that
the reasons which led to its introduction and the objects thereby sought to be achieved
of the Act.
In Central Bank of India v. Their Workmen [1960]1SCR200, S.K., Das, J. held that the statement of objects and
reasons is not admissible, however, for construing the Section; far less can it control the actual words used.
In Utkal Contractors and Joinery Pvt. Ltd. v. State of Orissa [1987]3SCR317, (DB) Chinnappa Reddy was in
opinion that a statute is best understood if we know the reason for it. The reason for a statute is the safest guide to
its interpretation. The words of a statute take their colour from the reason for it.
In Utkal Contractors and Joinery (P) Ltd. v. State of Orissa [1988]1SCR314, (DB) K. Jagannatha Shetty J.
held that. the Statement of objects and reasons of the Act or Ordinance cannot control the actual words used in
the legislation.
On the other hand in S.C. Prashar v. Vasantsen Dwarkadas [1964]1SCR29, (CB) S.K. Das, J. held that it is
indeed true that the Statement of Objects and Reasons for introducing a particular piece of legislation cannot be
used for interpreting the legislation if the words used therein are clear enough. But it can be referred to for the
purpose of ascertaining the circumstances which led to the legislation in order to find out what was the mischief
which the legislation aimed at.
Similarly while acknowledging the importance of the statement of objectives and reasons in Ashwani Kumar v.
Regional Transport Authority Bikaner [1999]Supp3SCR211, (DB) the Supreme Court held that accepting the
submissions made on behalf of the appellants would result in frustration of the objective sought to be achieved
by the Act.
In The Quarry Owners Association v. State of Bihar, [2000]Supp2SCR211, (DB)., A.P. Misra, J. held that
whenever there are two possible interpretations, its true meaning and legislature's intent has to be gathered, from
the Preamble, Statement of Objects and Reasons and other provisions of the same statute.
In United Bank of India v. The Debts Recovery Tribunal [1999]2SCR496, (DB), G. B. Pattanaik J. held that the
Act and the relevant provisions will have to be construed bearing in mind the objects for which the Parliament
passed the enactment.

163 Like in State of West Bengal v. Union of India,[1964]1SCR371, 382(CB) , the court observed that:[I]t
is however well settled that the Statement of Objects and Reasons accompanying a bill, when introduced in
Parliament cannot be used to determine the true meaning and effect of substantive provisions of the statute.
They cannot be used except for the limited purpose of understanding the background and the antecedent
state of affairs leading up to the legislation. But we cannot use this statement as an aid to the construction
of the enactment or to how that the legislature did not intend to acquire the proprietary rights vested in the
State or in any way to affect the State Governments' rights as owner of minerals. A statute, as passed by
Parliament, is the expression of the collective intention of the legislature as a whole, and any statement
made by an individual, albeit a Minister, of the intention and objects of the Act cannot be used to cut down
the generality of the words used in the Statute.
In State of Haryana v. Chanan Mal [1976]3SCR688, 706 (CB) , the court observed that:
[W]e have to judge the character of the .. Act by the substance and effect of its provisions and not merely
by the purpose given in the statement of reasons and objects behind it. Such statements of reasons are
relevant when the object or purpose of an enactment is in dispute or uncertain. They can never override the
effect which follows logically from the explicit and unmistakable language of its substantive provisions.
Such effect is the best evidence of intention. A statement of objects and reasons is not a part of the statute,
and, therefore, not even relevant in a case in which the language of the operative parts of the Act leaves no

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have remained the same throughout till the Bill emerges from the House as an Act of the
Legislature, for they do not form part of the Bill and are not voted upon by the members.
But in certain cases it appears that the Supreme Court has given importance to the Statement of
Objects and Reasons appended to the statute. In State of Maharashtra v. Marwanjee P. Desai165
it was observed:

[T]he Statute shall have to be considered in this entirety and picking up of one word from
one particular provision and thereby analyzing it in a manner contrary to the statement of
objects and reasons is neither permissible nor warranted. .True intent of the
Legislature shall have to be gathered and deciphered in its proper spirit having due regard
to the language used therein. Statement of objects and reasons is undoubtedly an aid to
construction but that by itself cannot be termed to be and by itself cannot be interpreted.
It is a useful guide but the interpretations and the intent shall have to be gathered from the
entirety of the Statue and when the language of the Section providing an appeal to a
forum is clear and categorical no external aid is permissible in interpretation of the same.

The question, therefore, remains unanswered or at least incompletely answered. However, it is a


well established principle of statutory interpretation is that reference to the statement of objects
and reasons is permissible for understanding the background, the antecedent state of affairs, the
surrounding circumstances in relation to the statute, and the evil which the statute sought to
remedy.166 In State of A.P. v. Nagoti Venkataramana167 the Statement of Objects and Reasons to
the Copyright Amendment Act 65 of 1984 was taken into consideration. Now we move on to
explain the relevant provisions of the Act which deal with registration. Chapter X (Section 44-
55A) of the Act and Chapter VI (Rules 15-20) of Copyright Rules 1958 makes provisions
regarding registration of copyright. Under Section 44168 Register of Copyrights to be kept at the

room whatsoever, as it does not in the .. Act, to doubt what was meant by the legislators.

164 [1953]4SCR1, 28,(CB)

165 AIR2002SC456, 462(DB)

166 G.P.SINGH, PRINCIPLES OF STATUTORY INTERPRETATION, 195, 7 th ED. (Wadhwa,


& Company, 1999), Referred in Bhaiji v. Sub Divisional Officer, Thandla, [2002]SUPP5SCR116,
(FB)

167 ([1996]Supp4SCR812)(DB)
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Copyright Office169 in the prescribed form170 in which the names or titles of works and the names
and addresses of authors, publishers and owners of copyright and such other particulars may be
entered. Section 44, while stipulating that register be maintained for taking entries of the works
that have been registered under this Act, it does not stipulate that registration is mandatory to
claim protection under the Act. Section 45 provides as under:

(1) The author or publisher of, or the owner of or other person interested in the
copyright in, any work may make an application in the prescribed form 171
accompanied by the prescribed fee to the Registrar of Copyrights for entering
particulars of the work in the Register of Copyrights:

Provided that in respect of an artistic work which is used or is capable of being


used in relation to any goods, the application shall include a statement to that
effect and shall be accompanied by a certificate from the Registrar of Trade
Marks referred to in Section 4 of the Trade and Merchandise Marks Act, 1958, to
the effect that no trade mark identical with or deceptively similar to such artistic
work has been registered under that Act in the name of, or that no application has

168 Section 44 Register of Copyrights There shall be kept at the Copyright Office a register in the prescribed form
to be called the Register of Copyrights in which may be entered the names or titles of works and the names and
addresses of authors, publishers and owners of copyright and such other particulars as may be prescribed.

169 The Copyright Act provides a Copyright Board to settle copyright disputes, a Copyright Office for
registration of copyright works and setting up of copyright societies to do copyright business.Sanjay Pandey,
Neighbouring Rights Protection in India, 9(4) JIPR 356, 357

170 Rule 15 Form of Register of Copyrights. (1) The Register of Copyrights shall be kept in six parts as
follows:Part I - Literary works other than computer programs, tables and compilations including computer data
bases and dramatic works. Part II - Musical works. Part III - Artistic works. Part IV - Cinematograph films. Part
V - Sound recordings. Part VI - Computer programs, tables and compilations including computer data bases.
(2) The Register of Copyrights shall contain the particulars specified in Form III.

171 Rule 16 of Chapter VI, Copyright Rules 1958 lists out the procedural formalities which on application have
to fulfill when filing an application for registration of copyright.B.L.WADEHRA, LAW RELATING TO
INTELLECTUAL PROPERTY, 4th Ed., 338 (Universal Law Publishing 2007).
Rule 16 Application for Registration of Copyright (1) Every application for registration of copyright shall be
made in accordance with Form IV and every application for registration of changes in the particulars of copyright
entered in the Register of Copyright shall be made in accordance with Form V.
(2) Every such application shall be in respect of one work only, shall be made in triplicate and shall be
accompanied by the fee specified in the Second Schedule in this behalf.
(3) The person applying for registration shall give notice of his application to every person who claims or has any
interest in the subject-matter of the copyright or disputes the rights of the applicant to it.]

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been made under that Act for such registration by, any person other than the
applicant.

(2) On receipt of an application in respect of any work under sub-Section (1), the
Registrar of Copyrights may, after holding such inquiry as he may deem fit,
enter the particulars of the work in the Register of Copyrights.172

As per Sections 44 and 45 of the Act, the owner or the other person interested in the copyright
may make an application to the Registrar of Copyrights for entering particulars of the work in the
register of copyrights.173 Since owner of the copyright may make an application for registration,
the ownership of the copyright therefore is an incidence prior to registration and not an incidence
after the registration. In other words, the fact of registration only creates a record which is only a
prima facie evidence of validity and nothing more than that. Under Section 48 of the Act, the
Register of Copyrights shall be prima facie evidence of the particulars entered therein and
documents purporting to be copies of any entries therein, or extracts there from certified by the
Registrar of Copyrights and sealed with the seal of the Copyright Office shall be admissible in
evidence in all Courts without further proof or production of the original. 174 The registration only
raises a presumption that the person shown is the actual author of the work. . As per Section 49
the Registrar of Copyrights may, in the prescribed cases and subject to the prescribed conditions,
amend or alter the Register of Copyrights by-

(a) correcting any error in any name, address or particulars; or

172 Rule 16 (4) If no objection to such registration is received by the Registrar of Copyrights within thirty days
of the receipt of the application by him, he shall, if satisfied about the correctness of the particulars given in the
application, enter such particulars in the Register of Copyrights.(5) If the Registrar of Copyrights receives any
objections for such registration within the time specified in sub-rule (4), or, if he is not satisfied about the
correctness of the particulars given in the application, he may, after holding such inquiry as he deems fit, enter
such particulars of the work in the Register of Copyrights as he considers proper.
(6) The Registrar of Copyrights shall, as soon as may be, send, wherever practicable, a copy of the entries made
in the Register of Copyrights to the parties concerned.

173 See BinjRajka Steel Tubes Ltd v. State MANU/TN/1319/2004

174 But if registration only has the effect of a rebuttable presumption that the facts registered are valid, it is not
a formality (unless it is still applied in a way that, in spite of the original legal regulation, it becomes a de facto
formality, because, for example, Courts only deal with any infringement case if a certificate of such a registration
is presented. Survey of National Legislation on Voluntary Registration Systems for Copyright and Related
Rights, SCCR/13/2, www.wipo.int/edocs/mdocs/copyright/en/sccr_13/sccr_13_2.doc

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(b) correcting any other error which may have arisen therein by accidental slip
or omission.175

Under Section 50 the Copyright Board, on application of the Registrar of Copyrights or of any
person aggrieved, shall order the rectification of the Register of Copyrights by-

(a) the making of any entry wrongly omitted to be made in the register, or

(b) the expunging of any entry wrongly made in, or remaining on, the register, or

(c) the correction of any error or defect in the register.

The judicial decisions on whether the registration is compulsory or not for copyright subsistence
are conflicting. Supreme Court has not discussed this point in any case 176 In Entertainment
Network (India) Ltd. v. Super Cassette Industries Ltd.177 it has been observed that Section 16
provides that a right, inter alia, in respect of any work must be claimed only under and in
accordance with the provisions of the Act unlike Trade Mark and `passing off rights can be
enforced even though they are not registered. This observation of the Court creates an
impression that registration of a copyrighted work is a condition precedent. Some of the High
Courts178 have observed that registration is compulsory for copyright subsistence, but in majority

175Under Rule 17 The Registrar of Copyrights may, on his own motion or on application of any interested person,
amend, or alter the Register of Copyrights in the manner specified in Section 49 after giving, wherever practicable,
to the person affected by such amendment or alteration, an opportunity to show cause against such amendment or
alteration, and communicate to such person the amendment or alteration made.

176 Like in R.G. Anand v. Delux Films [1979]1SCR218 (FB) whether drama 'Hum Hindustani' was registered, or,
in Gramophone Co., of India Ltd. v. Mars Recording Pvt. Ltd. (AIR2001SC2885)(DB) whether sound recording of
'kallusakkare kolliro' and others were registered, or in Vicco Laboratories v. Art Commercia Advertising Pvt. Ltd.
(AIR2001SC2753)(DB) whether of the serial "Yeh Jo Hai Zindagiwas registered, or in Eastern Book Company v.
D.B. Modak AIR 2008 SC 809 (DB) whether law report Supreme Court Cases was registered, or in Academy of
General Edu., Manipal v. B. Malini Mallya ([2009]1SCR615)(FB) whether the `dramatic work' of Yakshagana' was
registered. It is to be noted that, in the above mentioned cases, the SC did not speak on the essentiality of registration
in a copyright. Also, none of the parties had argued on the point of registration as a condition precedent.

177 2008 (37) PTC 353, 378.


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of cases the High Courts179 have observed that registration is not compulsory for copyright
subsistence. In Mishra Bandhu Karyalaya v. Shivratanlal Koshal180 it was held that:

[U]nder the Copyright Act 1957 it appears that under Sections 13 and 45, the registration
of book with the Registrar of Copyrights, is a condition for acquiring copyright with
respect to it. A plain reading of the several provisions of the Act, leaves no doubt that a
copyright in a book now is only secured if it is an original compilation and has been duly
registered according to the provisions of the Act. Once it is so registered, the author is
deemed to acquire property rights in the book. The right arising from the registration of
the book can be the subject-matter of civil or criminal remedy, so that, without it the
author can have no rights, nor remedies in spite of the fact that his work is an original
one.
Full Bench of Madhya Pradesh High Court in K.C. Bokadia v. Dinesh Chandra Dubey181 has
observed that there is no legislative intent to make registration of a copyright mandatory. The
Court observed as under:

178 Madhya Pradesh High Court in Mishra Bandhu Karyalaya v. Shivratanlal Koshal AIR 1970
MP 261 (DB), B.K. Dani v. State of M.P. 2005CriLJ876(SB); in this case, the court referred Shiv
Lal Agarwals & Co. Publishers, Indore v. State of M. P. (M.Cr.C. No. 4765/96) in which the
Single Bench of the Madhya Pradesh High Court held that registration of copyright is a condition
acquiring copyright in a book. Orissa High Court in Bnindahan Sahu v. B. Rajendra Subudhi
AIR 1986 Ori. 210(SB)

179Bombay High Court in Burroughs Wellcome (India) Ltd. v. Uni-sole Pvt. Ltd. (MANU/MH/0081/1997)
(SB); Asian Paints (I) Ltd. v. Jaikishan Paints & Allied Products ((2002)4BOMLR941)(SB); Calcutta High
Court in Satsang v. Kiron Chandra Mukhopadhyay (AIR1972Cal533)(SB), Zahir Ahmed v. Azam Khan
(1996CriLJ290)(Cal HC)(SB); Delhi High Court in Glaxo Orthopedic U.K. Ltd. v. Samrat
Pharma(AIR1984Delhi265)(SB), Visakha Chemicals v. Mala Ram (2006(32)PTC441(Del))(SB), Mattel Inc. v.
Jayant Agarwalla (2008(38) PTC416(Del))(SB), Rajesh Masrani v. Tahiliani Design Pvt. Ltd.
(MANU/DE/1683/2008)(DB); Madras High Court in Jayanthilal M. Munoth v. M. Durairajan
(2006(33)PTC330(Mad))(SB), Andhra Pradesh High Court in Muppala Ranganayakamma v. K. Ramalakshmi
(MANU/AP/0030/1985)(SB); Allahabad High Court in Nav Sahitya Prakash v. Anand Kumar (AIR1981All200)
(SB); Kerala High Court in Kumari Kanaka v. Sundararajan (1972) Ker LR 536(DB), R. Madhavan v. S.K.
Nayar (AIR1988Ker39)(DB); Madhya Pradesh High Court in K.C. Bokadia v. Dinesh Chandra Dubey
(1999(1)MPLJ33)(FB); Patna High Court in Radha Kishna Sinha v. State of Bihar (1979CriLJ757)(Patna HC)
(SB).

180 AIR 1970 MP 261, 267(DB)

181 MANU/MP/0269/1995(FB), para.8.


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[A] careful analysis of the Scheme and the provisions of the Act does not disclose any
legislative intention to make registration of copyright mandatory or to take away civil or
criminal remedies in the event of n on-registration of copyright. On the other hand, some
of the provisions point a contrary conclusion. Copyright is the exclusive right, subject to
the provisions of the Act, to do and authorize the doing of any of the acts enumerated in
Section 14 in respect of a work or substantial part thereof. The first owner of the
copyright shall be the author of the work. In other words, the ownership of the copyright
is a logical consequence of the authorship. Copyright does not arise from registration of
copyright. Provision regarding registration and maintenance of register is basically a
provision to enable entries to be made in respect of relevant particulars including the
names of owners of copyright. Unless there is an existing copyright and a person is the
owner of a copyright, the question of applying for or making entries in the register of
copyrights does not arise. Registration follows the copyright and not vice versa. Certified
copies entries in the register are only prima facie evidence without further proof and they
are not conclusive. A copyright when it is propounded or challenged has to be duly
established in a competent Court.
The Court further observed:

[I]n Mishra Bandhu Karyalayas case, the Division Bench of this Court was concerned
with the State of affairs governed by the Copyright Act, 1914 which did not contain any
provision for registration. Therefore, the question of registration being mandatory or not
did not arise for consideration. Their Lordships of the Division Bench in passing adverted
to the provisions of Copyright Act, 1957 and indicated that registration is mandatory and
legal proceedings cannot be initiated in absence of registration. The observations were
unnecessary for the disposal of the case under consideration and are clearly obiter dicta.
The decision also does not rest on any specific statutory provision or any recognised
principle of law. With great respect, we hold that Mishra Bandhu Karyalayas case, AIR
1970 MP 261, does not lay down correct law; so also the decision in Bnindahan Sahus
case, AIR 1986 Ori. 210. With respect we agree with the view taken by the High Court of
Calcutta, Allahabad, Madras, Kerala and Patna. Delhi High Court has taken a similar
view in Glaxo Operations UK Ltd. v. Samrat Pharmaceuticals, AIR 1984 Delhi 265.
K.C. Bokadia v. Dinesh Chandra Dubey182 overruled Mishra Bandhu Karyalaya v. Shivratanlal
Koshal183. However, in year 2005 the Single Bench of Madhya Pradesh High Court in B.K. Dani
v. State of M.P184 observed that in the absence of registration, the respondent ....never acquired
copyright. B.K. Dani did not follow K.C. Bokadia, the precedent of full bench of the same High

182 MANU/MP/0269/1995(FB).

183 AIR 1970 MP 261(DB)

184 2005CriLJ876, 877(SB).


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Court. B.K. Dani is therefore per incurium. B.K. Dani demonstrates the confusion regarding the
requirement of the registration for the copyright.

Reiterating the same point, the Delhi High Court in Camlin Pvt. Ltd. v. National Pencil
Industries185 observed as under:

[T]he certificates under the Copyright Act only prima facie, show that the particulars
mentioned in the certificate are entered, in the copyright register .. the mere fact that
something is entered in the Copyright Register, does not as, a matter of law establish that
what is registered is in fact and in law copyrightable subject matter. This is so because,
the sine qua non to the existence of copyright, is the expenditure of skill and labor on any
work which originated from its author and unless the original work, on which skill and
labor has been expended by its author is produced in Court to prima facie show that the
work has originated from an author, it cannot be said that there is copyright in any work.

In view of the above way we can say that in most of the decisions, the High Courts have held
that registration is not compulsory for the copyright subsistence. To deal with such a situation
where there are conflicting opinions of the two or more High Courts, the Law Commission of
India, taking the matter suo motu in its 136th on Conflicts in High Court Decisions on Central
Laws - How to Foreclose and How to Resolve submitted on February 21, 1990 to the Ministry
of Law and Justice, Government made the following recommendations with the hope that the
gravity and urgency, of the situation will be appreciated and the needful will be done as soon as
possible:

(1) When High Court A is faced with e problem pertaining to on allIndia law
(excluding the Constitution of India) on which High Court B has already made
a pronouncement, if High Court A holds at view different or inconsistent from
the view already pronounced by High Court B, High Court A, instead of
making its own pronouncement, shall make a reference to the Supreme Court. The
order of reference shall be accompanied by a reasoned opinion propounding its
own view with particular specification of reasons for differing from the view
pronounced by High Court B.
(2) (a) The party supporting the reference may arrange for appearance in the
Supreme Court but will not be obliged to do so.
185 AIR1986Delhi444,451(SB)
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(b) The said party will have the option of submitting written submissions
supplementing the reasoning embodied in the order of reference.
(c) The party opposing the reference shall also have a similar option for
engaging an advocate in the Supreme Court and submitting written
submissions, inter alia to counter the written submissions, if any,
submitted by the other side.
(3) The Supreme Court may require the Government of the State in which the High
Courts A and B are situated to appoint at the States cost any advocate from
the State panel of lawyers of the concerned States to support by oral arguments
the view points of the respective High Courts.
(4) All such references may be assigned to a Special Bench which may endeavor to
dispose of all such references within six months of the receipt of the references in
the Supreme Court in view of the inherent urgency to ensure uniformity.
(5) If any SLP or appeal is already pending on the same point from judgment of High
Court B or any other High Court, the said matter may be clubbed alongwith the
reference. Any interested party may be permitted to appear as interveners.
(6) The Supreme Court may return the reference if it appears that the parties are
acting in collusion.
(7) The Attorney General may be served with a copy of the reference and he shall be
entitled to urge the point of view of the Central Government in regard to the
relevant provision of the concerned Central Statute, if so desired.
(8) The referring High Court shall finally dispose of the appeal on all points in the
light of the decision of the Supreme Court in regard to the referred point.
(9) The decision of the Supreme Court in the reference will have no impact or effect
on the decision of High Court B in the event of the Supreme Court upholding
the reference in ease it has become final between the parties by reason of the
matter not having been carried to the Supreme Court and the said decision shall
remain undisturbed as between the parties in High Court B.
In addition to above the Commission also drafted a Bill for legislation on the problem. But
nothing has happened so far either from the side of the Government and Parliament or from the
side of the Supreme Court or High Court. The situation is grim and fraught with the lethargy of
the Government. This is generally the forgone conclusions and fate of the reports of the Law
Commission of India. The point is if the Government does not have the time and willingness to
discuss and implement the recommendation of the Commission, why the Commission exists?
Does it exist to do research work only?

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Following seeks to note the conclusions of this Paper and also makes certain suggestions in the
light conclusions arrived at.

Part VI

Conclusions and Suggestions

In view of the above, it is submitted that the hypothesis that a copyright candidate must possess
three essential qualifications, namely: one, the candidate must be a work in the copyright law
sense; two, the work must be original in the copyright law sense and three the work must be
fixed on a tangible medium; and he may have two desirable qualifications namely: firstly, the
work may be published and secondly it may be registered with the copyright office . . .the
desirable qualifications do not bring copyright in a work in existence but they do confer certain
procedural and evidentiary advantages stands verified.

It may be concluded that the Act itself has identified the candidates of copyright protection and
there exists very little doubt as to meaning of work particularly after the decision in Dev Anand
case (supra). As to the meaning and standard of originality there is no strict principle or test
through which the degree of originality could be precisely determined. Hence, it would be case
to case basis approach that Courts may follow to determine this question. Doctrine of sweat of
the brow still enjoys the prominence in determining the threshold of originality in at least
primary works. The Supreme Court has also recognized the threshold of modicum of
creativity for reporting of judgments of courts and this threshold may be extended to cover other
derivatives works but not primary works for the Supreme Court itself has categorically limited
the scope of its ratio to judgments of the courts.

The requirement that a work must be fixed in a tangible medium has not been unequivocally and
unambiguously clarified either by the Parliament or judiciary. However, this study makes it clear
that this requirement is an essential eligibility requirement for existence of copyright in a work.

As to the requirement of publication, it has been made clear that there can be a copyright both
in a published work as well as in an unpublished work. Though copyright subsists in unpublished
work also, the importance of publication cannot be ignored under the copyright law.

Page 69 of 255
As to the question: whether registration is mandatory requirement or not, there still persists a
significant level of confusion both in academia and judiciary.

In view of the above, it suggested that one of the functions of law is to avoid and minimize
disputes besides resolving them. One of the methods of avoidance and minimization of disputes
is bringing certainty and clarity in law for uncertainty in law breeds unnecessary disputes and
litigation. Although it is not possible to bring in certainty in all the dimensions of law for
flexibility in law is also an equally important value, yet some areas of law may be made certain
very easily for certainty in these areas are not only desirable but also possible. The law relating
to fixation, publication and registration is possible to be made certain. The Copyright Act,
1957 may make provisions either ways, i.e., it may provide that fixation, publication and/or
registration is compulsory or is not compulsory. However, it is suggested that the requirements
of fixation should be made compulsory and the requirements of publication and registration
be made optional in clear terms. It is submitted that the Copyright (Amendment) Bill, 2010 as
amended in 2011 does not capture these issues. It is further submitted that the Copyright Act,
1957 should also provide that whether the offences under the Act are cognizable or non-
cognizable; bailable or non-bailable as there are conflicting opinions of the High Courts. 186
Hence, it is suggested that the Copyright Act, 1957 should be suitably amended to remove the
ambiguities in it.

186 High Courts of Kerala and Gauhati on the one hand and the High Court of Andhra Pradesh
had the occasion to deal with the question: whether the offences under 63 of the Copyright Act a
cognizable one or not? High Courts of Kerala and Gauhati answered the question in affirmative
and held that the offences under Section 63 are non-balibale. High Court of Andhra Pradesh
answered the question in negative and held that the offences under Section 63 are bailable. See
Jitendra Prasad Singh v. State of Assam, 2003(26)PTC486(Gau); Amarnath Vyas v. State of A.P.,
2007 Cri. LJ 2025(SB); Sureshkumar v. The Sub Inspector of Police, 2007(3)KLT363(SB).
Page 70 of 255
Copyright Contracts
Prof. (Dr.) Ghayur Alam
Abhinav Pradhan

Contract is an effective device of facilitating and maximizing exchanges. Exchanges are


necessary for the existence and development of individuals and society. Contract also minimizes
externalities. Contract makes the transactions enforceable by law. Enforceability of transactions
by law brings about certainty. Certainty in and of transactions is a value cherished by both people
and law. A copyright owner may lack the ability and capacity to fully exploit her copyright. She
may not have adequate economic resources, may not be good enough in making viable business
choices and strategies, and may not have the presence in domestic and/or global markets. In such
cases the device of contracts comes to her rescue. What she cannot do on her own, she may
allow someone else do it. She may not be able to reach the world at large with her work on her
own. Contracting helps her reach wider public and help enrich public domain of knowledge, art
and science which in turn help promote the basic objective of copyright law, i.e., encouragement
of learning, distribution and dissemination of copyrighted material.

Section 14 of the Copyright Act, 1957 1 (hereinafter, the Act) inter alia provides, For the
purposes of this Act, copyright means the exclusive right subject to the provisions of this Act,
to do or authorize (emphasis added) doing of any of the following acts . . . Copyright
being an exclusive right is only a negative right and not a positive right. The word authorize
used in Section 14 of the Act does not create a positive copyright. Nevertheless, it does create a
positive right to authorize someone else to exercise the negative right through contracts. In
other words, if a work in the copyright law sense is banned or is censored there will be no
copyright in the work and hence the question of authorizing someone else to exercise the
copyright will not arise. The right to create a copyrightable or non-copyrightable work does not
emanate from the provisions of the Copyright Act. It is our birth right and human right to express
ourselves, to be creative, to create works of art, science, and entertainment. These rights are
recognized and reaffirmed as freedom of speech and expression in Article 19 (1) (a) read with

Professor in Business and Intellectual Property Laws & Ministry of HRD Chair on Intellectual
Property Laws at the National Law Institute University, Bhopal, India.

Research Associate, Ministry of HRD Chair on Intellectual Property Laws at the National Law
Institute University, Bhopal, India.

1 Act 14 of 1957.
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Article 19 (2) of the Constitution of India. Under Article 19 (2) of the Constitution of India,
reasonable restrictions on the enumerated grounds may be imposed on the right to create
copyrightable work. Reasonable restrictions, though necessary, are at times used by the
Government of the day to stifle and choke creativity in and of thought and expression in name of
being seditious, blasphemous, defamatory, or immoral. In this Article, however, we are not
dealing with these dimensions. For, according to the constitutional scheme, we have the
fundamental right to express ourselves in any manner we like and the restrictions are only
exceptions and not fundamental. As a corollary, every copyrightable work is protected under the
Copyright Act unless the competent authority places a reasonable restriction on it. So a copyright
owner can exercise the copyright himself or he may authorize someone else (including the
copyright societies) to exercise some or all the copyright through contracts.

Copyright law also envisages non-voluntary contracts by fashioning the mechanisms of


compulsory and statutory licenses. By fashioning these mechanisms, copyright law serves her
primary objectives: encouragement of learning, dissemination of knowledge, and access to
copyrighted material. In a sense, the mechanism of compulsory license, sub silentio, caste a
legal duty on the copyright owner to make the copyrighted material available to the public and
tells her that if she cannot do it, somebody else do it, and she will be entitled a reasonable
royalty. The mechanism of statutory license allows others to take the copyrighted material to the
public. These equitable mechanisms seek to balance the interests of the copyright owner and the
public.

In this Article an attempt has been made to explain the relevant provisions of the Copyright Act,
1957 relating to various types of contracts. These provisions may be classified into three
categories: (i) provisions in the nature of nonnegotiable rules, 2 (ii) provisions in the nature of
implied rules,3 and (iii) provisions in the nature of opt-in rules.4 Attempt has been made to
discern the meaning of these statutory provisions in the light of the judicial interpretation-
2 Nonnegotiable rules are rules which cannot be negotiated by the parties to the contract. These
rules are prescribed by law. These rules are also known as immutable rules, absolute rules, or
positive rules of law. Nonobservance of such rules produces still born agreements. The parties to
the contract cannot ignore these rules.

3 Implied rules are rules prescribed by law but operate only when there is no agreement to the
contrary. They are always read in a contract unless the contract provides otherwise. They are
sounds of law in case of the silence of the parties. These rules are also known as negotiable rules,
default rules, supplied rules. The parties to the contract can alter, modify, qualify, or avoid these
rules by using unambiguous and unequivocal words. Law prescribes these rules to bring about
certainty in the contract. These rules are always in favor of one of the parties to the contract. The
Page 72 of 255
construction thereof. Wherever judicial interpretation-construction of these provisions are not
available reliance has been placed on other sources.

This Article proceeds into five parts. Part I deals with voluntary copyright contracts. Part II deals
with compulsory license. Part III deals with statutory license. Part IV deals with contracts
relating to copyright societies. Part V concludes.

Part I
Voluntary Copyright Contracts

1.1 Ownership of Copyright and Contract

In this Part an attempt has been made to analyze the provisions of the Copyright Act, relating to
voluntary copyright contracts, with the help of case law. This Part proceeds in three steps. Firstly,
the provisions relating to ownership of copyright and role of contract in the light of Section 17 of
the Act and related cases have been analyzed. The parties to the contracts relating to copyright
ownership are the author and the employer and/or the Government. Secondly, the provisions
relating to assignment and related cases have been analyzed. The parties to the assignment
contracts are the owner and some other person. Thirdly, the provisions relating to license and
related cases have been analyzed. The parties to the license contracts are the owner and some
other person.

Voluntary contracts are contracts entered into by the free consent of the parties without the
compulsion of law. Contract, express or implied, between the author and any other person for

party in whose favor these rules are may wisely decide not to negotiate these rules. On the other
hand, the party disfavored by these rules may choose to negotiate these rules or else loose the
battle without fighting it.

4 Opt-in rules are rules which are never read in a contract unless expressly incorporated therein.
Page 73 of 255
purposes of copyright ownership, license, and assignment are three types of voluntary contracts
envisaged by the Copyright Act, 1957. In case of license and assignment the owner, not the
author, of the copyright can grant a license or assign the copyright. The favourite of copyright
law is the owner and not the author of the copyright for the implied rules relating to ownership of
copyright are against the author and there is no implied rule against the owner as is clear from
the provisions of Section 17 of the Act, which reads as under:

Subject to the provisions of this Act, the author of a work shall be the first
owner of the copyright therein provided that-
(a) in the case of a literary, dramatic or artistic work made by the author in the
course of his employment by the proprietor of a newspaper, magazine or
similar periodical under a contract of service or apprenticeship, for the
purpose of publication in a newspaper, magazine or similar periodical, the
said proprietor shall, in the absence of any agreement to the contrary, be the
first owner of the copyright in the work in so far as the copyright relates to
the publication of the work in any newspaper, magazine or similar periodical,
or to the reproduction of the work for the purpose of its being so published,
but in all other respects the author shall be the first owner of the copyright in
the work;
(b) subject to the provisions of clause (a), in the case of a photograph taken, or a
painting or portrait drawn, or an engraving or a cinematograph film made,
for valuable consideration at the instance of any person, such person shall, in
the absence of any agreement to the contrary, be the first owner of the
copyright therein;
(c) in the case of a work made in the course of the author s employment under a
contract of service or apprenticeship, to which clause (a) or clause (b) does
not apply, the employer shall, in the absence of any agreement to the
contrary, be the first owner of the copyright therein;
(cc) in the case of any address or speech delivered in public, the person who has
delivered such address or speech or if such person has delivered such
address or speech on behalf of any other person, such other person shall be
the first owner of the copyright therein notwithstanding that the person who
delivers such address or speech, or, as the case may be, the person on whose
behalf such address or speech is delivered, is employed by any other person
who arranges such address or speech or on whose behalf or premises such
address or speech is delivered;
(d) in the case of a Government work, Government shall, in the absence of any
agreement to the contrary, be the first owner of the copyright therein;
(dd) in the case of a work made or first published by or under the direction or
control of any public undertaking, such public undertaking shall, in the
absence of any agreement to the contrary, be the first owner of the copyright
therein.

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Explanation.- For the purposes of this clause and Section 28A, public
undertaking means-
(i) an undertaking owned or controlled by Government; or
(ii) a Government company as defined in Section 617 of the Companies
Act, 1956; or
(iii) a body corporate established by or under any Central, Provincial or
State Act;
(e) in the case of a work to which the provisions of Section 41 apply, the
international organisation concerned shall be the first owner of the copyright
therein.
Provided that in case of any work incorporated in a cinematograph work,
nothing contained in clauses (b) and (c) shall affect the right of the author in the
work referred to in clause (a) of sub-section (1) of Section 13.

A perusal of aforementioned provisions reveals that the implied rules relating to ownership of
copyright vest the ownership in the employer or government. The implied rules should and could
have been in favour of the author. The provisions of Section 17 should and could have read as,
The author shall be the first owner of the copyright therein in the absence of any contract to
contrary. This formulation of Section 17 would have and would better serve the purposes of
copyright law for authors generally do not have the equal bargaining power to negotiate with the
employer or government. This approach would have provided at least an opportunity to the
author to bargain with the employer or government and the prolixity of Section 17 could have
been easily avoided.

In the following paragraphs we will try to explain the provisions relating to voluntary contracts
with the help of case law.

In Indian Performing Right Society Ltd. v. Eastern India Motion Pictures


Association5 the issue before the Supreme Court was whether the producer of a cinematograph
film can defeat the existing and future right of music composer, lyricist by engaging them. The

5 [1977] 3 SCR 206. (DB) Supreme Court of India. Justice Jaswant Singh delivered the
judgment.
Page 75 of 255
Court said yes and observed that the key to the solution of this question lies in provisos (b) and
(c) to Section 17 of the Act. The Court observed as under:

According to the first of these provisos viz. proviso (b) when a cinematograph
film producer commissions a composer of music or a lyricist for reward or
valuable consideration for the purpose of making his cinematograph film, or
composing music or lyric therefore i.e. the sounds for incorporation or
absorption in the sound track associated with the film, which as already
indicated, are included in a cinematograph film, he becomes the first owner of
the copyright therein and no copyright subsists in the composer of the lyric or
music so composed unless there is a contract to the contrary between the
composer of the lyric or music on the one hand and the producer of the
cinematograph film on the other. The same result follows according to
aforesaid proviso (c) if the composer of music or lyric is employed under a
contract of service or apprenticeship to compose the work. It is, therefore,
crystal clear that the rights of a music composer or lyricist can be defeated by
the producer of a cinematograph film in the manner laid down in provisos (b)
and (c) of Section 17 of the Act.6

Indian Performing Right Society Ltd.7 clearly tilted the balance in favour of the producer
of films against the music composer and lyricist.

In Urmila Charan Gupta v. Charushila Sharan Gupta 8 the question before the
Copyright Board was whether the Petitioners father Shri Maithili Sharan Gupta, eminent Hindi
writer, was the author of the books in question or not. It was alleged that the books were written
during the course of his whole time employment as a member of the undivided joint family. The
Copyright Board held that copyright of the books, vested in the author alone and not in the joint
family and for determining this question, the Copyright Board noted the following:

6 Id. at Page 222.

7 See supra n. 5.

8 1983(3) PTC 84(CB) Copyright Board at Delhi. Chairman R.A. Misra delivered the order.
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1. That, a person can acquires, own and retain separate property, even
while continuing as a member of an undivided Joint Hindu Family.

2. That, copyright is a special right, created and governed by the


provisions of the Copyright Act and the principles of Hindu Law will
apply to it only insofar as they are not inconsistent with that Act.

3. That, the author of a work is the first owner of the copyright in his work,
subject to provisos (a) to (e) of Section 17 of the Copyright Act.

4. That, as provided in Section 19 of the Indian Copyright Act, no


assignment of Copyright in any work shall be valid unless it is in
writing and signed by the author or his duly authorised agent.9

Discussing the employer-employee relationship in the light of Section 17, the Board observed as
under:

In order to constitute a contract of service, as pleaded by the Opposite Parties,


there should be at least two separate parties--an employer and an employee--and
also an agreement between them for the performance of some act whose terms
and conditions are clearly defined. In the present case, Shri Maithili Sharan
Gupta was formerly an undivided member of the Joint Hindu Family and on its
disruption, was a partner of the Partnership Firm, holding the some position and
rights as the other partners. If the contention of Opposite Parties is accepted, he
was the employer and his own employee also. The position seems to be
anomalous that he could be both. Further, it is not disclosed from the record as
to who were the participants in the alleged contract, when it was made and what
were its terms and conditions. It is not possible to infer them on mere guess, as
sought by the Opposite Parties. We are, therefore, unable to hold that the
copyright of the books in question vested first in the Joint Hindu Family of Shri
Maithili Sharan Gupta and then in the Partnership Firm because of the above
Provision to Section 17 of the Copyright Act. Further, in accordance with
Section 17 of the Copyright Act and the Hindu Gains of Learning Act also Shri
Maithili Sharan Gupta would be seemed to be the exclusive owner of the
copyright of the books in question unless it can be shown that he had assigned it
to the Opposite Parties.10

9 Id. at Page 96-97.

10 Id. at Page 97-98.


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Urmila Charan Gupta11 did not recognise a Hindu Undivided Family or a Partnership Firm
as the employer of its member or of partners, as the case may be, for the purposes of determining
the copyright ownership. Urmila Charan Gupta is an authority for the proposition that a
member of a Joint Hindu Family, if he is the author of a work, he is the owner of copyright and a
partner of a Partnership Firm, if he is the author of a work, he is also the owner of copyright,
unless there is an agreement to the contrary.

In Madhu v. Ramesan12 the Defendants-Respondents alleged that they had engaged and
utilised the services of the Plaintiff-Appellant under a contract of service for rendering the lyrics
of the two songs and paid to the Plaintiff for the services rendered, but that he did not bother to
obtain a receipt for the same in view of their friendship. Plaintiff-Appellant denied that his
authority or consent had been given for the incorporation of his two songs in the cinematograph
film. The lower Court found that there was an agreement between the Plaintiff and the Defendant
and that with that agreement, his rights got extirpated by force of Section 17(b) of the Copyright
Act. The Kerala High Court set aside the order of the lower Court and observed that prima
facie, the contention of the Defendant about the engagement of the Plaintiff under a contract, is
not supported by any documentary evidence. Whether there was an anterior friendship strong
enough as to persuade the parties not to have any record in relation to the terms of engagement,
or the nature and payment of consideration therefor, and other relevant details, would depend
upon the existence of cogent and satisfactory evidence in that behalf. The Court observed as
under:

Once the author of a lyric parts with a portion of his copyright by authorising
a film producer to make a cinematograph film in respect of his work and
thereby to have his work incorporated or recorded on the sound track of a
cinematograph film, the latter acquires a copyright which gives him the
exclusive right of performing the work in public. The author of the lyric who
has given such an authorisation to a film producer to make a cinematograph
film of his composition by recording it on the sound track of a cinematograph
film, cannot complain of the infringement of his copyright if the film producer

11 See supra n. 8.

12 MANU/KE/0438/1987 (SB) Kerala High Court. Justice K. Sukumaran has delivered the
judgment.
Page 78 of 255
causes the lyric or musical work recorded on the sound track of the film to be
heard in public. The composer of a lyric retains the right of performing it in
public for profit otherwise than as a part of the cinematograph film. The film
producer thus gets a very valuable right as a result of the authorisation of the
author of a lyric in the manner indicated in the Act. A protectable copyright
comes to vest in the cinematograph film on its completion.13
Under Section 17, where a film producer commissions a lyricist for valuable
consideration for the purpose of making his cinematograph film or composing
the lyric therefore, the film producer acquires the first copyright therein; and
no copyright subsists in the author of the lyric unless there is a contract to the
contrary between the composer of the lyric on the one hand and the producer
of the film on the other. Similar is the situation if the author of the lyric is
employed under a contract of service or apprenticeship to compose the work.
The rights of an author of a lyric can be defeated by the producer of a film in
the manner laid down in the provisos to Section 17(b) and (c) of the Act.14
Madhu15is an authority for the propositions: (i) the producer of the film has the exclusive right
of performing the work of a lyricist, where the lyricist has authorised the film producer to make a
cinematographic film in respect of his work, and (ii) the lyricist retains the right of performing it
in public for profit otherwise than as a part of the cinematograph film. These two propositions
read together seeks to balance the interest of the lyricist and the film producer.

In V.T. Thomas v. Malayala Manorama Company Limited, Cochin 16 the Appellant-


Defendant was an employee of the Respondent-Plaintiff. Both claimed the copyright in the
publication of cartoons entitled Boban and Molly. Accepting the plea of the Appellant that the
cartoon had been conceived by him prior to his employment under the Plaintiff, the Court
observed as under:

A reading of the provisos to Section 17(a) and (c) would clearly bring out that
proviso to Section 17(c) is applicable only where proviso to Section 17(a) and
(b) are not attracted. It is expressly suited so. If, therefore, proviso (a) is
applicable, proviso (c) is automatically excluded. Shorn of inapplicable

13 Id. at Para 21.

14 Id. at Para 22.

15 See supra n. 12.

16AIR 1988 Ker 291(SB) Kerala High Court. Justice K. Sukumaran delivered the judgment.
Page 79 of 255
words, the proviso (a) will read, as regards the parties in the present case as
follows:

[A]rtistic work . . . the author in the course of his employment by the


proprietor . . . periodical under a contract of service . . . for the purpose
of publication . . . newspaper . . . periodical, the said proprietor shall . .
. the first owner of the copyright in the work . . . so far as the copyright
relates to the publication of the work in . . . periodical, or to the
reproduction of the work for the purpose of its being so published17

Proviso (a) visualises (i) an author (ii) the employment of him (iii) by the
proprietor of a periodical and (iv) the resultant position in relation to the
proprietor being the first owner of the copyright for publication in the
periodical or to the reproduction of the work for its being published in the
newspaper. Proviso (a) to Section 17 is, therefore, the relevant proviso. Toms
(the 1st defendant) is the author; the Manorama Weekly is the periodical, and
the plaintiff is the proprietor of the periodical Proviso(c) deals with other
employers. It is not applicable, as proviso (a) is fully attracted.18

The determination about the applicability of the proviso (a) obligates


determination of the terminus a quo of the employment. The materials
prima facie indicate that the employment started with an appointment in
1961 and ended in June, 1987. Works of the author during that period thus
stand apart. I have declined to disturb that pan of the order of injunction in
relation to the cartoons drawn by the defendant during the period of
employment of the 1st defendant under the plaintiff-Company.19

On the basis of the above observation, the Court held:

In relation to cartoons created after the admitted termination of his


employment, different considerations should apply. Plaintiff cannot claim any
copyright in relation to those works. The provisions of Section 14 which give
17 Id. at Para 7, Page 294.

18 Id. at Para 8, Page 294.

19 Id. at Para 9, Page 294.


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the meaning of copyright is very relevant. The cartoon would come within
Clause (b) of that Section namely, an artistic work.20

V.T. Thomas21 highlighted the distinction between: (i) works conceived before the
employment, (ii) works created during the course of the employment (iii) works created after
the cessation of employment. In the opinion of the Court the implied rules as to copyright
ownership favors the employer only if the work is conceived and created during the course of
employment. This case is an authority for the proposition that employer shall be the first
owner of the copyright, unless there is an agreement to contrary, only where the work is
created due to and during the course of employment and so far as the works conceived or
created by the employee before or after the employment are concerned only the author is the
copyright owner.

In Rupendra Kashyap v. Jiwan Publishing House22 the question before the High
Court was whether the paper setters or the Central Board of Secondary Education (CBSE)
would be the owner of the copyright in the question paper set for the purpose of conducting an
examination by CBSE. The Court decided that the CBSE is the first owner of the copyright in
the examination papers on which examinations were conducted by it. Referring to the relevant
part of Section 17 and 28A of the Act as well as the original manuscripts of question papers,
the appraisal form by moderator, and the agreements between the paper setters and the Board,
the Court observed that it cannot be doubted that the paper setter (one or more) is the author of
the question paper. However, if it can be held that CBSE is a public undertaking and the
question paper has been brought into existence under its direction or control then the CBSE-
and not the paper setter-would be the owner. Referring to the Manuals of Rules and Regulation
of CBSE, the Court declared the status of CBSE as under:

20 Id. at Para 10, Page 294.

21 See supra n. 16.

22 1996 (16) PTC 439 (Del) (SB) Delhi High Court. Justice R.C. Lahoti delivered the judgment.
Page 81 of 255
The term public undertaking is not defined anywhere in the Copyright Act.
In the context, the word public means something belonging to the people,
pertaining to a community or a nation in contradiction with something
belonging to a private individual. The public undertaking would be an
undertaking engaged in or concerned with the affairs of community or the
public and not owned or controlled by any individual or anyone having a
private interest. The CBSE is discharging a public function in the field of
imparting education. It has the governmental authority and privilege to
conduct public examinations. The examinations conducted by it are
universally recognised as having authority and sanction of the government
behind. It is discharging one of the governmental functions. It has
governmental supervision. It is clear that CBSE is a society which is
functionally and structurally impregnated with the governmental character and
discharging a public function. It is, therefore, a public undertaking.23

Since the terms and conditions for paper setting was decided by the CBSE and the performa was
duly signed by paper setters, there was no doubt that the applicability of Section 17(dd) was
clearly attracted to the facts of the case and CBSE was the first owner of the copyright in the
examination papers.

Rupendra Kashyap24 declared CBSE a public undertaking. This case is an authority for the
proposition that the examination conducting bodies are the first owner of copyright in the
question paper, unless there is an agreement to the contrary.

In Bunny Reuben v. B.J. Panchal25 the Respondent-Complainant, a freelance


photographer, filed a complaint against the Petitioner on the ground that photographs taken him
were published in the book without his permission. Petitioner claimed that Complainants
services were engaged on payment of charges. The Bombay High Court quashing the complaint
observed that there is no prima facie proof that the Complainant had the copyright in the

23 Id. at Para 11, Page 445-446.

24 See supra n. 22.

25 MANU/MH/0456/2000(SB) Bombay High Court. Justice S.S. Parkar delivered the judgment.
Page 82 of 255
photographs and hence the Petitioners cannot be prosecuted for the alleged offence. The Court
observed as under:

A perusal of the provision would show that it does not help the Complainant
at all in the sense that under the said clause if the photographs are taken for
valuable consideration at the instance of any person and not the photographer
like the Complainant, in the absence of any agreement to the contrary, would
be the first owner of the copyright in the photographs. The petition as well as
the correspondence does show that the complainant had received the
payments from the Petitioner No. 2 and in the absence of any agreement
between the parties, undoubtedly the person who had engaged the services of
the Complainant was the first owner of the copyright. It is not the case of the
Complainant in the complaint that he had taken those photographs for any
other purpose. Admittedly the Complainant is a professional photographer
and, therefore, it cannot be said nor is it the case of the Complainant that he
was an amateur photographer and had taken the photographs for any other
purpose or for his own use.26

The Court observed that merely because the negatives were retained by the complainant, would
not make the complainant owner of the copyright. Clause (b) of Section 17 in respect of the
ownership of the photographs taken for valuable consideration, in the absence of any agreement
to the contrary, puts the complainant out of Court.

Bunny Reuben27 case reiterates the statutory provisions that the person at whose instance the
photographs are taken is the first owner of the copyright unless there is an agreement to the
contrary.

In Vicco Laboratories v. Art Commercial Advertising Pvt. Ltd. 28 the issue before the
Supreme Court was whether the Petitioner-Plaintiff was the owner of the copyright of the T.V.
serial and the Respondents-Defendants acted as the agents of the Plaintiff. The Trial Court found
that the Plaintiff has not been able to prove that the TV serial was produced by Defendants in the

26 Id. at Para 6.

27 See supra n. 25.

28 2001(21) PTC 687(SC) (DB) Supreme Court. Justice S. Rajendra Babu delivered the
judgment.
Page 83 of 255
course of the employment. On successive appeals, the High Court and the Supreme Court upheld
the decision of the Trial Court. The Supreme Court observed as under:

So far as the contentions raised on the basis of the Section 17 of the Copyright
Act is concerned, it is clear that the petitioners were not able to establish that
the respondents produced the said serial (1) as the agents of the petitioners; (2)
in the course of their employment with the petitioners; (3) for valuable
consideration paid by the petitioners to them; and (iv) at the instance of the
petitioners. When these factors had not been established and the suit is itself
not dependent on the interpretation of Section 17 of the Copyright Act,
pleadings and issues raised did not attract the same. On appreciation of
evidence, the Courts below have come to the conclusion that the respondents
did not make the said serial for valuable consideration at the instance of the
petitioners and in view of the findings of fact, the claim of Copyright or
ownership in respect of the serial under Section 17(b) and (c) would not arise
at all.29

Vicco Laboratories30 is an authority for the proposition that the employer must prove that the
work was produced in the course of employment for valuable consideration at the instance of the
employer.

In Aamir Raza Husain v. Cinevistaas Limited 31 the question before the Court related to
the copyright in the script of an unfinished cinematograph film. The Petitioner was the author of
the script and the Respondent financed the film. The Single Judge of the Bombay High Court
decided the case in the favour of the Respondent. On appeal the Division Bench set aside the
decision of the Single Judge and held that the copyright of the script vested in the author who
was the first owner of the copyright. The Court noted that there was a joint venture agreement for
making a film based on the play and the script. Under the said agreement, on getting the revenue
by the petitioner as well as on completion of the film, the copyright in the script will vest in the

29 Id. at Para13, Page 698.

30 See supra n. 28.

31 2003(27) PTC 425 (Bom) (DB) Bombay High Court. Justice H.L. Gokhale delivered the
judgment.
Page 84 of 255
Respondent. As the film was not completed, the copyright of the script was vested only in the
Petitioner.

Aamir Raza Husain32clarified that the producer of a film becomes the owner of copyright in
the cinematograph film only when the film is completed. In other words, the copyright in the
script of the film is not transferred to the producer of the film by implication of law unless there
is an agreement to the contrary. Producer of the film is the first owner qua the film and sine
qua the script of the film.

In Diljeet Titus v. Alfred A. Adebare33 the Plaintiff claimed that the Defendants were
under a contract of service of working under the direction, supervision and control of the
Plaintiff and the Defendants denied. The Court as under:

[T]he crucial question is as to whose business it is. In the present case the
plaintiff owned the infrastructure and the tools and the defendants did not
claim any share while parting. There is no risk of loss to the defendants and it
is not as if the defendants have a share in the net profits though they are
getting varying remuneration dependent upon receipts. The methodology of
running of the organization show the control with the plaintiff.34

As to the relationship between advocates working in a law firm, the Court observed as under:

Section 17 provides that the first owner of the copyright is the owner but the
same is subject to various proviso including proviso (c) which makes the work
during a contract of service to subsist in the employer. Thus the work done by
32 See supra n. 31.

33 2006 (32) PTC 609(Del) (SB) Delhi High Court. Justice S.K.Kaul delivered the judgment.

34 Id. at Para 78, Page 640.


Page 85 of 255
the defendants for the benefit of the clients of the plaintiff would fall within
the definition of contract of service. This is of course apart from the fact that
even if it was not so the same would not make a difference to the result in the
present case as the element of breach of trust or confidence can hardly be a
factor to be ignored especially in view of provisions of Section 16 of the
Copyright Act.35

Diljeet Titus36 declared that the work done by the advocates in the law firm falls within the
ambit of contract of service.

In B.N. Firos v. State of Kerala37 the Appellant-Petitioner, the author of a computer


program, contended that there is a direct conflict between the provisions of Section 17 of the
Copyright Act and Section 70 of the Information Technology Act. The Single Judge of the High
Court rejecting the claim of the Petitioner observed that Section 70 of the Information
Technology Act is directly related to Section 2(k) and 17(d) of the Copyright Act and
Governments authority to notify the system as a protected system applied only to such of the
system of Government work. Dismissing the appeal, the Division Bench of the High Court
observed as under:

We agree with the finding of the learned Single Judge that Section 70 of the
Information Technology Act is not unconstitutional, but, while interpreting
Section 70 of the Information Technology Act, a harmonious construction
with Copyright Act is needed and copyright of IT Government work is also
protected under the Copyright Act and remedy provided under the Copyright
Act can be availed by the parties, if their copyright is infringed even in respect
of IT work. No grounds are made out by the petitioner to set aside Ext. P10
notification issued under Section 70 of the Information Technology Act in a
petition under Article 226 of the Constitution of India.38

35 Id. at Para 84, Page 641.

36 See supra n. 32.

37 AIR 2006 Ker 279 (DB) Kerala High Court. Justice J.B. Koshy delivered the judgment.

38 Id. at Para7, Page 284.


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B.N. Firos39 is an authority for the proposition that there is no conflict between the provisions
of Section 17 of the Copyright Act, 1957 and Section 70 of the Information Technology Act,
2000.

In Lalgudi G. Jayaraman v. Cleveland Cultural Alliance 40 the Defendants claimed that


they engaged the Plaintiffs under a contract of service for the production of dance ballet.
Rejecting the claim of the Defendants, the Court observed as under:

As seen from Clause (b) of the proviso to Section 17, the payment of valuable
consideration, by itself creates a copyright in favour of the person making
payment, if the work in question is a photograph or painting or portrait or
engraving or cinematograph film. If the work in relation to which a copyright
is claimed, falls under the category of photograph or painting or portrait or
engraving or cinematograph film, there is no necessity for the person claiming
copyright to prove that the author was under a contract of service and that the
work was made in the course of his employment. It is enough if such person
proves that the work was produced for valuable consideration.41

But unfortunately for the first defendant, the ballet in dispute, does not fall
under any of the categories enumerated in clause (b) of the proviso to Section
17. It will fall either under the category of dramatic work as defined under
Section 2(h) and covered by clause (a) of the proviso to Section 17 or under
the category of a work not covered by clauses (a) or (b) and hence covered by
the residuary clause (c) . . . a person other than the author, claiming copyright
by virtue of the operation of clause (a) or (c) of the proviso to Section 17, will
necessarily have to establish - a) that the author of the work was under a
contract of service or apprenticeship with him; b) that the work was made in
the course of his employment; and c) that there was no agreement to the
contrary.42

39 See supra n. 36.

40 MANU/TN/2297/2008 (SB) Madras High Court. Justice V. Ramasubramanian delivered the


judgment.

41 Id. at Para 32.


Page 87 of 255
In the case on hand, the plaintiffs have come to Court, as the authors of the
ballet. That the plaintiffs are the authors of the said work, is admitted by the
first defendant, atleast insofar as the plaintiffs 1 and 3 are concerned.
Therefore, the plaintiffs are protected, prima-facie, by the general rule
under Section 17, that the author of a work shall be the first owner of the
copyright therein.43

Once it is admitted that the plaintiffs are the authors of the work in question
and consequently the owners of the copyrights therein by virtue of the
operation of the general rule in Section 17, the burden of proof shifts to the
defendants to show that the case falls under any of the clauses under the
proviso to Section 17, so as to enable them to claim copyrights, as persons
who have employed the authors. Therefore, the first defendant is obliged to
establish (a) that the plaintiffs were under a contract of service and (b) that the
work was made in the course of employment.44

The Court concluded that the Defendant could not establish that the work was produced in the
course of the employment. The payment of honorarium and the payment towards reimbursement
of expenses, established by the documents filed on the side of the Defendants, were not adequate
to establish either a contract of service or a course of employment. There is nothing on record to
show that the proviso to Section 17 came into operation, so as to confer copyrights on the first
defendant.

Lalgudi G. Jayaraman45 clarified that the burden of prove on the employer is discharged if
he successfully proves that the work was produced for valuable consideration and the case falls

42 Id. at Para 33.

43 Id. at Para 34.

44 Id. at Para 35.

45 See supra n. 36.


Page 88 of 255
under Clause (b) of the proviso to Section 17. However, the burden of prove is heavier where the
case falls under Clause (c) of the proviso to Section 17.

In Zee Entertainment Enterprises Ltd. v. Gajendra Singh 46 the Plaintiff claimed


the copyright in the literary work and the cinematograph film embodying the television game
show Antakshari. The question before the Court was whether Defendant worked with the
Plaintiff under a contract of service or contact for service?. The Court held that the relationship
between the Plaintiff and the Defendant was one of a contract of service. The Court observed
as under:

Courts have in the course of time applied other tests (apart from the
control test)47, such as the organization test, the economic test and the
integration test. With the change in the nature of professions, commerce,
business and industry over the decades Courts felt compelled to apply
different tests as well as to apply existing tests differently. Even these tests
have been held not to be decisive in all cases. There is no absolute, straight
jacket formula. A broader, more complicated flexible and multiple or
pragmatic approach is to be adopted by a Court while determining the
question. A great deal of flexibility in the judicial approach is thus imperative
keeping in mind the facts and the nature of each case.48
The Court did not agree with the arguments of the Defendants that only relevant factors are the
traditional structure of the trade, the incidence of tax and National Insurance and how the
parties viewed their relationship and that the other factors are irrelevant. The Court held that in
this case the factors which indicate a contract of service far outweigh the factors which
indicate a contract for service.

Zee Entertainment Enterprises Ltd.49 advocated and applied a multi factorial analysis
and flexible test for determining whether a contract is a contract of service or contract for
service.

46 2008(36) PTC 53 (Bom) (SB) Bombay High Court. Justice S.J. Vazifdar delivered the
judgment.

47 Emphasis added.

48 Id. at Para 21.

49 See supra n. 45.


Page 89 of 255
In Saregama India Ltd. v. Puneet Prakash Mehra 50 the question before the Court
was whether the rights of a music composer or lyricist can be defeated by the producer of a
cinematograph film. The Court said yes and reiterated that the key to the solution of this
question lies in provisos (b) and (c) to Section 17 of the Act. The Court observed as under:

In our view Section 14 has to be read with Section 17 of the Act. It is true the
composer becomes the first owner of the copyright of the music but when a
composer does any work in course of the employment of contract the
employer shall in absence of such contract or agreement providing specific
term, becomes the first owner of the copyright thereof.51

Saregama India Ltd.52 reiterated the point that the composers of music or lyrics are the
first owner of copyright, however, where they create their work in the course of employment,
employer becomes the first owner unless there is an agreement to the contrary. It is submitted
that the composer or lyricist does not become the first owner, she is the first owner. It is
only the employer who becomes and is not the first owner.

In Sree Gokulam Chit and Finance Company (P.) Ltd. v. Johny Sagariga
Cinema Square53 the first Defendant was claiming the authorship of the feature film
within the meaning of Section 2(d)(v) of the Act as well as the first owner according to Section
17. The Court observed as under:

50 MANU/WB/0616/2010 (DB) Calcutta High Court. Justice Kalyan Jyoti Sengupta delivered
the judgment.

51 Id. at Para 57.

52 See supra n. 49.

53 2011(46) PTC 513(Mad)(SB) Madras High Court. Justice V. Ramasubramanian delivered the
judgment.
Page 90 of 255
Unfortunately, the distinction maintained in Section 2(d) between a
literary/dramatic work/musical work/artistic work/photograph or a computer
generated literary, dramatic, musical or artistic work on the one hand and a
cinematograph film and sound recording on the other hand, is not carried to its
logical end in the provisos to Section 17. There appears to be a legislative mix
up. Once the term author is defined by Section 2(d)(v) to mean only the
producer in so far as a cinematographic film is concerned and once it is
declared by Section 17 that such author (namely the producer) is the first
owner of the copyright in the film, there was no necessity to state in proviso
(b) of Section 17 that in the absence of an agreement to the contrary, the
producer will be the first owner. In respect of all works of art or music other
than cinematographic film, the first ownership vests in the creator. But when
they are created by the author while under a contract of employment with
someone else, the first ownership vests in such person who happens to be the
employer. In order to make this shift in ownership (from the author to the
employer) very clear, the provisos under Section 17 are inserted. But in the
case of a cinematographic film, the ownership does not shift in the first
instance at all, in view of the fact that the producer himself is recognised as
the author. In fact, Section 2(uu) of the Act, defines the term Producer in
relation to a cinematograph film, to mean a person who takes the initiative and
responsibility for making the work. Such a person, despite not being the
creator, is already recognised by Section 2(d)(v) to be its author. Omitting to
take note of this, proviso (b) under Section 17 creates a confusion in so far as
cinematographic film is concerned, providing a hunting ground for legal
pundits.54

Sree Gokulam Chit and Finance Company (P.) Ltd. 55 identified the conflict
between the provisions of Section 2(d)(v) and proviso (b) to Section 17. It is submitted,
however, that there is no conflict between them. The provisions of proviso (b) to Section 17
are explanatory to the provisions of Section 2(d)(v). If the same thing is said at two or places
in the same statute, it does not follow that they are contradictory.

54 Id. at Para 29, Page 523.

55 See supra n. 52.


Page 91 of 255
In S. Mahalingam v. Vasan Publications Pvt. Ltd.56 the question was whether
Appellants father was the author of the work. The Single Judge dismissed the Appellants
application for injunction on the ground that his father was under the employment of the
respondent. On appeal, the Court agreed with the views expressed by the learned Single Judge
and found that the respondent has the right to reproduce the works which was earlier published
in their magazine. On the basis of the materials on record, the Court found that the texts
prepared by Appellants father were edited by the editorial team of respondents magazine as
well as during the period of publication of work he was on the pay rolls of the publication
house. Finally the Court held that the appellant has not satisfied the trinity of prima facie
case, balance of convenience and irreparable injury.

In Vijay Solvex Ltd. v. Shree Hari Agro Industries Ltd. 57 the Plaintiff-Appellant
alleged infringement of copyright in a label by the Defendant. The Court decided the
ownership in favour of Appellant and observed as under:

A bare perusal of the provision clearly reveals that ordinarily the author of the
work is the first owner of the copyright. However, the said general rule is
subject to certain exceptions made in the proviso. According to Proviso (c) in
case a work is created in the course of employment or apprenticeship, then, in
the absence of any agreement to the contrary, the first owner of the copyright
shall be the employer and not the creator of the work.58

In eXEGESIS Infotech (India) Pvt. Ltd. v. Medimanage Insurance Broking Pvt.


Ltd.59 the Plaintiffs contended that they were authors of the software as they had customized

56 2013(55) PTC 178 (Mad) (DB) Madras High Court. Justice K.K. Sasidharan delivered the
judgment.

57 2014(58) PTC 602(Raj) (SB) Rajasthan High Court. Justice R.S. Chauhan delivered the
judgment.

58 Id. at Para 89, Page 629.

59 2015(63) PTC612 (Bom) (SB) Bombay High Court. Justice S.C. Gupte delivered the
judgment.
Page 92 of 255
the software for the Defendant for a fee and not in the course of the employment. High Court
observed as under:

Section 17 deals with the aspect of the first vesting of the copyright in a work,
i.e. a literary, dramatic, musical or artistic work or a cinematographic film or
record. Its provisions are, however, subject to any contract to the contrary. At
the outset, Section 17 declares that subject to the provisions of the Act the
author of a work is the first owner of the copyright in it. Clauses (a) to (dd)
contain the various provisos to this central rule. These deal with individual
cases of different types of works created under diverse circumstances. For
example, proviso (a) deals with the special case of a literary, dramatic or
artistic work made by the author in the course of his employment by the
proprietor of a newspaper, magazine or similar periodical under a contract of
service or apprenticeship, for the purpose of publication in a newspaper,
magazine or similar publication. The ordinary rule stated at the outset does not
apply in such a case. Instead the proprietor of such newspaper, magazine, etc.
is the owner of the copyright insofar as such copyright relates to the
publication of the work in any newspaper, magazine or similar periodical, or
to the reproduction of the work for the purpose of such publication, though in
all other respects, the author continues to be the first owner of the copyright in
the work. This special rule itself is subject to an exception, namely, there
being any agreement to the contrary. Proviso (b) is subject to the provisions of
clause (a) and deals with the case of a photograph taken, or a painting or
portrait drawn, or an engraving or a cinematograph film made, for valuable
consideration at the instance of any person. In such a case, such person, and
not the author, is the first owner of the copyright therein. This again is only in
the absence of an agreement to the contrary. We are directly concerned here
with clause (c), which applies in a case where clauses (a) and (b) do not apply.
Under clause (c), if any work is made in the course of the authors
employment under a contract of service or apprenticeship, the employer shall,
in the absence of any agreement to the contrary, be the first owner of the
copyright therein. An agreement to the contrary is, thus, a decisive factor,
which prevents the application of the special rules in the provisos. Such
agreement may be express or implied. Thus, even if the work be created in the
course of an undoubted contract of service, the author may reserve the
copyright unto himself. Conversely, even if there be no contract of service, the
parties are free to agree that the employer may have the copyright. It is
important to remember that this agreement to the contrary is distinct from
assignment of copyright. Section 17, which provides for such agreement to
the contrary, deals with the question of the first ownership of the copyright.
Section 18, on the other hand, deals with assignment of copyright by the
owner. It provides for another mode of acquiring copyright in a work. The
author or the employer, as the case may be, can become either the first owner
of the copyright in the work by virtue of an agreement to the contrary under

Page 93 of 255
Section 17 or can become an assignee by virtue of an assignment from the
first owner under Section 18.60

eXEGESIS Infotech (India) Pvt. Ltd.61 made it categorically clear that the word
agreement used in the expression unless there is an agreement to the contrary, is wide
enough to include both express and implied agreement and even if a work is created in the
course of contract of service, the author may reserve the right unto himself. Agreement is
decisive of first ownership. The Court also distinguished the concept of first owner and
owner.

In Quintessential Designs India Pvt. Ltd. v. Puma Sports India (Pvt.) Ltd. 62 the
question before the Court was whether the apparel styles were product conceptualised,
designed and product developed by the Applicants-Plaintiffs on a principal to principal basis or
as an employee of the Defendants. The Court decided the case in the favour of the Plaintiffs.
The defendants relied on proviso (c) to Section 17 of the Act. The Court noted that a perusal of
proviso (c) to Section 17 only indicates that the author of a work shall be the first owner of the
copyright therein provided that there must be an employer-employee relationship under a
contract of service or apprentice. The Court found that in this case, no amount was agreed to
be paid by the Defendants to the Plaintiffs for the work done by them, and therefore, there was
no question of claiming that the principal and agent relationship existed between the parties.
The Court held that in the absence of passing off of any consideration and in the absence of
any written contract of service between the parties, the Defendants cannot contend that they
are protected under the proviso (c) to Section 17 of the Copyright Act in any manner.
The question of first ownership of copyright is determined either through contract or by
implication of law. Owner of copyright may be the first owner, second owner or tenth or
whatever owner. For assignment or license of copyright it is necessary and sufficient that she
is the owner. She may exercise her right on her own or license or assign the same to someone
else. First we will deal with the law relating to assignment and then will move on to discuss
copyright license.

60 Id. at Para 7, Page 616-617.

61 See supra n. 58.

62 2015(64)PTC17(Mad) (SB) Madras High Court. Justice K. Ravichandra Babu delivered the
judgment.
Page 94 of 255
1.2Assignment of Copyright

Assignment of copyright means transfer of property right (copyright) from the owner of the
copyright to someone else. Assignment is a nomen juris used to signify transfer of property
right per se in intangibles without the res or corpus whereas sale is a nomen juris used to
signify transfer of property in the res or corpus. For example, when a copyright owner sells the
copyrighted books, she transfers the property in the copies of the books sold, i.e., transfer of
property in the tangible books. Here the owner has not assigned the copyright in the book, she
has only transferred the property in the book without the copyright in the book. However, if she
assigns the copyright in the book, it is not the property in tangible book which has been
transferred. Rather it is the copyright in the book which has been transferred. This distinction is
also a distinction of property law and intellectual property law. Sale is a term of property law.
Assignment is a term of intellectual property law. In short, in case of assignment only property
rights are transferred without the transfer of physical or virtual goods. In the case of sale of
copyrighted work, only property right in those copies of the work which have been sold is
transferred.

Section 18 deals with the Assignment of Copyright. It reads as under:

(1) The owner of the copyright in an existing work or the prospective owner of
the copyright in a future work may assign to any person the copyright either
wholly or partially and either generally or subject to limitations and either for
the whole term of the copyright or any part thereof:

Provided that in the case of the assignment of copyright in any future


work, the assignment shall take effect only when the work comes into
existence.

Provided further that no such assignment shall be applied to any


medium or mode of exploitation of the work which did not exist or was not in
commercial use at the time when the assignment was made, unless the
assignment specifically referred to such medium or mode of exploitation of
the work:

Provided also that the author of the literary or musical work included
in a cinematograph film shall not assign or waive the right to receive royalties
Page 95 of 255
to be shared on an equal basis with the assignee of copyright for the utilization
of such work in any form other than for the communication to the public of
the work along with the cinematograph film in a cinema hall except to the
legal heirs of the authors or to a copyright society for collection and
distribution and any agreement to contrary shall be void:

Provided also that the author of the literary or musical work included
in the sound recording but not forming part of any cinematograph film shall
not assign or waive the right to receive royalties to be shared on an equal basis
with the assignee of copyright for any utilization of such work except to the
legal heirs of the authors or to a collecting society for collection and
distribution and any assignment to the contrary shall be void.

(2) Where the assignee of a copyright becomes entitled to any right comprised in
the copyright, the assignee as respects the rights so assigned, and the assignor
as respects the rights not assigned, shall be treated for the purposes of this Act
as the owner of copyright and the provisions of this Act shall have effect
accordingly.

(3) In this section, the expression assignee as respects the assignment of the
copyright in any future work includes the legal representatives of the assignee,
if the assignee dies before the work comes into existence.

In the following paragraphs attempt has been made to explain the law relating to assignment of
copyright as interpreted-constructed by the courts.

In Dharam Dutt Dhawan v. Ram Lal Suri and Sons 63 the Appellant-Plaintiff
submitted that the Appellant-Plaintiff had merely granted a license to the Respondent-
Defendant and after revocation of the license, the Respondent-Defendant were not entitled to
print or publish the book. The Respondent-Defendant contended that the agreement between
the parties was a partial assignment of the copyright. The Court decided for the Respondent-
Defendant. The Court was of opinion that the term partial can be deemed to include an
assignment for a period of time as well as an assignment of one particular aspect of the
copyright or an assignment for a particular territorial area and observed as under:

63 MANU/PH/0122/1953(DB) High Court of Punjab. Justice D. Falshaw delivered the judgment.


Page 96 of 255
[I]f a partial assignment of copyright under the Act can be held to include an
assignment for a fixed or fluid period of time as well as its more obvious
meanings of assignment of separate rights such as film rights or stage rights in
a work of literature, it must be held . . . that the agreement amounted to a
partial assignment and the terms under which the assignment could be
terminated were contained in the agreement64.65

In Agarwala Publishing House v. Board of High School and Intermediate


Education66the question before the High Court was that whether the copyright of the question
papers set at examinations conducted by the Board of High School and Intermediate
Examination, U. P., shall vest in the Board. The Court said no and observed as under:

[T]he copyright in the question papers set for the High School and
Intermediate examinations belongs to the paper-setters; and since this
copyright neither belonged to nor has been assigned to the Board, the
impugned notification which declares that copyright of the question papers
set at the examinations conducted by Board shall vest in the Board is clearly
bad. Simply by issuing a notification under the Intermediate Education Act,
the State Government could not arrogate to itself or to the Board a right which
neither of them possessed under the law relating to copyright, embodied in the
Copyright Act of 1957.67
Agarwala Publishing House68 unlike Rupendra Kashyap69 did not recognise Board of
High School and Intermediate Education, U.P. as a public undertaking. The Court even went a
step ahead and said that the State Government cannot arrogate to itself or to the Board the
copyright in the Question Paper set by the teacher. It is submitted that the holding in Agarwala
Publishing House cannot withstand the scrutiny of Section 17 for there are explicit and clear
provisions contrary to the holding of the court.

64 Emphasis added.

65 Id. at Para 10.

66 AIR1967All 91 (SB) Allahabad High Court. Justice W. Broome delivered the judgment.

67 Id. at Para 9, Page 93.

68 See supra n. 66.

69 See supra n. 66.


Page 97 of 255
In Eastern India Motion Pictures Association v. Indian Performing Right Society
70
Ltd. the Respondent claimed to be the assignee of the composers of lyric and music having
right to grant license for the public performance of the music in the sound track of a
cinematograph film. The question before the Court was whether the Respondent acquired any
right to grant such license or not. The Court said no and observed as under:

An assignee cannot have a right higher than the right of an assignor. A


composer of music for valuable consideration who composes for the first time
for a cinematograph film does not acquire any copyright in the music unless
there is a contract to the contrary. Section 17 of the Copyright Act is the only
section that speaks of the first owner of the copyright and under proviso (b) in
a cinematograph film the first owner is the person at whose instance the film
is made. Section 18 of the Act confers the power to make a contract of
assignment but that power can be exercised only when there is an existing or a
future right to be assigned.71

[W]hen a composer of lyric or music composes for the first time for valuable
consideration for purposes of a cinematograph film, the owner of the film at
whose instance the composition is made, becomes the first owner of the
copyright in the composition. The composer acquires no copyright at all either
in respect of the film or its sound track which he is capable of assigning. In
these circumstances, assignment, if any, of the copyright in any future work is
of no effect. The composer can claim a copyright only on the basis of an
express agreement reserving his copyright between him and the owner of the
cinematograph film.72
Against this judgment, an appeal was filed under Article 133(1) of the Constitution of India in
Indian Performing Right Society Ltd. v. Eastern India Motion Pictures
Association73 and the first issue before the Supreme Court was whether in view of the
provisions of the Act, an existing and future right of music composer, lyricist is capable of
assignment. The Court said yes. The Supreme Court reiterated that an existing and future right of
music composer and lyricist in their respective works as defined in the Act is capable of
assignment subject to the conditions mentioned in Section 18 of the Act, as also in Section 19 of
70 AIR1974Cal 257 (DB) Calcutta High Court. Chief Justice Sankar Prasad Mitra delivered the
judgment.

71 Id. at Para 32, Page 261.

72 Id. at Para 33, Page 261.

73 [1977] 3SCR 206 (DB) Supreme Court. Justice Jaswant Singh delivered the judgment.
Page 98 of 255
the Act which requires an assignment to be in writing, signed by the assignor or by his duly
authorised agent.

In Khemraj Shrikrishandas v. Garg & Co.74 it was contended by Defendant-Respondent


that the copyright in the Panchang had not been assigned to the Plaintiff-Appellant and the same
has been inherited by the Defendant No. 2. The Court said no and observed as under:

Sections 17 and 18 of the Copyright Act, 1957 show where the copyright
vests. If a work is done by an author for a consideration for a publisher, the
copyright in it would normally vest in the publisher subject to any contract to
the contrary, as is provided by Section 17 of the said Act. It can be
legitimately said that Section 18 has been inserted in the Act of 1957, but the
rule of law has been the same even prior to this statutory provision. Secondly,
as provided by Section 18 the copyright could be assigned, and if it is so
done, it would be vested in the purchaser.75

In Najma Heptulla v. Orient Longman Ltd 76 the Plaintiff contended that copyright in
the entire Book has not and could not have been assigned in favour of the Defendant by co-
author Prof. Humayun Kabir. The question before the Court was whether Prof. Kabir had any
authority, to do so. The Court said yes and observed as under:

It is difficult to comprehend, or to accept, that when two people agree to


produce a work where one provides the material, on his own, and the other
expresses the same in a language which is presentable to the public then the
entire credit for such an undertaking or literary work should go to the person
who has transcribed the thoughts of another. To me it appears that if there is
intellectual contribution by two or more persons pursuant to a reconverted

74 AIR 1975 Delhi 130 (SB) Delhi High Court. Justice B.C. Misra delivered the judgment.

75 Id. at Para 17, Page 135.

76 1989(9) PTC 157(Del) (SB) Delhi High Court. Justice B.N.Kripal delivered the judgment.
Page 99 of 255
joint design, to the composition of a literary work then those persons have to
be regarded as joint authors.77

The owner of a copyright can, under Section 18 of the Copyright Act, assign
his copyright in favour of another person. Section 19 provides for the mode of
assignment. It requires that the assignment should be in writing signed by the
assigner or by his duly authorised agent. In the present case the rights were
assigned, according to the defendants, by Prof. Kabir by the agreement.78

In Raj Video Vision v. M/s. Sun T.V.79 the question before the Court was whether
satellite TV broadcasting rights have been assigned specifically in favour of the Applicant-
Plaintiff? The Court said no. Considering satellite TV broadcasting right as an independent
right and the same have to be assigned specifically, the Court observed as under:

[U]nder Section 18 (2) of the Copyright Act, where the assignee of the
copyright becomes entitled to any right comprised in the copyright, the
assignee as respects the rights so assigned and the assignor as respects the
rights not assigned shall be treated for the purpose of this Act as the owner of
the copyright and the provisions of this Act shall have effect accordingly.
Section 19 (2) provides the assignment copyright in any work shall among
other things indicate clearly the rights proposed to be assigned and the size of
the work. Thus, it will be clear that the Plaintiff/Applicant cannot claim
anything more than the rights said to have been assigned to them under the
agreements relied upon by them. As stated supra, there is no mention of the
word Satellite in any of the agreements put forward by the plaintiffs. As
already adverted to, the copyright for broadcasting or telecasting the Film
through Satellite, cable, wire, wireless or through any other system or any
other form, means and modes other than through Doordarshan terrestrial
Primary Channel without restriction of geographical area is a separate right.
Satellite right is a new, separate and distinct specie of right hitherto not
visualised and this cannot be said to be included under the agreements relied
upon by the plaintiffs in any event. Such a right should be specifically

77 Id. at Para 27, Page 166.

78 Id. at Para 32, Page 167.

79 MANU/TN/1047/1994(SB) Madra High Court. Justice A.R. Lakshmanan delivered the


judgment.
Page 100 of 255
contemplated under the agreement. In fact, cassettes are used for home TV,
whereas U matic tapes are used for Satellite Transmission.80

In Sunil Aggarwal v. Kum Kum Tandon81 the question before the Court was whether
there was an assignment of copyright to the Plaintiffs by the Defendant? The Court said yes.
The deed of assignment was in the form of a letter. The Plaintiffs argued that use of the words
shall be assigned had the effect of creating an equitable assignment in favour of the
Plaintiff. The Court noted that Section 18 confers ownership rights in a copyright on the
assignee, but the term assignment is not defined under the Act. Citing the authorities, like,
Halsburys Law of England, Copinger and Skone James, Iyenger, the Court held that there was
at least an equitable assignment of copyright by the Defendant to the Plaintiff. This finding of
assignment was fortified by the facts that the Plaintiff was publishing and selling the book and
the Defendant was accepting payment of royalty continuously.

In Shri Reoti Saran Sharma v. Numero Uno Internation82 the Defendant contended
that under the agreement executed between him and the Plaintiff, the Plaintiff had made a full
grant of copyright in his works to Defendant and there was no balance amount due to Plaintiff
from Defendant. The Court decided the matter in favour of the Defendant. The Court noted
that a mere agreement to assign does not operate to pass the property right but gives equitable
rights i.e. it operates as an equitable assignment of copyright as and when the work comes into
existence. The Court held that by virtue of the agreement all rights have been assigned by
Plaintiff to the Defendants.

80 Id. at Para. 11.

81 MANU/DE/0701/1995 (SB) Delhi High Court. Justice R.C. Lahoti delivered the judgment.

82 1996 (16) PTC 275(Del) SB (Delhi HC). Justice N.G. Nandi delivered the judgment.
Page 101 of 255
In Gramophone Company of India Limited v. Shanti Films Corporation 83 the
Petitioner-Plaintiff contended that by virtue of the agreement the Petitioner-Plaintiff was an
assignee of the copyright of all works of literary, dramatic or musical nature in the film and the
owner of the copyright therein. The Court held for the Plaintiff and observed as under:

Section 3 of the Transfer of Property Act, 1882 defines actionable claim,


inter alia, as a claim to any beneficial interest in movable property not in the
possession, either actual or constructive of the claimant, which the Civil
Courts recognise as affording grounds for relief; whether such beneficial
interest be existent, accruing, conditional or contingent. Section 130 of the
said Act provides that transfer of an actionable claim whether with or without
consideration shall be effected only by execution of an instrument in writing
signed by the transferor or his agent and shall be complete and effectual upon
the execution of such instrument and thereupon all the rights and remedies of
the transferor whether by way of damages or otherwise shall be vested in the
transferee, whether notice of such transfer is given or not.84

Therefore, the Copyright Act read with the Transfer of Property Act requires
that transfer by assignment of a copyright should be made in writing by the
transferor and upon execution of such writing the transferee would acquire all
rights of the transferor, provided copyright is an actionable claim.85

Holding that all rights of the Defendant were transferred to Plaintiff immediately upon execution
of the agreement the Court observed as under:

[I]n this country copyright which is a chose-in-action in England, is a


beneficial interest in movable property in the actual or constructive possession
of the owner thereof, although strictly not an actionable claim, but capable of
being transferred by assignment evidenced by a writing executed by the
assignor or by his duly authorised agent. The writing containing such
assignment need not be registered. The intention of the parties whether it was
an assignment or a grant of permission to use should, in the normal course, be
gathered from the writing itself and the words used therein. If the word
assignment is used then the assignment should in the normal course be
readily accepted. Payment of royalty in future on some given basis as
consideration will not stand in the way of construing the intention to assign. In
the event the writing contains covenants which indicate that the assignor
retains some right in spite of the writing in relation to the copyright then the

83 AIR 1997 Cal 63(SB) Calcutta High Court. Justice Barin Ghosh delivered the order.

84 Id. at Para 22, Page 75.

85 Id. at Para 23, Page 76.


Page 102 of 255
same may be either a partial assignment or a license. In the event the grant is
conditional then until fulfilment of the condition the assignment may not take
effect. Similarly, if the assignor becomes entitled to any right on the
happening of the particular thing then on the happening of such thing the
assignor gets back such thing. The assignment will take effect immediately.
The most important thing, it appears to me, is the right of the recipient to deal
with the copyright as owner thereof, i.e. right of user or right to destroy the
copyright at his one volition; any of which, if can be gathered, assignment can
be readily accepted.86

In Bry Air India (P) Ltd. v. Western Engineering Co. 87 the question before the Court
was whether the Plaintiffs were the owners of copyright of the drawings of dehumidifiers
because of assignments. The Court said no. The Defendant contended that there was no valid
assignment in favour of the Plaintiffs as the Deed of Assignment was forged and fabricated
document, and that even otherwise the same does not create any valid assignment in favour of
the Plaintiffs. The Court found that the Deed of Assignment was ex facie an incomplete
document and observed as under:

Sections 18 and 19 of the Copyright Act provide the procedure relating to


assignment, transmission or relinquishment of copyright. The owner of a
copyright in an existing work may assign in writing to any person the
copyright in the works which is to be signed by the assignor or his duly
authorised agent. Since the copyright consists of a bundle of rights, the owner
may assign the whole of these rights or only some of them and, therefore, an
assignment may be general or may be subject to limitation.88

In Zee Telefilm Limited v. Aalia Productions89 the question before the Court was
whether the Plaintiffs have been able to show prima facie that they have acquired

86 Id. at Para 30, Page 79.

87 1999(19) PTC 408 (Del) (SB) Delhi HC. Justice M.K. Sharma delivered the judgment.

88 Id. at Para 9, Page 412.

89 2000(20)PTC382(Bom) (SB) Bombay High Court. Justice R.M. Lodha delivered the
judgment.
Page 103 of 255
copyrights because of assignment. The Court said no. Plaintiffs relied on Section 18 of the Act
and urged that the assignment fastens as soon as the future work comes into existence. The
Court found that the assignment agreement executed between the Plaintiffs and the Defendants
was vague and uncertain with regard to the structure, format, concept, synopsis and script. The
Court observed that in the absence of any definite specific and certain details of the
concept/synopsis/story/script in the agreement, the Plaintiffs cannot be said to have become
owners of episodes produced by the Defendants.

In Meena Panchu Arunachalam v. SUN T.V. 90 the question before the Court was
whether the assignment of Satellite Television right by Plaintiff to Defendant was valid? The
Court said no and observed as under:

[T]he agreements have been entered into in 1991 when broadcast by Satellite
Television has not come into vogue in India and therefore, the Producer, . . .
could not have assigned these rights also when she conveyed the negative
rights in favour of Defendant No. 2. Neither Defendant No. 2 nor M/s.
O.K. Films have dealt with Satellite Television rights in respect of the picture
while executing the deed of assignment in favour of others. For the first time
when Defendant No. 1 has obtained the assignment, the words Satellite
Television rights are included. But, the original transferee, namely
Defendant No. 2 himself has not obtained the said rights and therefore, the
persons claiming under him cannot lawfully claim to have obtained Satellite
Television rights, Satellite Television rights since not specifically assigned by
the Producer, only remained with her, she has chosen to transfer the Satellite
Television rights in favour of M/s. Raj Television Network and therefore, Raj
Television Network are the owners of the copyright in respect of Satellite
Television rights. Others cannot claim to have lawfully obtained the
copyrights for Satellite television.91

The Court concluded that the Plaintiff has not conveyed Satellite Television rights in favour of
Defendant No. 2 and Defendant No. 2 also could not have conveyed the said rights to Defendant
No. 1 or others.

90 MANU/TN/1484/2001 (SB) Madras High Court. Justice I. David Christian delivered the judgment.

91 Id. at Para 23.


Page 104 of 255
In Milestone Entertainment Private Ltd. v. Anamika Sood 92 the Defendant
contended that the assignment of copyright in the third album in favour of the Plaintiff of the
third album was vague. The Court held for the Defendant. Under the agreement between the
parties the album was to be accepted or rejected by the Plaintiff. The Court reiterated that the
assignment of copyright can only be an identifiable work and hence there was no assignment.

In Radio Today Broadcasting Ltd. v. Indian Performing Rights Society 93 the


question was whether the members of the Defendants society can assign their exclusive right to
the producers of the film. The Court said no. The Court followed the observation of the
Supreme Court in Indian Performing Right Society Ltd. v. Eastern India Motion
Pictures Association94 and held that unless it is shown that right of the members of
Defendants society were expressly assigned in favour of the members of society of the
producers, Defendants society is entitled to claim royalty from the Plaintiff if they want to
exploit the work of the members of Defendants society. The Court observed that the Plaintiff
was under the obligation to pay royalty to Defendants society in addition to the license fees paid
to the society of the producers.

In Time Warner Entertainment Company, L.P. v. RPG Netcom 95 the question was
whether interim injunction order can be passed in respect of cinematographic films which have
not yet been produced and will be made in future. The Court said, no and held that copyright in a
cinematographic film comes into existence only after the film has been produced and cause of
action for any violation of the said cinematographic film would arise only thereafter. The Court
observed as under:

922001(21) PTC 141(Bom) (SB) Bombay High Court. Justice D.K. Deshmukh delivered the
judgment.

932007(34) PTC 174(Cal). (SB) Calcutta High Court. Justice A.K. Banerjee delivered the
judgment.

94 [1977] 3SCR 206 (DB) Supreme Court. Justice Jaswant Singh delivered the judgment.

95AIR2007Delhi 226 (DB) Delhi High Court Justice Sanjiv Khanna delivered the judgment.
Page 105 of 255
Section 18 of the Act relates to assignment of copyright in an existing work.
Assignment can be done by the owner of the copyright in an existing work.
Section 18 permits assignment by a prospective owner, i.e. a person who is
not the first owner as defined in Section 17, in a future work. However, as per
the proviso, parties can enter into an agreement for assignment of copyright in
any future work, but the assignment itself takes place only after the work
comes into existence and not before. Section 18 therefore gives right to a
person, who is not owner of copyright within the meaning of the Act to assign
his rights in any future work which will come into existence in future by a
contract of assignment. Though an agreement for assignment of a future work
is permitted by Section 18 of the Act but the same is subject to the condition
that the assignment itself will take effect and come into operation only after
the work has come into existence. Before the work comes into existence the
assignment does not have any affect. This is necessarily a corollary and flows
from the object and purpose of law of copyright which is to protect the final
expression and not an idea.96

In Shemaroo Entertainment Pvt. Ltd. v. Afzal Khan 97 the Plaintiff contended that
the Defendant assigned broadcasting rights of the film to the Plaintiff and the said assignment
had become complete and was irrevocable. The Court said, no. Accepting the submission of
Defendant that the assignment was made subject to payment of installments by the Plaintiff
which he did not fulfill, the Court observed as under:

From sub-section (1) of Section 18, it is abundantly clear that the owner of the
copyright would assign his rights subject to limitations. From the aforesaid
provision, it is clear that the parties had right to assign the copyright and
impose certain conditions before the assignment could be complete. The
submission made by the Plaintiff that the agreement amounted to complete
assignment cannot be accepted.98

96 Id. at Para 12, Page 229.

97 MANU/MH/0763/2008 (SB) Bombay HC. Justice V.M. Kanade delivered the judgment.

98 Id. at Para 10.


Page 106 of 255
In Jaypee Brothers Medical Publishers (P) Ltd. v. Dr. Ramya Raghu 99 the
plaintiff pleaded assignment of copyright in a future work by the Defendant. The Court said,
no. Accepting the denial of assignment by Defendant, the Court observed as under:

Section 18 of the Copyright Act, 1957 provides that the owner of the
copyright in an existing work or the prospective owner of the copyright in a
future work may assign to any person the copyright either wholly or partially
and either generally or subject to limitations. The proviso thereto states that in
the case of the assignment of copyright in any future work, the assignment
shall take effect only when the work comes into existence. Section 18(2)
provides that the assignee of a copyright is to be treated as the owner of the
copyright. Section 2(j) of the Act defines an exclusive license as a license
which confers on the licensee to the exclusion of all other persons including
the owner of the copy right, any right comprised in the copyright in a work.
Publication is a right comprised in the copyright of the work. The question
which arises is whether on the basis of the agreement aforesaid, there was an
assignment of copyright in a future work which has come into effect upon the
book coming into existence (if it is the same book) or the Plaintiff had merely
agreed to give right of publishing the book to the Defendant.100

In Saregama India Ltd. v. Puneet Prakash Mehra 101 the Appellant submitted that
under the assignment agreement the copyright of literary, dramatic and musical works in
respect of the song of film Laawaris was assigned to him and he was entitled to synchronize
the song in any manner whatsoever without any restriction including the right to adaptation.
The Court held for the Appellant and observed that the right of re-recording or synchronization
of music has been assigned. The Court found that the assignment agreement included all things
in future years to come and even to include modern technological medium or method of
recreating the sounds either in its original form or by synchronization.

99 2008(38)PTC212(Del)(SB) Delhi HC. Justice Rajiv Sahai Endlaw delivered the judgment.

100 Id. at Para 9, Page 216.

101 MANU/WB/0616/2010 (DB) Calcutta High Court. Justice Kalyan Jyoti Sengupta deliverd
the judgment.
Page 107 of 255
In Sholay Media and Entertainment Pvt. Ltd. v. Vodafone Esssar Mobile
Services Ltd.102 the question was whether an absolute right to use the sound track,
including digital rights were assigned to Defendant. The Court held for the Defendant
because the Plaintiff was accepting the royalty from the Defendants and observed as under:

Section 18 of the Copyright Act, 1957, which has not been amended at any
point of time, to the extent it is relevant, provides that the owner of the
copyright in the work may assign, the copyright to any person, either wholly
or partially and either generally or subject to limitations and either for the
whole of the copyright or any part thereof. It further provides that where the
assignee of a copyright becomes entitled to any rights comprised in any
copyright, he becomes the owner of the copyright so assigned and in respect
of the rights which are not assigned, the assignor is treated as the owner of the
copyright.103

In M. Padmini v. Raj Television Network Limited104 the Plaintiffs father assigned the
negative rights to one Kumar Pictures, the Defendant who contended that the negative right
is not a specific right and by an agreement between Kumar Pictures and the Defendant, the
Defendant became the owner of all rights in the film. The Court held for the Defendant and
observed that when the entire copyright was assigned to M/s. Kumar Pictures, from whom the
Defendant obtained the assignment, now the Plaintiffs cannot say that the Defendant has no
digital cinematography right, which came into vogue from the year 1990 onwards due to
advancement of science and technology. Since the entire copyright was assigned in favour of
the assignee, if any right accrues in future due to advancement of science and technology, it
will devolve only upon the owner and not on the first owner. The Court observed as under:

102 2011(46) PTC 352(Del) (SB) Delhi HC. Justice V.K. Jain delivered the judgment.

103 Id. at Para 6, Page 355.

104 MANU/TN/1498/2015 (SB) Madras HC. Justice R. Subbiah delivered the judgment.
Page 108 of 255
Section 18(1) would indicate that the section itself is applicable to the owner
of the copyright in an existing work or prospective owner of copyright in a
future work. Further, Section 18 uses the term owner and not first owner.
The first owner of any copyright, unless otherwise mentioned, is usually the
producer, in the case of cinematograph films. The first owner is to be
distinguished from owner. If all the rights accruing due to advancement in
scientific technology were to be conferred only on the producer of the film,
then Section 18 would have to read as first owner and not just owner.
Therefore, in terms of Section 18(2), the assignee viz., M/s. Kumar Pictures
has become the owner of the copyrights on and from the date of assignment.
Now, the Proviso 2 to Section 18(1) states only that no assignment shall be
applied to any medium or mode of exploitation of the work, which did not
exist or was not in commercial use at the time when the assignment was made.
Therefore, as contended by the learned counsel for the defendant, the newly
added proviso 2 would also benefit only the owner of the copyrights in the
work and therefore, in this case, M/s. Kumar Pictures and later, the defendant
being the owners of the work, are alone entitled to take benefit of the
assignment as the owner of all the copyrights as on the date of amendment in
2012.105

In Ilaiyaraja v. B. Narsimhasn106 Defendants contended that the Plaintiff had assigned


all rights and interests in the musical composition created by him in favour of his wife and the
Plaintiffs wife executed two agreements, viz., sound recording license agreement and sub-
publishing agreement, in favour of the Defendants. The question was whether the validity of
the two agreements executed in favour of the fourth defendant was for a period of five years or
ten years? The Court answered that the validity of the two agreements executed in favour of
the fourth defendant was for a period of five years. The Court observed as under:

The assignee Jeevaraja, plaintiffs wife, becomes absolute owner in terms of


Section 18(2) of the Copyright Act. Therefore, the plaintiffs Jeevaraja is
entitled to the rights, which the plaintiff has assigned, from the date of
assignment, namely 24.11.2007. But, the wife of the plaintiff entered into
license agreement with the fourth defendant. The license agreement stipulates
that the fourth defendant is entitled to manufacture, sell and distribute the
musical work under the non-exclusive license. The difference between the
assignment and license is that insofar as assignment is concerned, the same

105 Id. at Para 25.

106 http://judis.nic.in/Judis_Chennai/content.asp (SB) Madras High Court. Justice R. Subbiah


delivered the judgment. Last visited on 20th February 2016.
Page 109 of 255
transfers all the interests in the work in favour of assignee; whereas the license
is only creating a limited interest, retaining all other rights with the assignee.
Without the license agreement, the fourth defendant, if exploits the right, it
will be a violation and the fourth defendant will be guilty of infringing the
copyright. Since the right was given without mentioning the specific period,
as per clause 19(5) (sic) of the Copyright Act, the period of assignment by the
plaintiff in favour of his wife is only for five years. Though in the license
agreement executed by the plaintiffs wife in favour of fourth defendant, the
period was mentioned as 10 years, in my considered opinion, in the instant
case, since the plaintiff had assigned the right only for a period of five years in
favour of his wife, the license granted by the plaintiffs wife in favour of the
fourth defendant should also be only for a period of five years and not for a
period of ten years. Since the Plaintiffs assignee wife herself had assignment
only for a period of five years, she cannot grant license for more than a period
for what she is entitled to.107

Now we move on to discuss the law relating to the mode of assignment. Section 19 of the Act
deals with mode of assignment as under:

(1) No assignment of the copyright in any work shall be valid unless it is in writing
signed by the assignor or by his duly authorized agent.

(2) The assignment of copyright in any work shall identify such work, and shall
specify the rights assigned and the duration and territorial extent of such
assignment.

(3) The assignment of copyright in any work shall also specify the amount of
royalty and any other consideration payable, to the author or his legal heirs
during the currency of the assignment and the assignment shall be subject to
revision, extension or termination on terms mutually agreed upon by the
parties.

(4) Where the assignee does not exercise the rights assigned to him under any of
the other sub- sections of this section within a period of one year from the date
of assignment, the assignment in respect of such rights shall be deemed to
have lapsed after the expiry of the said period unless otherwise specified in
the assignment.

(5) If the period of assignment is not stated, it shall be deemed to be five years
from the date of assignment.

107 Id. at Para 49, Page 57.


Page 110 of 255
(6) If the territorial extent of assignment of the rights is not specified, it shall be
presumed to extend within India.

(7) Nothing in sub-section (2) or sub-section (3) or sub-section (4) or sub-section


(5) or sub-section (6) shall be applicable to assignments made before the
coming into force of the Copyright (Amendment) Act, 1994.

(8) The assignment of copyright in any work contrary to the terms and conditions
of the rights already assigned to a copyright society in which the author of the
work is a member shall be void.

(9) No assignment of copyright in any work to make a cinematograph film shall


affect the right of the author of the work to claim an equal share of royalties
and consideration payable in case of utilization of the work in any form other
than for the communication to the public of the work, along with the
cinematograph film in a cinema hall.
(10) No assignment of the copyright in any work to make a sound recording which
does not form part of any cinematograph film shall affect the right of the
author of the work to claim an equal share of royalties and consideration
payable for any utilization of such work in any form.
In the following paragraphs the cases relating to mode of assignment have been analysed.

In Srimagal and Company v. Books (India) Private Limited 108Appellant-


Defendant contended the validity of the assignment by the author (Pandit Jawaharlal Nehru) to
the Respondent-Plaintiff on the ground that the requirements of the provisions of Section 19
were not fulfilled. The Court said, no. The Court observed that the only requirement is that the
assignment should be in writing signed by the assignor or by his duly authorised agent. If the
assignment appears from any document and it is signed by the assignor or by his authorised
agent, the statutory requirement is fulfilled.109

108 MANU/TN/0563/1971 (SB). Madras High Court. Chief Justice K. Veeraswamy delivered
the judgment.

109 The reasoning of the Case was referred in Periyar Self Respect Propaganda
Institution, v. Periyar Dravidar Kazhagam 2009(41)PTC448(Mad) (SB) Justice K.
Chandru delivered the judgment.
Page 111 of 255
In Urmila Charan Gupta v. Charushila Sharan Gupta 110 the question before the
Copyright Board was whether the Opposite Parties have obtained a local or equitable
assignment of the copyright of the books or not. The Court said, no. The Court taking note of
Section 19 that an assignment of the Copyright has to be in writing and must be signed by the
owner or by his duly authorised agent, found that there was no writing as such, signed by the
owner (Maithili Sharan Gupta), expressly stating that he has assigned his copyright in the
books in question to the Opposite Parties or to anyone else.

In K.A. Venugopala Setty v. Dr. Suryakantha U. Kamath 111 the Appellant-


Defendant (Printer) contended that there was an oral complete assignment agreement between
them and Respondent-Plaintiff (author). The Court said no and observed as under:

[I]t is clear that assignment of the copyright must be in writing and signed by
the assignor or his duly authorised agent. In addition to this, the assignment
must in clear terms state the rights proposed to be assigned and the size of the
work. No other mode of assignment is valid inasmuch as when the statute
specifically provides that assignment of the copyright must be in writing and
signed by the assignor, no other mode of assignment such as oral assignment
(sic) is neither permissible nor it is valid. In fact sub-section (1) of Section 19
of the Act in categorical terms states that no assignment of the copyright in
any work shall be valid unless it is in writing and signed by the assignor or his
duly authorised agent.112

110 1983(3)PTC84(CB) Copyright Board at Delhi. Chairman R.A. Misra Chairman delivered the
order.

111 1992(12)PTC55(Karn) (DB) Karnataka High Court. Justice K.A. Swamy delivered the judgment.

112 Id. at Para 9, Page 58.


Page 112 of 255
In William Grant & Sons Ltd. v. McDowell & Compay Ltd.113 the Defendant
contended that the assignment made by the design agency to the Plaintiff was not in accordance
with the provisions of the Copyright Act, 1957. The Court said no and noted as under:

[T]he assignment of the modification to the preexisting label which was done
by design agency in England, was valid, as far as England was concerned. The
Defendant in this case, cannot take advantage of the fact that Section 19(2) of
the Indian Copyright Act, which requires that the nature and extent of
assignment must also be specified. It is not the design agency who is
complaining about inadequate assignment or incomplete assignment. The
defendant, in any case, not being the owner of the copyright in the unmodified
label, or in the modified label, cannot complain about the alleged
shortcomings, if any, in the assignment made by the design agency according
to the laws in England.114

In Rupendra Kashyap v. Jiwan Publishing House115the question was as to the


ownership of the copyright of the examination paper, i.e., paper setter and the CBSE. The Court
noted that there is no particular form prescribed for assignment and it may be effected by any
document in writing, even by a letter. The only requisites of assignment are that it must be in
writing and it must be signed by the assignor or his duly authorised agent. As the twin
requirements are satisfied in the case, the Court declared that the CBSE was the owner of the
copyright of the examination paper.

113 MANU/DE/0643/1994 (SB) Delhi High Court. Justice Mahinder Narain delivered the
judgment.

114 Id. at Para130.

115 1996(16) PTC 439 (Del)(SB) Delhi High Court. Justice R.C. Lahoti delivered the judgment.
Page 113 of 255
In L.K.S. Gold Palace v. L.K.S. Gold House P. Ltd. 116 the Plaintiffs partnership firm
was converted into a private limited company under the provisions of the Companies Act.
Plaintiffs argument was that the proprietary rights in the logo stand vested with the Plaintiff.
The Applicant-Defendant contended that there was no valid assignment of copyright of the
Plaintiffs logo as there was no written assignment deed. The question before the Court was
whether in the absence of such an assignment in writing, the plaintiff can claim any copyright
of the logo. The Court held for the Plaintiff and reiterated that once a partnership was
converted into a registered company, the property of partnership vests in the company on
registration and that no separate conveyance is necessary. The Court held that that no transfer
of the copyright, which was originally with the firm, in favour of the company is involved.
Therefore, there is no question of any written assignment deed under Section 19 of the
Copyright Act.

117
In Deshmukh and Co. (Publishers) Pvt. Ltd. v. Avinash Vishnu Khandekar the
question was whether the Appellant-Plaintiff have become owner of exclusive right or merely a
license to publish books. The Respondent-Defendant contended that the agreement was not an
assignment of a copyright as the entire agreement was silent about the term copyright. The
Court held for the Respondent-Defendant and elaborated the difference between the assignment
and license as under:

In order to decide this issue, it is necessary to understand the basic concept of


assignment of copyright and/or grant of license thereof. Copyright is multiple
rights consisting of a bundle of different rights in the same work. It is seldom
that the author of a copyright work himself exploits the work for monetary
benefit. Ordinarily, he either assigns the whole or part of his rights to others to
exploit economically for a lumpsum consideration. In alternative, he may

116 MANU/TN/1420/2004 (SB) Madras High Court. Justice R. Balasubramanian delivered the
judgment.

117 2006(32) PTC 358(Bom) (SB)Bombay High Court. Justice V.C. Dagadelivered the
judgment.
Page 114 of 255
license all or some of his rights to others usually on the basis of a royalty
payment. An assignment may be general i.e. without limitations or an
assignment may be subject to limitations. It may be for the whole terms of the
copyright or any part thereof. An assignment transfers an interest in, and deals
with the copyright itself as provided under Section 14 of the Act, but license
does not convey the copyright but only grants a right to do something, which
in the absence of license would be unlawful. An assignment transfers title in
the copyright, a license merely permits certain things to be done by the
licensee. The assignee being invested with the title in the copyright may
reassign. The license is personal, and therefore, not transferable or assignable
without the grantors consent. Furthermore, the assignee can sue for
infringement without joining the assignor. The licensee cannot sue in his own
name for infringement of the copyright, since copyright belongs to the
licensor.118

The copyright comprises of schedule rights which can be exercised


independent of each other. The license is a personal right which cannot be
transferred except in certain circumstances. License is a right to do some
positive act. License is a personal right and creates no more personal
obligation between a licensor and licensee. The license is generally revocable
at the will of the grantor. There are different kinds of licenses. A license may
be exclusive or nonexclusive; exclusive license means a license which confers
on licensor or licensee and persons authorised by him to the exclusion of all
other persons (including the owner of the copyright) any right comprised in
the copyright in a work. In the case of non-exclusive license, the owner of
copyright retains the right to grant licenses to more than one person or to
exercise it himself. License is a personal right and licensee may not always be
entitled to make alterations to the terms. These are broad guidelines. It is
difficult to extract from the precedents whether a given transaction is
assignment or license.119

Elaborating the statutory scheme relating to assignment, the Court observed as under:

Section 19 provides for mode of assignment in the manner prescribed therein.


Assignment of copyright is valid only if it is in writing and signed by the
assignor or by his duly authorised agent. There is no prescribed form of
assignment. The assignee to whom certain rights have been assigned by the
assignor can be restrained by the Court having competent jurisdiction.
Copyright is not a positive right but is negative right, that is the right to stop

118 Id. at Para 52, Page 374-375..

119 Id. at Para 53, Page 375.


Page 115 of 255
others from exploiting the work without the copyright owners consent or
license. Copyright is kind of personal movable property which can be
transferred by assignment etc. transfer inter vivos or by will or by due
process of law, i.e. in the event of death of the owner.120
Sections 18, 19 and 19A of the Copyright Act, deal with assignment of
copyright. Assignment of copyright may be for the whole of the rights or for
the part of the rights only. Assignment of copyright may be general i.e.
without any limitation being placed on the assignee or assignment may be
subject to certain limitations. Assignment may be for full term of copyright or
for a limited period of time. Assignment may be on territorial basis i.e. for a
particular territory of the country. Copyright can be assigned on different
conditions referred to hereinabove.121

The Court noted that to determine whether a document is an assignment or merely confers a
license, regard must be had to the substance and not to the form of words used.

The Court held that the nature of the agreement is nonexclusive license and observed as under:
Two propositions in respect of commercial contracts are well recognized.
Firstly, that there is no presumption in favor of permanence of an agreement.
Secondly, if a contract involved mutual trust and confidence in its fulfillment,
normally, Courts would not interpret its term to employ permanence. In this
case mutual reciprocal obligations are flowing from the terms of the
agreement such as payment of royalty, giving of accounts, supply of copies to
the author with restriction on the right of the publisher to distribute
complimentary copies. If the consideration consists of payment of royalties or
a share of profits instead of downright payment, then the copyright is not
assigned. It would be a license to publish and sell. In this case, payment of
royalty instead of a sum of money paid down will also weigh heavily against
partial assignment.122
In Saregama India Ltd. v. Suresh Jindal123 the first issue before the Court was whether
the assignment of dramatic, literary and musical work of the film was for a limited period or
unlimited period? The Petitioner contended that once an assignment of copyright is made under
the Act, the assignee becomes the absolute owner thereof and the grant, therefore, is an

120 Id. at Para 54, Page 375.

121 Id. at Para 55, Page 375-376.

122 Id. at Para 67, Page 381.

123 AIR 2006 Cal 340 (SB) Calcutta High Court. Justice Soumitra Sen delivered the judgment.
Page 116 of 255
irrecoverable grant. The Court rejected this contention of the Petitioner and came to the
conclusion that if the grant was intended to be for an unlimited period, there could not be any
negative covenant for a limited period. The second issue before the Court was whether the
agreement of assignment can be terminated for committing breach of the terms and conditions
thereof by the assignee or not? The Petitioner said no. The Court said yes and observed as under:

Under the Act a copyright may be assigned wholly or partially or either


generally or subject to limitations and either for the whole of the copyright or
any part thereof. The assignment under Section 19 is required to be in writing
and is also required to specify the duration of such assignment. Therefore,
from the scheme of the Act, it appears that the assignment can be a limited
assignment both in content and period, therefore, a person intending to assign
the copyright may decide to assign only a part of the copyright to be assigned
and for an unlimited period or in other words, an assignment does not
automatically mean it is an absolute assignment. The intention of the parties
with regard to the nature the extent of assignment is required to be ascertained
from the agreement itself. If upon proper construction of the agreement it
means that the assignment is for a limited period then it cannot be contended
that simply because an assignment of copyright has been made given absolute
ownership with regard to the copyright it has to be for an unlimited period.124
However, the question here is whether the agreement can be terminated during
its validity period if a breach of the terms and conditions of the agreement has
been committed by the assignee. From the statutory requirement contained
in Section 19 of the said Act for constituting a valid assignment, it appear to
me that once the agreement contains the necessary specification required
under the statute violation thereof may give rise to the right of termination on
the part of the assignor. Under Section 19, the territorial extent of the
assignment is required to be mentioned in the agreement. In the event, the
assignee violates the said territorial limit, then the assignor would be perfectly
within its right to terminate the agreement to contend otherwise would be to
defeat the very purposes of the statute itself. The concept of the assignee
being treated as the first (sic) owner of the copyright after assignment is to
clothe the assignee with all the rights which would otherwise be normally
available to the assignor. This does not mean that the assignee having been
treated as the first (sic) owner would be entitled to commit a breach of the
very agreement under which he has acquired the right to be treated as the first
owner.125
In Bharati Dutta v. Saradindu Basu126the Respondent contended that the deeds of
conveyance was not an assignment in terms of the Act as the term shall devolve was used in
124 Id. at Para 51, Page 348.

125 Id. at Para 52, Page 348-349.


Page 117 of 255
the deeds of conveyance. The Board rejected the argument of the Respondent and noted that the
term assignment and its grammatical variations like assign, etc. have not been defined under
the Copyright Act, 1957. The Board observed as under:

Assignor herein, instead of using the expression assignment or any of its other
grammatical variation, has used the expression devolve. But for the
requirement under sub-section (1) of Section 19 that the assignment has to be
in writing and duly signed by the assignor or by his duly authorized agent,
there is no requirement as to the form of the assignment in which it should be
written. In view of that the style of drafting of the clause providing for the
assignment of the work which the assignor herein has followed of necessity
needed use of some other expression other than the expression assign or its
grammatical variations. He chose to use the expression shall devolve. These
verbs conveying the nature of activity read in association with copyright,
with all rights incidental thereto and the royalty payable lead to an
inescapable conclusion of assignment of rights under the relevant Act.127
On the argument of that Complainant that the effective date of assignment of the different
documents would be the same, the Board rejected the argument and noted as under:

[T]here is no concept of effective date of assignment distinctive of the actual


date of assignment under sub-section (2) of section 19. A plain reading of that
sub-section and other related provisions in the Act sets forth only one date of
assignment, that is, when the conveyancing document was executed. All of the
documents bear their respective dates of execution. In view of this, this period
of five years will be reckoned from the respective dates of execution in
relation to different documents.128
The Board also noted that the acceptance of payment of royalty is a valid exercise of right
envisaged under sub-section (4) of Section 19.

In Tucker Fastners Ltd. v. Solsons Exports Pvt. Ltd. 129the Petitioner contended that the
Respondent No. 2, while joining Respondent No. 1, agreed that the Respondent No. 1 became
first owner of the copyright as no written assignment in writing as stipulated under Section 19
126 2008(37) PTC 178(CB) Copyright Board at Kolkata. Order delivered by Chairman
Dr. Raghbir Singh.

127 Id. at Page 189.

128 Id. at Page 191.

129 2009 (39) PTC 389(CB) Copyright Board at Delhi. Order delivered by Chairman Dr. Raghbir Singh.
Page 118 of 255
was executed by the Respondent No. 2 in favour of Respondent No. 1. The Board accepted the
contention of the Applicant and noted as under:

There is nothing on record to show that a transfer of rights had taken place in
terms of Section 19 of the Act. Registrar of Copyright based upon the
application made to him and claims made therein by the applicant proceeded
with the registration of the work. Under the Copyright Act, 1957, there is no
system of inviting opposition as available under the Trade Marks Act, 1999.
Thus the Registrar of Copyright Act, having believed that the assertions made
are truthful and in accordance with the provisions of the Copyright Act, 1957,
proceeded with the registration. Burden for the correctness of the information
lies upon the applicant at all times in future.130
In Wings Pharmaceuticals Pvt. Ltd. v. Vest Pharmaceuticals Pvt. Ltd. 131Petitioner
contended that there was no assignment of the work. The Board held for the Petitioner. The
Board noted that there was no rebuttal or clarification from the respondent on this count. Hence
the registration must fail on that count.

In Pine Labs Pvt. Ltd v. Gemalto Terminals India Pvt. Ltd.132 the Defendant
contended that the agreement between the parties to develop the software was an agreement to
assign and not actual assignment and therefore Section 19 (5) and (6) of the Copyright Act,
1957 would not apply. The Court held for the Defendant and observed as under:

Assignment of copyright is one of the modes of acquisition of title on a


copyrightable work. The assignment of copyright can be made under the
provisions of the Copyright Act and can be subject to several limits which the
copyright owner can impose at the time of entering into an assignment
agreement. As the Copyright Act is protective legislation because it protects
the interests of the authors, the statute itself provides the limits on the interest

130 Id. at Page 392.

131 2009(39) PTC 385(CB) Copyright Board at Delhi. Chairman Dr. Raghbir Singh delivered
the order.

132 http://lobis.nic.in/ddir/dhc/MAN/judgement/11-12-2009/MAN08122009IA128252009.pdf
(SB) Delhi High Court. Justice Manmohan Singh delivered the judgment. Last visited on 21 st
February 2016.
Page 119 of 255
passed at the time of assignment if the assignment is silent on territoriality,
time limit etc.133
...

From a bare reading of Section 18, it is discernible that the Act recognizes two
kinds of assignment, one being assignment of existing work and the other
being assignment of future work. This is one instance of recognition of such
agreements in the statute.134
Assignment of copyright in existing work can pass right, title and interests in
the copyrighted work either absolutely or partially. The said assignment is
subject to covenants entered into by the parties which are determinative
factors as regards the absolute or partial interest in the work. Assignment is
also subject to Section 19 of the Act.135
The Court distinguished assignment from agreement to assign as under:
The other agreement is the agreement to enter into assignment or agreement to
assign future work. The law as it emanates from various judicial authorities
and English law on the subject recognizes marked differences between the
two kinds of agreements. The basic difference in both kinds of assignment is
that in the actual assignment, the interest, whether absolute or partial, passes
along with the beneficial interest. On the other hand, the agreement to assign
or other vernacular for the same being assignment in equity exists
independent from the actual assignment. The said agreement is termed as
equitable assignment due to the reason that the said assignment is such
which passes rights and interests in equity to the assignee with the
assignor/author retaining beneficial rights. This generally happens in
commissioned works where the parties enter into agreement to assign future
works.136
On appeal, in Pine Labs Pvt. Ltd v. Gemalto Terminals India Pvt. Ltd. 137 the Court
reversed the judgment of the Single Judge and accepted the contention of the Plaintiff and
observed as under:

133 Id. at Para 63, Page 21.

134 Id. at Para 63, Page 23.

135 Id. at Para 64, Page 23.

136 Id. at Para 68, Page 23-24.

137 2011(48)PTC248(Del) (DB) Delhi High Court. Justice A.K. Sikri delivered the judgment.
Page 120 of 255
Section 19(5) and 19(6) have been inserted in 1994 whereas in 1984, the Act
only provided that the identity of the work, period and territory should be
specified, but did not provide for any consequence of not specifying the same.
By a deliberate insertion of such sub-sections 5 and 6, legislature has provided
for a deeming consequence, which is absolute, without any exception and de
hors any alleged intention or conduct of parties. No further action of either
party was required to be taken to complete the assignment. Assignment for
future works stood complete on the date of execution of agreement and
parties understood it as such.138
The Court concluded that as no duration or territorial extent was provided in the agreement or
any assignment deed, provisions of Section 19(5) and (6) of Act would be attracted and this
would be the situation even if we accept the contention of the Respondent that the agreement was
an agreement to assign and not the assignment itself.

In Charanjit Singh v. Dua Brothers139the Respondent contended that Petitioners father


created the artistic work as a partner of the firm and thus the property thereof vests in the firm.
But, there was nothing in the partnership deed and the dissolution deed to indicate that the
Petitioners father has assigned the work in favour of the Respondent. The Board rejected the
contention of the Respondent and observed that assignment as envisaged under Sections 18 and
19 has to be in writing. Burden is upon the respondent and he has failed in that regard.

In Sree Gokulam Chit and Finance Company (P.) Ltd. v. Johny Sagariga
Cinema Square140 the question was whether the agreement entered into between the Plaintiff
and the first Defendant, could be construed as the agreement of assignment of copyright. The
Court said no and observed as under:

138 Id. at Para 23, Page 257.

139 2009(41)PTC124(CB) Copyright Board at Delhi. Chairman Dr. Raghbir Singh delivered the order. On the
similar ground the Copyright Board decided Marie Stopes International v. Parivar Seva Sanstha
2009(41)PTC119(CB) Copyright Board at Delhi. Chairman Dr. Raghbir Singh delivered the order. S.
Vijayaraghavan v. Sellappappa Keeran MANU/TN/1160/2011(SB) Madras High Court. Justice S.
Palanivelu delivered the judgment.

140 2011(46)PTC513(Mad)(SB) Madras High Court. Justice V. Ramasubramanian delivered the


judgment.
Page 121 of 255
A careful reading of Sections 18 and 19 would show that the purpose of
assignment is actually to enable the assignee to exploit the rights that the
owner of the copyright has in (i) the literary, dramatic or musical work (ii) the
computer programme (iii) the artistic work (iv) the cinematograph film or (v)
the sound recording. An assignment serves two purposes. For the assignee, it
confers the right of exploitation for a specified period in a specified territory.
For the assignor, it confers the right to receive royalty. An agreement, the sole
purpose of which was just to prevent others from exploiting the copyrights of
the owner and to enable the assignee to get back his loan, cannot be an
agreement of assignment. In an agreement of assignment, the only right that
the assignee has is the right of exploitation. The only right that the assignor
has is to receive royalty. If the assignor does not exploit his rights during the
period of assignment, not only would the assignment lapse on the expiry of
the term, but also the money paid to the assignor would never get repaid. In
other words, the rights conferred by an agreement of assignment on the
assignee flow only one way. While after the expiry of the period of
assignment, the copyrights flow back to the assignor, the royalty paid to the
assignor never gets repaid to the assignee.141

The Court observed that in this case the agreement was an agreement of assignment of copyright
or not, depend solely upon the question whether the amount paid under the agreement was
refundable or not. Since the amount paid has been made refundable and also since part of the
said amount has already been refunded by the first Defendant to the Plaintiff and the Plaintiff has
chosen to claim the balance amount, the document cannot at all be construed as a deed of
assignment of copyright.

In the Pee Pee Publishers and Distributors (P) Ltd. v. Dr. Neena Khanna142the
Plaintiff contended that the agreement was an assignment and defendant contended that it was
one of licensing arrangement and not the assignment. The Court held for the Defendant. The
Court enumerated the various essential ingredients of the valid assignment as under:

i. The assignment must be in writing;

141 Id. at Para 19, Page 521.

142 http://lobis.nic.in/ddir/dhc/MAN/judgement/22-07-2010. Justice Manmohan Singh delivered


the judgment. Last visited on 21st February 2016.
Page 122 of 255
ii. The assignment must identify the work and specify the assigned rights,
duration and territorial extent;

iii. The Assignment must provide for royalty payable to the author;

iv. The period if not stated in the assignment shall be deemed to be 5


years;

v. The territorial extent if not stated shall be deemed to be India; and

vi. If the assignee does not exercise the rights assigned within 1 year from
the date of the assignment, the same shall be lapsed.143

The Court observed that these are certain prerequisites for the valid assignment prescribed by the
Act for the determination of the valid assignment. Besides the aforementioned essential features,
the covenant has to be read as a whole in order to arrive at the conclusion whether the agreement
is an assignment or license.

The Court observed that the validity of the assignment is to determined in the light of the
provisions of Section 19 of the Act and terms of the agreement for a meaningful reading of the
same in order to come to the conclusion as to whether agreement will operate as assignment or
license.

In Dorling Kindersley (India) Pvt. Ltd. v. Sanguine Technical Publishers 144the


Respondent contended that since the agreement does not provide for any term or period for
which the assignment would subsist, therefore the assignment would subsist only for 5 years.
The Court observed as under:

This is due to the reason that the copyright grants are often misused by the
owners of the copyright by selling (sic) the copyright time and again in the
market by creating the multiple rights affecting the commercial transaction.
This is more than often seen in the cases of copyright agreements involving
films and rights relating to films where this exercise is done in order to reap
maximum profits not realizing that one agreement after another sometimes
affects the commercial transactions which were done earlier under the belief
that the same were done for limited period. Thus, I am of the view that the
143 Id. at Para 21, Page 38.

144 http://lobis.nic.in/ddir/dhc/MAN/judgement/01.07.2013. Justice Manmohan Singh delivered


the judgment. Last visited on 21st February 2016.
Page 123 of 255
enquiry as to presence or absence of the term under the agreement relating to
the copyright grant cannot be merely an exercise which can be done by not
finding the clause relating to term under the agreement and straightaway
arriving at the conclusion that there is no term and thus the agreement was
aimed for 5 years. The fair and meaningful reading of the agreement is
essential in order to find out what the parties actually intended and whether
they intended to assign the rights in perpetuity or for limited period and what
is the indication of the term under the agreement. Thus, the judicious
approach should be adopted while interpreting the agreement. Ultimately, the
grant of the copyright is also an agreement so much shall be dependent upon
on the intention of the parties. If the straightforward conclusion as to absence
of term is arrived at such cases without judiciously analyzing the agreement
by giving meaningful reading and finding out the indication as to term of the
rights, then the said reversion of rights will disturb several important
commercial arrangements without the parties really intending to do so.145

In G.R. Raju v. National Film Development Corpn. 146Plaintiff contended that the 4th
Defendant has not exploited the rights in the suit pictures and by virtue of Section 19(4) of the
Act, such rights deemed to have been lapsed. Rejecting this argument, the Court observed as
under:

In the case of copyright of the motion pictures, the negatives will be in the
custody of the colour lab. If any assignment or transfer is effected regarding
the motion pictures, the assignor will instruct the colour labs to hand over the
negatives to enable the assignee to transfer the same for Umatic form for
telecasting. Therefore, once such transfer is effected, it is presumed that the
assignee has exercised copyrights. Therefore, Section 19(4) will not come into
operation.147

In M. Padmini v. Raj Television Network Limited 148 Appellant-Plaintiff contended that


though in the assignment deed the word absolutely was used, it does not mean that the
145 Id. at Para 25, Page 37.

146 http://lobis.nic.in/ddir/dhc/MAN/judgement/19-11-2014. (SB) Madras High Court. Justice


G.M. Akbar Ali delivered the judgment. Last visited on 21st February 2016.

147 Id. at Para 25,Page 19-20.


Page 124 of 255
Respondent- Defendant was entitled to any future right, as the assignment deed must specifically
mention future rights as contemplated under Section 19(2) of the Act. The Court rejected this
contention and observed that since the entire copyright was assigned in favour of the assignee, if
any right accrues in future due to advancement of science and technology, it will devolve only
upon the owner and not on the first owner.

Now, we will discuss the provisions relating to the disputes with respect to assignment in the
light of the provisions of Section 19A as given below:

(1) If an assignee fails to make sufficient exercise of the rights assigned to him,
and such failure is not attributable to any act or omission of the assignor, then,
the Copyright Board may, on receipt of a complaint from the assignor and
after holding such inquiry as it may deem necessary, revoke such assignment.

(2) If any dispute arises with respect to the assignment of any copyright the
Copyright Board may, on receipt of a complaint from the aggrieved party and
after holding such inquiry as it considers necessary, pass such order as it may
deem fit including an order for the recovery of any royalty payable:

Provided that the Copyright Board shall not pass any order under this
sub-section to revoke the assignment unless it is satisfied that the terms of
assignment are harsh to the assignor in case the assignor is also the author

Provided further that, pending the disposal of an application for


revocation of assignment under this sub-section, the Copyright Board may
pass such order, as it deems fit regarding implementation of the terms and
conditions of assignment including any consideration to be paid for the
enjoyment of the rights assigned

Provided also that no order of revocation of assignment under this sub-


section, be made within a period of five years from the date of such
assignment.

(3) Every complaint received under sub-section (2) shall be dealt with by the
Copyright Board as far as possible and efforts shall be made to pass the final
order in the matter within a period of six months from the date of receipt of
the complaint and any delay in compliance of the same, the Copyright Board
shall record the reasons thereof.

148 MANU/TN/1498/2015 (SB) Madras High Court. Justice R. Subbiah delivered the judgment.
Page 125 of 255
Following cases deal with provisions of Section 19A of the Act.

In K.A. Venugopala Setty v. Dr. Suryakantha U. Kamath 149 assignment was an oral
assignment. Therefore, in the light of the provision contained in Section 19 of the Act, the Court
declared it invalid and observed as under:

Section 19A of the Act provides for settlement of disputes relating to


assignment of copyright and that section will come into play only when there
is an assignment of copyright in accordance with Section 19 of the Act, in
other words the assignment is in writing and signed by the assignor or his duly
authorised agent. So in the instant case, as there is no assignment in writing as
per Section 19 of the Act, Section 19A cannot be held to operate and bar the
suit.150

In A.K. Mukherjee v. State151the Petitioner contended that the Copyright Board found
that the Respondents infringed the copyright of the Petitioners book and the learned
Metropolitan Magistrate was bound by the finding of the Copyright Board. The Court
dismissed the petition and observed as under:

149 1992(12)PTC55(Karn) (DB) Karnataka High Court. Justice K.A. Swamy delivered the
judgment.

150 Id. at Para 11, Page 58.

151 MANU/DE/0869/1994 (SB) Delhi High Court. Justice Jaspal Singh delivered the judgment.
Page 126 of 255
Section 19A of the Copyright Act, 1957 covers only disputes which arise with
regard to the assignment of a copyright or the terms of an assignment of a
copyright only. However, in the petition before the Board neither party had
pleaded that there was any dispute regarding any assignment of the
copyright in the book in question. It was for this reason that the Copyright
Board held the petition to be not maintainable under section 19A. And, this
being the position, I feel, with respect, that the Copyright Board was not
justified in going into the question as to whether there was really any
infringement or not of the Copyright. It was an issue which was beyond the
pale of section 19A which, even otherwise, was held to be inapplicable. In
other words, the Copyright Board gave a finding on an unnecessary or
irrelevant issue, an issue into which neither it could go nor there was any
necessity for it to go. And, once this position is accepted, the finding cannot
operate as res judicata.152

In Lahari Recording Company Private Limited v. Sourabh Marketing and


Agencies Private Limited, Secunderabad153 the Respondent-Defendant contended that
the dispute arising out of the assignment of copyright is covered by Section 19A(2) and this
Section supplants and bars the jurisdiction of the regular Civil Court from entertaining the
Respondent-Defendants suit and proceeding with its trial. Rejecting this contention the Court
held that the jurisdiction of the Civil Court to try the Plaintiff's suit is not barred by Section19A
and that the Copyright Boards power to hold an enquiry in regard to such claims by virtue of
Section 19A(2) could be merely a concurrent jurisdiction, the availment of which is left to the
option of the aggrieved party. The Court explained the provisions of Section 19A(2) as under:

[S]o far as the dispute falling within the ambit of Section 19A, we do not find
any such mandate that the aggrieved party shall refer the dispute to the
Copyright Board alone and that the decision of the Copyright Board thereon is
final. At the cost of repetition, it has to be stated that under Section 72, a
remedy of appeal to the High Court by an aggrieved person from an order of
the Copyright Board lies only when that order is made final under the Act.
Since any order passed by the Copyright Board under Section 19A is not
made final, the aggrieved party cannot approach the High Court in appeal
invoking the aid of Section 72. . .Certain relevant provisions of the Act, enjoin

152 Id. at Para 5.

153 MANU/KA/0212/2001, Justice Md. Anwar delivered the judgment.


Page 127 of 255
that certain disputes concerning copyright shall be referred to the Copyright
Board alone and shall be decided by it alone, while the other disputes of the
nature falling within the purview of Section 19A need not necessarily be
referred to the Copyright Board, since this provision gives option to the
aggrieved party either to approach the Board or to approach any other
Competent Court seeking redressal of his grievance.154

In Bharati Dutta v. Saradindu Basu155 the question for determination before the Board
was whether the petitioner was an aggrieved party or not for purposes of Section 19A(2) of the
Copyright Act, 1957. The Board said yes for she had been named as beneficiary under all the
impugned documents. Thus no doubt was left in her being the aggrieved party in terms of the
above provisions of the Act.

In U.C. Jindal v. Galgotia Publication Pvt. Ltd.156 the Copyright Board held that there is
nothing in the Copyright Act, 1957 which debars the application of the Arbitration and
Conciliation Act, 1996 in copyright matters. Thus in view of clear and unambiguous arbitration
clause in agreements, the remedy for Petitioner lay under arbitration clause in agreements.

Now we proceed to explain the statutory provisions relating to license with the help of case law.

1.3Licenses of Copyright

License means permission. Section 30 deals with licenses by owners of Copyright and reads as
under:

The owner of the copyright in any existing work or the prospective owner of
the copyright in any future work may grant any interest in the right by license
in writing by him or by his duly authorized agent:

Provided that in the case of a license relating to copyright in any future


work, the license shall take effect only when the work comes into existence.

154 Id. at Para 25.

155 2008(37) PTC 178(CB) Copyright Board at Kolkata. Chairman Dr. Raghbir Singh delivered
the order.

156 2008(38) PTC 519(CB) Chairman Dr. Raghbir Singh delivered the order.
Page 128 of 255
Explanation.- Where a person to whom a license relating to copyright
in any future work is granted under this section dies before the work comes
into existence, his legal representatives shall, in the absence of any provision
to the contrary in the license, be entitled to the benefit of the license.

Section 30A. Application of Sections 19.-

The provisions of sections 19 shall, with any necessary adaptations and


modifications, apply in relation to a license under Section 30 as they apply in
relation to assignment of copyright in a work.

Under Section 2 (j) exclusive license means a license which confers on the licensee or on the
licensee and persons authorized by him, to the exclusion of all other persons (including the
owner of the copyright) any right comprised in the copyright in a work, and exclusive licensee
shall be construed accordingly. Following cases deal with copyright licenses.

In Nav Sahitya Prakash v. Anand Kumar 157 the Respondent-Plaintiff contended that the
Appellant-Defendant No. 3 (brother of the Respondent-Plaintiff) had no power to grant license to
the Appellant-Defendants No. 1 and 2 for publication and sale of the book written by
Respondent-Plaintiffs father. The Court held for the Respondent and observed as under:

A joint owner cannot, without the consent of the other joint owner, grant a
license or interest in the copyright. If a license is granted by one joint owner
without the consent of the other, it does not bind the former and the other joint
owner can sue the licensee for infringement (Powell v. Head) (1879) 12 Ch
D 686. It is, therefore, not correct to say that a co-owner cannot sue a licensee
for infringement of copyright. . .The right in the copyright having not been
divided each one of them was entitled to the same right as the other.
Therefore, Defendant No. 3, only being a co-owner, had no right without
the consent of others to give a license158

157 AIR1981All200 (SB) Allahabad High Court. Justice K.C. Agrawal delivered the judgment.

158 Id. at Para 25, Page 204-205.


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Nav Sahitya Prakash159 is an authority for the proposition that a joint owner of copyright
cannot grant a license without the consent of other joint owner(s) and a joint owner who has not
consented to grant of licensee may sue the licensee.

In Coalbelt Cinema Exhibitors Assocn. v. State of West Bengal 160the Petitioner


contended that no person can exhibit films through video tapes without obtaining necessary
license from the copyright owners for commercial exhibition as provided under the provisions of
the Copyright Act. The Court held for the Petitioner and directed the Respondents to take
immediate steps against the video owners who are carrying on the business in contravention of
the provisions of the Copyright Act and without obtaining certificate from the Central Board of
Film Certification for video shows for commercial purpose inclusive hotels, restaurants, coffee
houses and shops

In Babul Products Private Ltd. v. Zen Products161 the Appellant-Plaintiff submitted that
it has an oral license to use the copyrights in the word Babul as its trading name. The Court
rejected the submission of the Appellant regarding the oral license and observed as under:

[T]he plea of oral license in copyright is contrary to Section 19(2) of the


Copyright Act read with Section 30A. Section 19(2) clearly provides that any
assignment of copyright at any work shall identify such work and shall
specify the rights and the duration and territorial extent of such assignment.
This provision applies with necessary adaptation in relation to a license under
Section 30. Therefore a license under Section 30 must identify the work. Such
identification would not be possible by an oral license.162

159 AIR1981All200 (SB) Allahabad High Court. Justice K.C. Agrawal delivered the judgment.

160 MANU/WB/0593/1993(SB) Calcutta High Court. Justice Susanta Chatterji delivered the
judgment.

161 2005(31)PTC135(Guj) (SB) Gujarat High Court. Justice K.S. Jhaveri delivered the
judgment.

162 Id. at Para 14.11, Page 165.


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In PVR Pictures Ltd. v. Studio 18163the Plaintiff contended that the Term Sheet Agreement
(TSA) between the parties defines the rights of the parties, and constitutes the license agreement.
The question before the Court was whether the Plaintiff was the licensee of the Defendant in the
film or not. The Court rejected the submission of the Plaintiff and observed that the parties did
not contemplate that execution of the Term Sheet Agreement is a binding contract and a license
came into existence. The Court held that there was no license in favour of the Plaintiff.

In Houghton Mifflin Company v. Rajinder Kumar Arya164the Defendants argument


was based upon an implied agreement whereby the Defendant was permitted to continue to re-
print and offer for re-sale publications. Rejecting this argument, the Court observed as under:

The provision pertaining to licensing applies by reference to Section 19 of the


Act. It is evident from the above provisions that in order to set-up a license
successfully, the Defendant in a suit has to rely upon a written document. . . In
the absence of a written agreement, authorizing publication or doing of such
things would otherwise amount to copyright infringement . . . Defendant relies
upon certain inter se correspondence exchanged with the Plaintiff . . . But
then, such a letter or assurance is hardly enforceable. In these circumstances,
such assurance can at best amount to the possibility of a future offer but
certainly not a concluded contract.165

In John Welly & Sons Inc. v. Prabhat Chander Kumar Jain 166the question was
whether the Defendant has infringed the copyright by merely purchasing the work from the
exclusive licensee having limited license to distribute or publish within certain territories and
selling the same to countries outside the territories. The Court said yes. On the basis of statutory

163 2009(41)PTC70(Del) (SB) Delhi High Court. Justice S. Ravindra Bhat delivered the
judgment.

164 http://lobis.nic.in/ddir/dhc/MAN/judgement/31-05-2010/MAN08122009IA128252009.pdf
(SB) Delhi High Court. Justice S. Ravindra Bhat delivered the judgment.

165 Id. at Para 20, Page 11-12.

166 http://lobis.nic.in/ddir/dhc/MAN/judgement17-05-2010/MAN08122009IA128252009.pdf
(SB) Delhi High Court. Justice Manmohan Singh delivered the judgment.
Page 131 of 255
scheme of the licensing of the copyright, the Court reiterated that Chapter VI of the Copyright
Act deals with the aspect of licensing which is merely a permissive right and noted as under:

A careful reading of the Section further makes it clear that the owner by
exercising the right to license further demarcates the rights and imposes
conditions and limitations by way of a period wise license or territory wise
license exclusive or non exclusive etc. Licensing is a mode of maximum
exploitation of the rights under the Act by imposing conditions and limitations
upon the rights.167

The right of the owner of the copyright to issue the copies of the work to the
public will not be circumscribed by any territorial limitation. Thus, the owner
of the copyright will have the right to issue the copies of the work not being
the copies already in circulation worldwide. This proposition also gets
amplified by reading subsequent sections in the Act relating to assignment and
licensing. Section 19 which is also mutatis mutandis applicable to
licensing by operation of Section 30A also talks about the mode of the
covenant in assignment and licensing. Section 19 (6) postulates that if the
covenant is silent about the territory, then said assignment/ or licensing by
deeming fiction of law shall be limited to India. This is the statutory
recognition of the principle that the owners right under the Copyright Act is
not circumscribed by the territorial limitation and rather the owner can assign
or license its rights worldwide. This is also applicable to an Indian author or
owner, for instance, if an Indian person is the author and the owner of the
book, then the said person will have a copyright to issue the copies of his
work to the public anywhere in the world.168

On the other hand, the rights of the exclusive licensees which will be subject to
conditions and limitations imposed by the owner of the copyright will flow
from both the Statute as well as from the covenant entered between the
parties.169

167 Id. at Para 50, Page 29.

168 Id. at Para 66 , Page 36.

169 Id. at Para 67 , Page 36.


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Distinguishing between the rights of the owner and the exclusive licensee, the Court observed as
under:

The limited applicability of definition of an owner of copyright to include


exclusive licensee only for the purposes of Chapter XII indicates the
legislative intent which is to give benefit to the copyright owner to have
additional right to sue for the purposes of suing for infringement of copyright
through the exclusive licensee clear. But for the purposes of the other
Chapters including the allocation of rights and defining the rights under the
Act, the definition of the owner including exclusive licensee will not be
applicable. This is a rather deliberate omission vis--vis the other Chapters
and a conscious insertion/exception by the Legislature only for Chapter XII to
give additional right to sue to the copyright owner through its exclusive
licensee.170

The Court formulated following legal propositions:

(a) That the Court will measure the infringement of the copyright from the
rights of the owner of the copyright when the owner is before the court for
violation of its rights.

(b) That the rights of the owner may be broader than the limited rights of the
exclusive licensee, although the exclusive licensee has the independent
right to sue for infringement of the copyright.

(c) The rights of the owner and exclusive licensee may not be the same and
the rights of the exclusive licensee shall also be subject to the fetters
imposed by the agreement between the licensor and licensee.171

The Court noted the position of the licensee as under:

In any case, a purchaser from the licensee of any licensed work having
knowledge about the said licensee cannot get a better title than the licensee
170 Id. at Para 61, Page 34.

171 Id. at Para 68, Page 37.


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and will be bound by the said license as he is aware of the same at the time
of making the said purchase and purchased the same while accepting it. To
that extent, the position of a licensee will remain the same universally and
the statutory recognition of the said rule, whether it exists or not, will only
create the exception for the bona fide purchaser without notice.172

John Welly & Sons Inc.173 is an authority for the proposition that an exclusive licensee
cannot have a better title than the copyright owner, however, a bonafide purchaser without
which can avail the benefit of exception to the rule of nemo dat quod non habet.

The following part seeks to explain the law relating to compulsory licensing of copyright.

Part II
Compulsory License

An agreement without free consent of the parties is void or voidable as per the provisions of the
Indian Contract Act, 1872. However, compulsion of law is neither coercion nor undue influence
and does not amount to absence of free consent. Copyright is a statutory right. It is created by
law. It is limited by law. It is a property right in a sense. Being a property right it is subject to the
provisions of Article 300A of the Constitution of India. Article 300A provides, No person shall
be deprived of his property save according to the authority of law. In other words, every person
shall be deprived of his property according to the authority of law. Deprivation of property may
be complete or partial. The only condition for deprivation is authority of law. Copyright Act,
1957 is a law. Copyright Act while making provisions for compulsory license does not envisage
complete deprivation of copyright. It only envisages partial deprivation. The basis of provisions
relating to compulsory license seems to be utilitarian or promotion of social good. Copyright Act,
sub silatio, casts a duty on the copyright owner to publish and /or perform the work in public.
If the copyright owner fails to perform these duties someone else may be licensed to take the

172 Id. at Para 78, Page 41.

173 http://lobis.nic.in/ddir/dhc/MAN/judgement17-05-2010/MAN08122009IA128252009.pdf
(SB) Delhi High Court. Justice Manmohan Singh delivered the judgment.
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work to the public. Provisions relating to copyright license are in furtherance to the primary
objectives of copyright law, i.e., promotion of learning and advancement of knowledge. Through
compulsory license copyrighted work reaches the public and the copyright owner gets the
royalty. In short, compulsory license is a call to the copyright owner that perform your duties and
if you cannot, let somebody else do it and you may get compensated by way of royalty.
Following Sections of the Copyright Act deal with compulsory license.

Section 31 Compulsory license in works withheld from public.-

(1) If at any time during the term of copyright in any work which has been
published or performed in public, a complaint is made to the Copyright
Board that the owner of copyright in the work-

(a) has refused to republish or allow the republication of the work or has
refused to allow the performance in public of the work, and by reason of
such refusal the work is withheld from the public; or

(b) has refused to allow communication to the public by broadcast, of such


work or in the case of sound recording the work recorded in such sound
recording, on terms which the complainant considers reasonable; the
Copyright Board, after giving to the owner of the copyright in the work
a reasonable opportunity of being heard and after holding such inquiry
as it may deem necessary, may, if it is satisfied that the grounds for such
refusal are not reasonable, direct the Registrar of Copyrights to grant to
the complainant a license to republish the work, perform the work in
public or communicate the work to the public by broadcast, as the case
may be, subject to payment to the owner of the copyright of such
compensation and subject to such other terms and conditions as the
Copyright Board may determine; and thereupon the Registrar of
Copyrights shall grant the license to such person or persons who, in the
opinion of the Copyright Board, is or are qualified to do so in
accordance with the directions of the Copyright Board, on payment of
such fee as may be prescribed.1

1 Chapter IV of the Rules deals with Compulsory Licenses in works withheld from public. Rule 6
states as under:Rule 6 Application for license.-
(1) An application for a license under Section 31 to republish the work or public or communicate the
work to the public by broadcast shall be made in Form II and shall be accompanied by the fee
specified in the Second Schedule.
(2) Every such application shall be made in respect of one work only.
(3) Every application to re-publish the work or perform the work in public shall be accompanied with
adequate evidence to show that the owner has refused to re-publish or has allowed the re-
publication of the work or has refused to allow the performance of the work in public, and the
reasons for such refusal.
(4) Every application for communication of the work to the public by broadcast shall be
accompanied with adequate evidence along with reasons or grounds to show that the owner of

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(2) Where two or more persons have made a complaint under sub-section (1),
the license shall be granted to the complainant who in the opinion of the
Copyright Board would best serve the interests of the general public.

Refusal to publish or grant voluntary license is the sine qua non and the basis of grant of
compulsory license. Section 31A deals with the compulsory license in unpublished or published
works. It reads as under:

copyright has refused to allow


(a) the communication of the work by broadcast to the public; or
(b) in the case of sound recording, the reasons for the application to consider the terms
unreasonable.
Rule 7 Notice of application.-
(1) A copy of application under rule 6 with the documents relied upon shall be served on the owner of
the copyright by registered post.
(2) The Board shall given an opportunity of being heard to the owner of the Copyright and the
applicant and also, wherever practicable, to any person claiming any interest in the copyright of
the work, and shall take such evidence in respect of the application, as it deems fit.
(3) The Board may, if satisfied, direct the Registrar of Copyright to grant license applied for the to the
applicant or, if there are more than one, to such of the applicants as, in the opinion of the Board,
would best serve the interest of the general public.
(4) Every such license shall be subject to the conditions provided in Section 31 including the payment
of compensation or royalties and shall specify-
(a) the period for which the license has been granted;
(b) the quantum of compensation or the rate at which royalties are paid to the owner of the
Copyright in the work; and
(c) such other terms and conditions as the Board may deems fit.
(5) The grant of every such license shall, as soon as possible, be notified in the Official Gazette and on
the website of the Copyright Office and the Board and a copy of the license shall be sent to the
other parties concerned.
Rule 8 Manner of determining compensation or royalties.-
The Board shall determine the quantum of compensation or royalties payable to the owner of the
copyright under Section 31. The Board may while determining quantum of compensation or royalty
shall take into consideration-
(i) in case of re-publishing the work or performing the work in public-
(a) the proposed retail price of a copy of the work or rate on which the work is performed in public;
(b) the prevailing standards of royalties with regard to publication of works or performance of the work
in public; and
(c) such other matters as may be considered relevant by the Board.
(ii) in case communication of any work to the public by broadcast-
(a) a time slot in which the broadcast takes place and different time slot including the repeat broadcast;
(b) different rates for different classes of works;
(c) the prevailing standards of royalties payable in this regard for such works; and
(d) such other matters as may be considered relevant by the Board.
Rule 9 Extension of the period of license.-
The Board may, on the application of the licensee and after notice to the owner of the copyright,
wherever practicable, if it is satisfied that the licensee was for sufficient reasons unable to re-publish
the work in public or communication of the work to public by broadcast within the period specified
in the license, extend such period.
Rule 10 Cancellation of license.-

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(1) Where, in the case of any unpublished or any work published or
communicated to the public and the work is withheld from the public in
India, the author is dead or unknown or cannot be traced, or the owner of
the copyright in such work cannot be found, any person may apply to the
Copyright Board for a license to publish or communicate to the public such
work or a translation thereof in any language.

(2) Before making an application under sub-section (1), the applicant shall
publish his proposal in one issue of a daily newspaper in the English
language having circulation in the major part of the country and where the
application is for the publication of a translation in any language, also in
one issue of any daily newspaper in that language.

(3) Every such application shall be made in such form as may be prescribed
and shall be accompanied with a copy of the advertisement issued under
sub-section (2) and such fee as may be prescribed.2
The Board may, after giving an opportunity of being heard to the licensee, cancel the license on any the
following grounds, namely:-
(a) that the licensee has failed to re-publish the work or perform the work in public or communication
of the work to public by broadcast within the time specified in the license or within the time extended
on the application of the licensee;
(b) that the license was obtained by fraud or misrepresentation as to any essential fact; and
(c) that the licensee has contravened any of the terms and conditions of the license.

2 Chapter V of the Rules deals with the Compulsory License to publish or communicate to the
public the work or translation thereof. Rule 11 Application for license.
(1) An application for a license under Section 31A to publish or communicate to the public the work or translation
thereof, in any language, any unpublished work or nay work published or communicated to the public and the
work is withheld from the public in India, the author is dead or unknown or cannot be traced, or the owner of the
copyright in such work cannot be found, shall be made by any person in Form III and shall be accompanied by the
fee specified in the Second Schedule:
Provided that in case the desired author is dead such application for publication of the work can be made
only if there is a failure to publish the work within the time specified by the Central Government as provided in
sub-section (6) of Section 31A.
(2) Every such application shall be made in respect of one work only and in respect of translation of a work into one
language only.
(3) The application other than an application under sub-section (7) of Section 31A shall be accompanied by a
newspaper containing the publication issued under sub-section (2) of Section 31A and published in one issue of a
daily newspaper in the English language having circulation in the major part of the country and where the
application is for the publication of a translation in any language, in one issue of any daily newspaper in that
language.
(4) If the Board is satisfied that the license for publication or communication to the public or translation in any
language of the work, applied for may be granted to the applicant, would best serve the interest of the general
public, it shall direct the Registrar of Copyright to grant the license accordingly.
(5) Every such license shall be subject to the conditions provided in sub-section (7) of Section 31A, and shall
specify-
(a) the period within which such work shall be published, translated or communicated to the public;
(b) the price at which the copies of such work are to be sold or changes to be collected for communicating the
work to the public;
(c) the amount of royalty to be deposited and the account in which it has to be deposited;
(d) in case of translation of the work, the language in which the translation shall be produced and published; and

Page 137 of 255


(4) Where an application is made to the Copyright Board under this section, it
may, after holding such inquiry as may be prescribed, direct the Registrar
of Copyrights to grant to the applicant a license to publish the work or a
translation thereof in the language mentioned in the application subject to
the payment of such royalty and subject to such other terms and conditions
as the Copyright Board may determine, and thereupon the Registrar of
Copyrights shall grant the license to the applicant in accordance with the
direction of the Copyright Board.

(5) Where a license is granted under this section, the Registrar of Copyrights
may, by order, direct the applicant to deposit the amount of the royalty
determined by the Copyright Board in the public account of India or in any
other account specified by the Copyright Board so as to enable the owner
of the copyright or, as the case may be, his heirs, executors or the legal
representatives to claim such royalty at any time.

(6) Without prejudice to the foregoing provisions of this section, in the case of
a work referred to in sub-section (1), if the original author is dead, the
Central Government may, if it considers that the publication of the work is
desirable in the national interest, require the heirs, executors or legal
representatives of the author to publish such work within such period as
may be specified by it.3

(e) in case of communication to the public of the work the medium in which it is to be communicated to the
public.
(6) The grant of every such license shall, as soon as possible, be notified in the Official Gazette and on the website
of the Copyright Office and the a Board and the Board and a copy of the license shall be sent to the other parties
concerned.
Rule 12 manner of determining royalties.-
The Board shall determine the amount of royalty to be deposited by the applicant. The Board may while
determining the royalty shall take into consideration the following-
(a) the prevailing standards of royalties with regard to such works; and
(b) such other matters as may be considered relevant by the Board.
Rule 13. Extension of the period of license.-
The Board may, on the application of the licensee, if it satisfied that the license was for sufficient reasons unable to
produce and publish the translation or reproduce the work or communicate the work to the public within the period
specified in the license, extend such period.
Rule 14. Cancellation of license.-
The Board may, after giving an opportunity to the licensee of being heard, cancel he license on any of the following
grounds, namely-
(a) that the licensee has failed to produce and publish such work or communicate to the public the work within the
time specified in the license or within the time extended on the application of the licensee;
(b) that the license was obtained by fraud or misrepresentation as to any essential fact;
(c) that the licensee has contravened any of the terms and conditions of the license.

3 Rule 16 Notice for publication of a work in case of death of original owner.The Central Government, if decides
to make a request under sub-section (6) of Section 31A, shall specify a minimum periods of six months and a
maximum of one year for publication of work by the heirs, executors or legal representatives of the author of
work.

Page 138 of 255


(7) Where any work is not published within the period specified by the
Central Government under sub-section (6), the Copyright Board may, on an
application made by any person for permission to publish the work and
after hearing the parties concerned, permit such publication on payment of
such royalty as the Copyright Board may, in the circumstances of such
case, determine in the prescribed manner.

Section 31B deals with the compulsory license for benefit of persons with disability as under:

(1) Any person working for the benefit of persons with disability on a profit
basis or for business may apply to the Copyright Board, in such form and
manner and accompanied by such fee as may be prescribed, for a
compulsory license to publish any work in which copyright subsists for the
benefit of such persons, in a case to which clause (zb) of sub-section (1) of
section 52 does not apply and the Copyright Board shall dispose of such
application as expeditiously as possible and endeavour shall be made to
dispose of such application within a period of two months from the date of
receipt of the application.4

4 Chapter VI of the Rules deals with the Compulsory license for benefit of disabled. Rule 17 deals with the
application for license. It states as under:
(1) An application for a license under section 31B to publish any work in any format useful for person with
disability shall be made in Form V and shall be accompanied by the fee specified in the Second Schedule.
(2) Every such application shall be made in respect of one work only.
Rule 18 deals with the notice of application. It provides as under:
(1) A copy of application under Rule 17 shall be served by registered post on the owner of copyright and if the
owner of copyright and if the owner of such copyright is not known or is not traceable, a copy of the
application shall be served by registered post on the publisher whose name appears on the work.
(2) The Board shall give an opportunity of being heard to the owner of the copyright and the applicant and also,
wherever practicable, to any person claiming any interest in the copyright of the work, and shall take such
evidence in respect of the application, as it deems fit.
(3) If the Board is satisfied that the license for publication of the work in the format applied for may be granted to
the applicant, or if there are more applicants than one, to such of the applicants, as, in the opinion of the Board,
would best serve the interest of the disabled persons, it shall direct the Registrar of Copyright to grant license
accordingly.
(4) Every such license shall specify:
(a) the period within which such work shall be published;
(b) the medium and format in which the work shall be produced and published;
(c) the number of copies that shall be produced ;
(d) the rate at which royalties in respect of the copies of such work sold to the disabled persons shall be paid to the
owner of the copyright in the work; and
(e) the person to whom such royalties shall be payable.
(5) The grant of every such license shall, as soon as possible, be notified in the Official Gazette and the website of
the Copyright Office and the Board and a copy of the license shall be sent to the other parties concerned.
Rule 19 deals with the manner of determining royalties as under:
The Board shall determine the royalties payable to the owner of the copyright under sub-section (4) of Section 31B.
The Copyright Board may while determining royalty shall take into consideration the following-

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(2) The Copyright Board may, on receipt of an application under sub-section
(1), inquire, or direct such inquiry as it considers necessary to establish the
credentials of the applicant and satisfy itself that the application has been
made in good faith.

(3) If the Copyright Board is satisfied, after giving to the owners of rights in
the work a reasonable opportunity of being heard and after holding such
inquiry as it may deem necessary, that a compulsory license needs to be
issued to make the work available to the disabled, it may direct the
Registrar of Copyrights to grant to the applicant such a license to publish
the work.

(4) Every compulsory license issued under this section shall specify the
means and format of publication, the period during which the compulsory
license may be exercised and, in the case of issue of copies, the number of
copies that may be issued including the rate or royalty:

Provided that where the Copyright Board has issued such a


compulsory license it may, on a further application and after giving
reasonable opportunity to the owners of rights, extend the period of such
compulsory license and allow the issue of more copies as it may deem fit.

Section 32 License to produce and publish translations.-

(a) the proposed price at which a copy of such work shall be made available to the disabled persons;
(b) the prevailing standards of royalties in regard to such work taking into consideration;
(c) the cost involved in making the accessible formats for the disabled person; and
(d) such other matters as may be considered relevant by the Copyright Board.
Rule 20 deals with the extension of the period of license. It follows as under:
The Board may, on the application of the licensee and after notice to the owner of the copyright, wherever
practicable, if it is satisfied that the licensee was for sufficient reasons unable to produce and publish the work
within the period specified in the license, extend such period.
Rule 21 deals with the cancellation of license as under:
The Board may, after giving an opportunity of being heard to the licensee, cancel the license on any of the
following grounds, namely:-
(a) that the licensee has failed to produce and publish such work within the time specified in the license or within
the time extended on the application of the licensee;
(b) that the license was obtained by fraud or misrepresentation as to any essential fact;
(c) that the licensee has contravened any of the terms and conditions of the license;
(d) the owner of the copyright has satisfied the requirement of the disabled person by publishing in the same format
with same or lower price for which compulsory license was granted.
Rule 22 deals with notice for termination of license. It reads as under:
Notice for termination of license granted under sub-section (3) of Section 31B shall be served on the person
holding the license by the owner of copyright in Form IV.

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(1) Any person may apply to the Copyright Board for a license to produce and
publish a translation of a literary or dramatic work in any language after a
period of seven years from the first publication of the work.5

(1A) Notwithstanding anything contained in sub-section (1), any person may


apply to the Copyright Board for a license to produce and publish a
translation, in printed or analogous forms of reproduction, of a literary or
dramatic work, other than an Indian work, in any language in general use
in India after a period of three years from the publication of such work, if
such translation is required for the purposes of teaching, scholarship or

5 Chapter IX of the Rules deals with the license for translations. Rule 32 deals the application for license. It
reads as under:(1) An application for a license under Section 32 to produce and publish a translation of a
literary or dramatic work in any language shall be made in Form VI and shall be accompanied by the fee
specified in Second Schedule.
(2) Every such application shall be in respect of one work only and for translation of the work into one language
only.
Rule 33 deals the notice of application. It reads as under:
(1) When any such application has been made, the Broad shall, as soon as possible, give notice of the application in
the Official Gazette and also, if the Board thinks fit, in one or two newspaper and shall send a copy of the
notice to the owner of the copyright, wherever practicable.
(2) Every such notice shall contain the following particulars, namely:
(a) the date of the application;
(b) the name, address and nationality of the applicant;
(c) particulars of the work which is to be translated;
(d) the date and country of the first publication of the work;
(e) the name, address and nationality of the owner of the copyright as stated in the application;
(f) the language in which the work is to be translated; and
(g) the registration number of the work in the Register of Copyrights, if any.
Rule 34 deals consideration of the application. It reads as under:
(1) The Board shall consider the application after the expiry of not less than one hundred and twenty days from the
date of the publication of the notice in the Official Gazette.
(2) The Board shall give an opportunity to the applicant and also, wherever practicable to any person claiming any
interest in the Copyright of the work, to be heard and may take such evidence in respect of the application, as
it thinks fit.
(3) If more than one application for translation of the work in the same language is pending before the board at the
expiry of one hundred and twenty days after the publication in the Official Gazette of the notice of the
application first received, all such applications shall be considered together.
(4) If the Board is satisfied that the license for a translation of the work in the language applied for may be granted
to the applicant or, if there are more applicants than one to such one of the applicants as, in the opinion of the
Board, would best serve the interests of the general public, it shall grant a license accordingly.
(4) If the Board is satisfied that the license for a translation of the work in the language applied for may be granted
to the applicant or, if there are more applicants than one to such one of the applicants as, in the opinion of the
Board, would best serve the interests of the general public, it shall grant a license accordingly.
(5) Every such license shall be subject to the condition provided in sub-section (4) of Section 32 relating to the
payment of royalties and shall specify-
(a) the period within which the translation shall be produced and published;
(b) the language in which the translation shall be produced and published;
(c) the rate at which royalties in respect of the copies of the translation of the work sold to the public shall be
paid to the owner of the copyright in the work; and
(d) the person or persons to whom such royalties shall be payable.
(6) The grant of every such license shall, as soon as possible, be notified in the Official Gazette and in the
newspapers, if any, in which the notice under Rule 33 was published and a copy of the license shall be sent to
the other parties concerned and posted on the official website of copyright office and the Board.

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research: Provided that where such translation is in a language not in
general use in any developed country, such application may be made after
a period of one year from such publications.6

(2) Every application under this section shall be made in such form as may be
prescribed and shall state the proposed retail price of a copy of the
translation of the work.

(3) Every applicant for a license under this section shall, along with his
application, deposit with the Registrar of Copyrights such fee as may be
prescribed.
Rule 35 deals with manners of determining royalties as under:
The Board shall determine the royalties payable to the owner of the copyright under sub-section (4) of Section 32.
The Board while determining the royalty shall take into consideration the following, namely:
(a) the proposed retail price of a copy of the translation of the work;
(b) the prevailing standards of royalties with regard to translation of works; and
(c) such other matters as may be considered relevant by the Board.
Rule 36 deals with extension of the period of license. It reads as under:
The Board may, on the application of the licensee and after notice to the owner of the copyright, wherever
practicable, if it is satisfied that the licensee was for sufficient reasons unable to produce and publish the
translation within the period specified in the license, extend such period.
Rule 36 deals with cancellation of license. It reads as under:
The Board may, after giving the license an opportunity of being heard, cancel the license on any of the following
grounds, namely:
(a) that the licensee has failed to produce and publish the translation within the time specified in the license or
within the time extended on the application of the licensee;
(b) that the license was obtained by fraud or misrepresentation as to any essential fact; and
(c) that the licensee has contravened any of the terms and conditions of the license.

6 Chapter X of the Rules deals with the license for publication, translation and re-production of work. Rule 38
deals the application for license. It reads as under:(1) An application for a license under sub-section (1A) of
Section 32 and Section 32A to publish or to translate any work in any language or to reproduce any published
work shall be made in Form VII and shall be accompanied by the fee specified in the Second Schedule.
(2) Every such application shall be in respect of one work only and in respect of translation of a work into one
language only.
Rule 39 deals the notice of application. It reads as under:
(1) A copy of such application shall be served by registered post on the owner of copyright.
(2) The Board shall give an opportunity of being to the applicant and also, wherever practicable, to any person
claiming any interest in the copyright of the work, and may take such evidence in respect of the application,
as it may deem fit.
(3) If the Board is satisfied that the license for a translation of the work in the language or for publication or for
reproduction of the work, applied for may be granted to the applicant, or if there are more applicants than one,
to such of the applicants, as in the opinion of the Board, would best serve the interest of the general public, it
shall grant a license within a period of two months.
(4) Every such license shall be subject to the conditions provided in clause (i) of sub-section (4) of Section 32 and
clause (i) of sub-section (4) of Section 32A of the Act relating to payment of royalties and shall specify:
(a) the period within which such work shall be published;
(b) the rate at which royalties in respect of the copies of such work sold to the public shall be paid to the owner
of the copyright in work;
(c) in the case of translation of the work, the language in which the translation shall be produced and published;
and
(d) the person or persons to whom such royalties shall be payable.

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(4) Where an application is made to the Copyright Board under this section, it
may, after holding such inquiry as may be prescribed, grant to the applicant a
license, not being an exclusive license, to produce and publish a translation
of the work in the language mentioned in the application-

(i) subject to the condition that the applicant shall pay to the owner of the
copyright in the work royalties in respect of copies of the translation of
the work sold to the public, calculated at such rate as the Copyright Board
may, in the circumstances of each case, determine in the prescribed
manner; and

(ii) where such license is granted on an application under sub-section (1A),


subject also to the condition that the license shall not extend to the export
of copies of the translation of the work outside India and every copy of
such translation shall contain a notice in the language of such translation
that the copy is available for distribution only in India:

Provided that nothing in clause (ii) shall apply to the export by


Government or any authority under the Government of copies of such
translation in a language other than English, French or Spanish to any
country if-

(1) such copies are sent to citizens of India residing outside India or to any
association of such citizens outside India; or
(5) The grant of every such license shall, as soon as possible, be notified in the Official Gazette and shall be
posted on the website of the Copyright Office and the Board and a copy of the license shall be sent to the other
parties concerned.
Rule 40 deals with manner of determining royalties. It reads as under:
The Board shall determine the royalties payable to the owner of the copyright under clause (i) of the sub-section
(4) of Section 32A of the Act. The Board may while determining the royalty shall take into consideration the
following , namely:-
(a) the proposed retail price of a copy of such work;
(b) the prevailing standards of royalties with regard to such works; and
(c) such other matters as may be considered relevant by the Board.
Rule 41 deals with the extension of the period of license. It reads as under:
The Board may, on the application of the licensee and after notice to the owner of the copyright, wherever
practicable, if it is satisfied that the licensee was for sufficient reasons unable to produce and publish the
translation or for publish or reproduce the work within the period specified in the license, extend such period.
Rule 42 deals with the cancellation of license. It reads as under:
The Board may, after giving the licensee an opportunity of being heard, cancel the license on any of the following,
namely:
(a) that the license has failed to produce and publish such work within the time specified in the license or within
the time extended on the application of the licensee;
(b) that the license was obtained by fraud or misrepresentation as to any essential fact; and
(c) that the licensee has contravened any of the terms and conditions of the license.
Rule 43 deals with the notice for termination of license. It reads as under:
Notice for termination of license under proviso to sub-section (1) or sub-section (2) of Section 32B shall be served
on the person holding the license by the owner of copyright in Form IV of the First Schedule annexed to these
rules.

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(2) such copies are meant to be used for purposes of teaching, scholarship or
research and not for any commercial purpose; and

(3) in either case, the permission for such export has been given by the
Government of that country

Provided further that no license under this section shall be granted,


unless-

(a) a translation of the work in the language mentioned in the application


has not been published by the owner of the copyright in the work or
any person authorized by him, within seven years or three years or one
year, as the case may be, of the first publication of the work, or if a
translation has been so published, it has been out of print;

(b) the applicant has proved to the satisfaction of the Copyright Board
that he had requested and had been denied authorization by the owner
of the copyright to produce and publish such translation, or that he
was, after due diligence on his part, unable to find the owner of the
copyright;

(c) where the applicant was unable to find the owner of the copyright, he
had sent a copy of his request for such authorization by registered air
mail post to the publisher whose name appears from the work, and in
the case of an application for a license under sub-section (1), not less
than two months before such application;

(cc) a period of six months in the case of an application under sub-section


(1A) (not being an application under the proviso thereto), or nine
months in the case of an application under the proviso to that sub-
section, has elapsed from the date of making the request under clause
(b) of this proviso, or where a copy of the request has been sent under
clause (c) of this proviso, from the date of sending of such copy, and
the translation of the work in the language mentioned in the
application has not been published by the owner of the copyright in
the work or any person authorized by him within the said period of six
months or nine months, as the case may be;

(ccc) in the case of any application made under sub-section (1A),-

(i) the name of the author and the title of the particular edition of the
work proposed to be translated are printed on all the copies of the
translation;

(ii) if the work is composed mainly of illustrations, the provisions of


section 32A are also complied with;

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(d) the Copyright Board is satisfied that the applicant is competent to
produce and publish a correct translation of the work and possesses the
means to pay to the owner of the copyright the royalties payable to him
under this section; (e) the author has not withdrawn from circulation
copies of the work; and (f) an opportunity of being heard is given,
wherever practicable, to the owner of the copyright in the work.

(5) Any broadcasting authority may apply to the Copyright Board for a license
to produce and publish the translation of-

(a) a work referred to in sub-section (1A) and published in printed or


analogous forms of reproduction; or

(b) any text incorporated in audio-visual fixations prepared had published


solely for the purpose of systematic instructional activities, for
broadcasting such translation for the purposes of teaching or for the
dissemination of the results of specialized, technical or scientific
research to the experts in any particular field.

(6) The provisions of sub-sections (2) to (4) in so far as they are relatable to an
application under sub-section (1A), shall, with the necessary modifications,
apply to the grant of a license under subsection (5) and such license shall not
also be granted unless-

(a) the translation is made from a work lawfully acquired;

(b) the broadcast is made through the medium of sound and visual
recordings;

(c) such recording has been lawfully and exclusively made for the purpose
of broadcasting in India by the applicant or by any other broadcasting
agency; and

(d) the translation and the broadcasting of such translation are not used for
any commercial purposes.

Explanation.- For the purposes of this section,-

(a) developed country means a country which is not a developing


country;

(b) developing country means a country which is for the time being
regarded as such in conformity with the practice of the General
Assembly of the United Nations;

(c) purposes of research does not include purposes of industrial research,


or purposes of research by bodies corporate (not being bodies corporate

Page 145 of 255


owned or controlled by Government) or other associations or body of
persons for commercial purposes;

(d) purposes of teaching, research or scholarship includes-

(i) purposes of instructional activity at all levels in educational


institutions, including Schools, Colleges, Universities and tutorial
institutions; and

(ii) purposes of all other types of organized educational activity.

Section 32A License to reproduce and publish works for certain purposes.-

(1) Where, after the expiration of the relevant period from the date of the first
publication of an edition of a literary, scientific or artistic work,-

(a) the copies of such edition are not made available in India; or

(b) such copies have not been put on sale in India for a period of six months to
the general public, or in connection with systematic instructional activities at
a price reasonably related to that normally charged in India for comparable
works by the owner of the right of reproduction or by any person authorized
by him in this behalf, any person may apply to the Copyright Board for a
license to reproduce and publish such work in printed or analogous forms of
reproduction at the price at which such edition is sold or a lower price for
the purposes of systematic instructional activities.

(2) Every such application shall be made in such form as may be prescribed and
shall state the proposed retail price of a copy of the work to be reproduced.

(3) Every applicant for a license under this section shall, along with his
application, deposit with the Registrar of Copyrights such fee as may be
prescribed.

(4) Where an application is made to the Copyright Board under this section, it
may, after holding such inquiry as may be prescribed, grant to the applicant a
license, not being an exclusive license, to produce and publish a reproduction of
the work mentioned in the application subject to the conditions that,-

(i) the applicant shall pay to the owner of the copyright in the work royalties in
respect of copies of the reproduction of the work sold to the public, calculated
at such rate as the Copyright Board may, in the circumstances of each case,
determine in the prescribed manner;

(ii) a license granted under this section shall not extend to the export of copies
of the reproduction of the work outside India and every copy of such

Page 146 of 255


reproduction shall contain a notice that the copy is available for distribution
only in India:

Provided that no such license shall be granted unless-

(a) the applicant has proved to the satisfaction of the Copyright Board that he had
requested and had been denied authorization by the owner of the copyright in
the work to reproduce and publish such work or that he was, after due diligence
on his part, unable to find such owner;

(b) where the applicant was unable to find the owner of the copyright, he had sent
a copy of his request for such authorization by registered airmail post to the
publisher whose name appears from the work not less than three months before
the application for the license;

(c) the Copyright Board is satisfied that the applicant is competent to reproduce
and publish an accurate reproduction of the work and possesses the means to
pay to the owner of the copyright the royalties payable to him under this
section;

(d) the applicant undertakes to reproduce and publish the work at such price as
may be fixed by the Copyright Board, being a price reasonably related to the
price normally charged in India for works of the same standard on the same or
similar subjects;

(e) a period of six months in the case of application for the reproduction and
publication of any work of natural science, physical science, mathematics or
technology, or a period of three months in the case of an application for the
reproduction and publication of any other work, has elapsed from the date of
making the request under clause (a), or where a copy of the request has been
sent under clause (b), from the date of sending of a copy, and a reproduction of
the work has not been published by the owner of the copyright in the work or
any person authorized by him within the said period of six months or, three
months, as the case may be;

(f) the name of the author and the title of the particular edition of the work
proposed to be reproduced are printed on all the copies of the reproduction;

(g) the author has not withdrawn from circulation copies of the work; and

(h) an opportunity of being heard is given, wherever practicable, to the owner of


the copyright in the work.

(5) No license to reproduce and publish the translation of a work shall be granted
under this section unless such translation has been published by the owner of
the right of translation or any person authorized by him and the translation is
not in a language in general use in India.

Page 147 of 255


(6) The provisions of this section shall also apply to the reproduction and
publication, or translation into a language in general use in India, of any text
incorporated in audio-visual fixations prepared and published solely for the
purpose of systematic instructional activities.

Explanation.- For the purposes of this section, relevant period, in relation to


any work, means a period of-

(a) seven years from the date of the first publication of that work, where the
application is for the reproduction and publication of any work of, or
relating to, fiction, poetry, drama, music or art;

(b) three years from the date of the first publication of that work, where the
application is for the reproduction and publication of any work of, or
relating to, natural science, physical science, mathematics or technology;
and

(c) five years from the date of the first publication of that work, in any other
case.

Section 32B deals with the termination of licenses issued under this Chapter as under:

(1) If, at any time after the granting of a license to produce and publish the
translation of a work in any language under sub-section (1A) of section 32
(hereafter in this sub-section referred to as the licensed work), the owner of
the copyright in the work or any person authorized by him publishes a
translation of such work in the same language and which is substantially
the same in content at a price reasonably related to the price normally
charged in India for the translation of works of the same standard on the
same or similar subject, the license so granted shall be terminated:
Provided that no such termination shall take effect until after the expiry of
a period of three months from the date of service of a notice in the
prescribed manner on the person holding such license by the owner of the
right of translation intimating the publication of the translation as aforesaid:

Provided further that copies of the licensed work produced and


published by the person holding such license before the termination of the
license takes effect may continue to be sold or distributed until the copies
already produced and published are exhausted.

(2) If, at any time after the granting of a license to produce and publish the
reproduction or translation of any work under section 32A, the owner of
the right of reproduction or any person authorized by him sells or
distributes copies of such work or a translation thereof, as the case may be,
in the same language and which is substantially the same in content at a
price reasonably related to the price normally charged in India for work of

Page 148 of 255


the same standard on the same or similar subject, the license so granted
shall be terminated7:

Provided that no such termination shall take effect until after the
expiry of a period of three months from the date of service of a notice in
the prescribed manner on the person holding the license by the owner of
the right of reproduction intimating the sale or distribution of the copies of
the editions of work as aforesaid:

Provided further that any copies already reproduced by the licensee


before such termination takes effect may continue to be sold or distributed
until the copies already produced are exhausted.

Following cases deal with compulsory license of copyright.


In Pune Video Theaters Association v. Cinemaster 8the Petitioner contended that the
Respondents have fixed exorbitant fees for the exhibition of the cinematographic films
recorded on video tapes. The Copyright Board rejected the plea of the Petitioner and held that
the prerequisites for the operation of Section 31 of the Act were absent in the case. The Board
enumerated the circumstances under which it may exercise the powers under Section 31only
if:
i. the owner of a copyright in any Indian work should have refused to allow
performance in public of that work and by reason of such refusal the work
is withheld from public;
ii. the Board has to satisfy itself that the grounds for such refusal are not
reasonable;
iii. where the Board after such enquiry as it deems fit is satisfied of the above
it may issue a license to the complainant on payment of such
compensation as may be determined by it and subject to such terms and
conditions as it may think fit.9
The Board noted that the respondents were prepared to allow the works being performed by the
Petitioners on payment of the license fee which the petitioners were not willing to do . On the
first requirement, the Board declared that the refusal to allow means refusal to everyone and
such refusal would result in the work not being published or performed. On the issue of
compulsory license, the Board noted as under:

7 Rule 15 Notice for termination of license.-Notice for termination of license under proviso to sub-section (2)
of Section 32B shall be served on the person holding the license by the owner of Copyright in Form IV.

8 MANU/CP/0001/2001 Copyright Board at Delhi. Chairman B. K. Sharma deliverd the order.

9 Id. at Para 4.
Page 149 of 255
The object behind this section is to issue compulsory license to publish, etc. of
a work which the author has refused to republish, etc. and by reason of such
refusal the work has been withheld from public. In other words, the license to
be issued under this section is to allow the licensee to republish or perform the
work in public which is not otherwise available to enable the public to make
use of the work generally and this is required to be done by the owner of the
copyright.10

On the issue relating to fixation of a reasonable license fee for grant of license, the Board noted
that it has no jurisdiction to fix license fee without invoking the power under Section 31.

In Entertainment Network (India) Limited v. Super Cassette Industries


Ltd.11the question before the Copyright Board was whether the Complainant has a right to
approach the Copyright Board for grant of a License. The Board said yes and rejected the
Respondents argument and observed as under:

A plain reading of Section 31 makes it clear that a person gets a right to move
the Copyright Board where in the case of a sound recording the terms are not
such which the Complainant considers reasonable. Reasonability is not here
the test that is usually employed on the Law of Torts or under Article 19 of the
Constitution. The measure is not a reasonable man. Reasonability here is to be
judged solely by the Complainant. If the Complainant subjectively comes to
the conclusion that the terms are not reasonable, he acquires the right to move
the Copyright Board.12

The Copyright Board clarified that the Board is not competent to grant damages or to take any
punitive measures against any infringer but it has undoubted authority to grant the compulsory
license in case the matter is covered by Section 31 of the Copyright Act. There is no provision in

10 Id. at Para 8.

11 MANU/CP/0001/2003 Copyright Board at Delhi. Chairman Brij Kishore Sharma delivered


the order.

12 Id. at Para 42.


Page 150 of 255
the Copyright Act which debars the Board from considering a complaint under Section 31 during
the pendency of an infringement proceeding in a Court of Law.

In Bennett Coleman and Co. Ltd. v. Phonographic Performance Ltd. 13 Plaintiff


instituted the suit claiming that the Defendant was not entitled to withhold permission to play
such music and as such they were entitled to have declaration in terms of Section 60. Respondent
contended the maintainability of the suit under Section 60 of the Act. Rejecting this contention
the Court held that it has no expertise to fix the particular rate of royalty and this is within the
domain of the Copyright Board under Section 31. The Court observed as under:

It is true that both the proceedings under Section 31 as well as under Section
60 emanated from a single cause of action. It would be difficult for the
Court at this stage to opine that two parallel proceedings were not
maintainable at the same time. Neither the Copyright Board is empowered to
give a true purport and meaning of the said agreement between the parties nor
this Court is competent to decide the rate under Section 31.14

The Court also discussed the true purport of Section 31 as under:

Section 31 relates to the competence and power of the Copyright Board to fix
a particular rate of royalty. Once the Copyright Board although as and by way
of interim measure fixed a particular rate the Court cannot ignore the same
without having any expertise to find out whether such rate was adequate or
not.15

13 MANU/WB/0093/2004, Calcutta High Court. Justice Ashim Kumar Banerjee delivered the judgment. Similar
observation was made by Delhi High Court in Phonographic Performance Ltd. v. HT Media Ltd.
MANU/DE/6369/2012 (SB). Justice Manmohan Singh delivered the judgment.

14 Id. at Para 16.

15 Id. at Para 17.


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In Phonographic Performance Ltd. v. Music Broadcast (P) Ltd. 16 the question was
whether a complaint is maintainable in relation to grant of license for broadcasting a sound
recording which has not been withheld from the public. The Court said yes and discussed the
meaning of publication as under:

[P]ublication means making copies of the work available or communication of


the work to the public. Perusal of the above quoted provision of Section 31
further shows that so far as Clause (a) of Sub-section (1) of Section 31 is
concerned, it comes into play if the person holds a copyright in the work
refuses to republish or allow the republication of the work or has refused to
allow the performance of the work in public and the result of such refusal is
that the work is withheld from the public. It means that if the Indian work is
already published and if the copyright holder republishes it or allow
somebody else to republish it, then a complaint under Section 31 cannot be
made. The phrase used by Clause (a) of Sub-section (1) of Section 31 is
publication. Perusal of the definition of the term publication quoted above
shows that communication of the work to the public is part of publication.
Thus, after dealing with publication of the work in Clause Ca) of Sub-section
(1) of Section 31, clause deals with the narrower field namely communication
to the public. It lays down that if the copyright holder has refused to allow
communication to the public of such work by broadcast, then Clause (b) of
Sub-section (1) of Section 31 comes into play. Thus legislature by Clause (b)
of Sub-section (1) of Section 31 is dealing with communication to the public
which is a narrower concept than publication.17

The Court discussed the meaning of communication to the public as under:

[T]he term communication to the public shows that making any work
available so that the work is seen or heard by the public by means of display
or diffusion amount to communication to the public. In other words,
broadcasting of a work is communication to the public. But the phrase
communication to the public covers other means of communication than
broadcast. Perusal of Section 31(1)(b) quoted above shows that to begin with,
it deals with, a narrower concept than publication namely the communication
to the public, but ultimately it deals with just one of the modes of
communication to the public namely broadcast. In other words, Clause (b) of
Sub-section (1) of Section 31 deals with extremely narrow field than the field
which is covered by Clause (a) of Sub-section (1) of Section 31. It is pertinent
to note here that if Clause (b) of Sub-section (1) of Section 31 was not
separately enacted then communication to the public by broadcast would also
16 2004 (29) PTC 282 (SB) Bombay High Court. Justice Deshmukh delivered the judgment.

17 Id. at Para 7, Page 294.


Page 152 of 255
be covered by Clause (a), because Clause (a) of Sub-section 1 of Section 31
deals with publication of the work and the term publication of work
includes communication to the public and communication to the public
includes the concept of communication by broadcast. It is, thus, clear that
really speaking Clause (b) of Sub-section (1) of Section 31 is in the nature of
proviso or exception to Clause (a) of Sub-section (1) of Section 31. The
purpose of enacting Clause (b) of Sub-section (1) of Section 31 was to take
out the field of broadcast from Clause (a) and to deal with that field
separately. Different treatment that has been given by the Legislature to the
field of broadcast is that refusal of the holder of the copyright to rebroadcast
the work or allow the rebroadcast of the work need not result in withholding
the work from public. In other words, even if the copyright holder in a work
himself rebroadcasts the work or is allowing others to broadcast the work, still
a complaint can be made. The Legislature has made its intention of dealing
with the mode of communication namely broadcast differently and therefore,
in our opinion, as the words of the provisions are clear there is no question of
importing the concept of the refusal resulting in withholding of the work from
the public into the field of broadcast also, as the intention of the Legislature in
that regard is absolutely clear. Perusal of provisions of Sub-section (1) of
Section 31 further shows that the complainant in relation to cases covered by
both Clauses (a) and (b) of Sub-section 1 of Section 31 is required to first
approach the holder of the copyright for permission to republish or
rebroadcast the work and offer terms which he considers reasonable and if the
permission is refused by the copyright holder, he can approach the Copyright
Board. The Copyright Board then holds an inquiry to find out whether the
grounds on which the copyright holder has refused permission are reasonable
or not and if the Copyright Board finds that the reasons for refusal given by
the copyright holder are not reasonable, then, it can decide to grant a license
to the complainant.18

The Court explained the legal provisions relating to broadcast for the purpose of grant
of compulsory license as under:

[T]he rights of a copyright holder in a sound recording includes the right to


make the work available to the public by other modes of communication as
also by broadcast. What has been done by Sub-section (1) of Section 31 is the
rights of copyright holder in the sound recording to republish the work by
broadcasting is treated differently and the right of the copyright holder in the
sound recording to republish the work by other modes than broadcasting, has
been dealt with separately and distinctly. Thus, separate provision has been
made by the Legislature dealing with two kinds of rights of the same person
namely the copyright holder. It is not that a different person is holding a right
18 Id. at Para 7, Page 295.
Page 153 of 255
to broadcast a sound recording and another person is holding right to
republish the work. Same person holds two rights, right to republish the work
and right to broadcast the work. Right to republish the work is dealt with by
the Legislature separately from the right to broadcast the work. In opinion,
therefore by Section 31 the Legislature has treated one mode of
communication namely broadcast distinctly and it has been treated as a class
by itself from other modes of communication. In our opinion, therefore, the
Respondent is not right in submitting that because it had granted license in
favour of All India Radio, the work was not withheld from the public and
therefore the Copyright Board did not have the jurisdiction to entertain
complaints from the complainants for grant of compulsory license.19

The Court noted that the in order to make the scheme contained in Section 31 workable,
operation of sub-section (2) of Section 31 will have to be restricted to the cases covered by
Clause (a) of Sub-section 1 of Section 31 of the Act. The Court elaborated the point as under:

[T]he provisions of sub-section 2 of Section 31 is to give power to the Board


to choose one or more amongst the complainants even amongst the persons
who have applied for license for broadcast would militate against the very
principles incorporated in Clause (b) of Sub-section 1 of Section 31, because
to our mind the idea underlining Clause (b) of Sub-section 1 of Section 31 is
to grant license to everybody to broadcast the work if the complainant is
willing to offer reasonable terms. There is no question of the principle
choosing one or two persons amongst the complainants who have applied for
compulsory license to broadcast once the Copyright Board finds that the terms
offered were reasonable and that the complainant is willing to pay the
compensation determined by the Copyright Board and it is also willing to
abide by other terms and conditions which have been imposed.20

On the power of the Copyright Board to make any best judgment assessment of the amount of
compensation, the Court found that the Copyright Board acts as a quasi-judicial authority while
considering a complaint under Section 31 and therefore, it will have to base its decision on the
material that is produced before it. The Copyright Board cannot base its decision an anything
except the material that is produced before it.

19 Id. at Para 9, Page 297.

20 Id. at Para 9, Page 298.


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In Super Cassette Industries Ltd. v. Entertainment Network (India) Ltd. 21the
Respondent submitted that every complainant made under Section 31 has to be granted license.
The Court said no and held that license can be refused on valid grounds. The Court noted as
under:

When the licenses have already been granted to other broadcasters, who have
substantial presence, then perhaps the application for grant of compulsory
license will be treated differently, than in a situation where the artistic work
has been totally withheld from the public. The legislature in its wisdom has
used the expression may in Section 31(1). According to Section 31 it is not
imperative for the Board to grant license to each and every complainant. In
our considered view the license can be granted or denied on valid grounds.
Section 31 itself envisages that the decision to grant or refuse a license should
be made after holding such inquiry as it may deem necessary. While granting
compulsory licenses the Board must take into consideration whether the work
has been totally withheld from public or licenses have been granted to other
broadcasters and to what extent public interest is served.22
The Court also observed that the Copyright Board must take into consideration the following
parameters while deciding application for compulsory license:

(i) The work in question should have been published or performed in public;

(ii) The owner of the copyright/sound recordings should have refused to


republish or allowed republication or the performance in public of the work
by the reasons of which the work is with the public;

(iii) The owner of the copyright has refused to allow communication by a


broadcaster of such work on terms which the Board must consider
reasonable.23

In Entertainment Network (India) Ltd. v. Super Cassette Industries Ltd. 24 the


Bombay High Court opined that in terms of Section 31 of the Act, grant of compulsory license
on reasonable remuneration was permissible but the Delhi High Court held otherwise. The issue
before the Supreme Court was the interpretation of Section 31 and the Court explained the
requirements of Section 31 as under:

21 MANU/DE/0530/2004(DB). Justice Dalveer Bhandari delivered the judgment.

22 Id. at Para 84.1.

23 Id. at Para 84.7.

24 2008 (37) PTC 353 (SC). Supreme Court (DB) Justice S.B.Sinha delivered the judgment.
Page 155 of 255
(a) The subject work must be an Indian work whose term of copyright is
subsisting;

(b) The Indian work must be one that has been published or performed in
public;

(c) The owner of the copyright in the work must have

(i) refused to republish or allow republication of the work or have refused


to allow the performance of the work and by reason of such refusal the
work is withheld from the public; or

(ii) refused to allow communication to the public by broadcast, of such


work or in the case of a sound recording the work recorded in such
sound recording, on terms which the complainant considers reasonable;
and

(d) The Copyright Board is satisfied that the grounds for refusal are not
reasonable.25

The Court explained the provisions of Section 31(1)(b) as under:

Section 31(1)(b) in fact does not create an entitlement in favour of an


individual broadcaster. The right is to approach the Board when it considers
that the terms of offer for grant of license are unreasonable. It, no doubt,
provides for a mechanism but the mechanism is for the purpose of
determination of his right. When a claim is made in terms of the provisions of
a statute, the same has to be determined. All cases may not involve narrow
commercial interest. For the purpose of interpretation of a statute, the court
must take into consideration all situations including the interest of the person
who intends to have a license for replay of the sound recording in respect
whereof another person has a copyright. It, however, would not mean that all
and sundry can file applications. The mechanism to be adopted by the Board
for determining the right of a complainant has been provided under the Act.26

The Court explained the provisions of Section 31(2) as under:

25 Id. at Page 385.

26 Id. at Page 387.


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It is attracted in a case where there are more than one applicants. The question
of considering the respective claim of the parties would arise if they tread the
same ground. The same, however, would not mean that only one person is
entitled to have a license for all time to come or for an indefinite term even in
perpetuity. A license may be granted for a limited period; if that be so another
person can make such an application. Sub-section (2) of Section 31 would
lead to an anomalous position if it is read literally. It would defeat the purport
and object of the Act. It has, therefore, purposive construction may be resorted
to.27

The Court held that that Section 31(2) refers to case falling under clause (a) of Sub-section (1)
of Section 31 and not clause (b) thereof.

In Phonographic Performance Ltd. v. Radio Mid Day (West) India Ltd.28the


question was whether an appeal against an interlocutory order passed by the Copyright Board on
a procedural matter can lie before the High Court or not. The Court said no and observed as
under:

The jurisdiction of the Copyright Board can be invoked under Section 31(1)
(b) of the Copyright Act by a complainant who considers that the owner of a
copyright has offered unreasonable terms for the broadcast of a sound
recording. When that happens, the Copyright Board is required to give the
copyright owner a reasonable opportunity of being heard before directing the
complainant to pay compensation to him (and determining other terms and
conditions) for the broadcast. As a part of the reasonable opportunity of
being heard the Copyright Board may hold such inquiry as it deems
necessary.29
The question is: what is the nature of inquiry contemplated? It appears that the
inquiry postulated is quasi-judicial and quasi-adversarial in nature . . .
Copyright Board is not a Court nor is it a Tribunal. Two facts are significant in
this regard and they are that the Copyright Board does not have the powers of

27 Id. at Page 390.

28 2010(43) PTC 377(Del)(DB). Acting Chief Justice Madan B. Lokur delivered the judgment.

29 Id. at Para 31, Page 387.


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a civil court to summon and enforce attendance of a witness or to require the
discovery or production of a document, nor does it pass a decree (it only
passes a final decision). Therefore, when the Copyright Board conducts an
inquiry it does so with very limited powers.30
[I]t is quite clear that an inquiry by the Copyright Board entails a decision,
rather than an adversarial adjudication. In arriving at its decision the
Copyright Board need not necessarily examine a witness. It may take a
decision on affidavits, depending upon the requirements of the matter in hand.
Only if it is necessary to cross examine the deponent of an affidavit (as an
exception rather than as a rule) the Copyright Board may require the
attendance of such a person and then permit cross examination. If the
deponent does not enter the witness box, then his affidavit may be
disregarded. It is also quite clear that an inquiry by the Copyright Board is not
a trial resulting in a decree, nor does the Board have the trappings of a Court
or even a Tribunal. The proceedings before the Copyright Board, therefore,
cannot be converted into a trial or transformed into a formal adjudicatory
process through some indirect process.31

In Music Choice India Private Limited v. Phonographic Performance


Limited32the Appellant-Plaintiff contended that it has a vested or statutory right for a
compulsory license and the Trial Court had jurisdiction to try the suit in the nature of compulsory
license. The Court said no and explained the jurisdiction of the Copyright Board as under:

The contentions that the Defendant has been dictating terms or it cannot be
allowed to dictate the terms and therefore, the law must step in to the rescue

30 Id. at Para 32, Page 387.

31 Id. at Para 37, Page 389.

32 2010 (44) PTC 171(Bom) (DB), Bombay High Court. Justice B.H. Marlapalle delivered the
judgment.
Page 158 of 255
of the Plaintiff cannot be a ground to entertain the suit and the only remedy
available to the Plaintiff as per the scheme of the Act is to prosecute its
application pending before the Board for a compulsory license. It cannot file a
suit for any interim arrangements pending in such an application and the Civil
Court will have no jurisdiction to entertain such applications. Seeking such a
remedy is to bypass regulatory provisions as well as the penal provisions as
are set out in Chapter XI and XIII of the Act and the Civil Court cannot have
such a jurisdiction to grant something which would frustrate the provisions of
a statute. The observations made by the Apex Court in the case of
Entertainment Network (India) Limited cannot be read as to create a
vested right in favour of the Plaintiff or similarly placed the
Applicant/Complainant to claim an interim compulsory license by filing a suit
before the Civil Court. What is not provided by a Statute which is a complete
code of itself, cannot be read in the judgment of the Supreme Court. The
jurisdiction of the Civil Court cannot be allowed to be invoked to short circuit
the statutory process of licensing and therefore, the Court would lack in its
jurisdiction to entertain the suit.33

In Super Cassettes Industries Ltd. v. Music Broadcast Pvt. Ltd. 34the question was
whether the Copyright Board under clause (b) of sub-section (1) of Section 31 can pass an
interim order in the pending complaint. The Court said no and observed under:

[B]y conceding a power to grant ad hoc compulsory license during the


pendency of the proceeding, under Section 31, would not only render the final
inquiry into the question, a futile exercise in a case where the owner has
reasons other than inadequacy of monetory compensation. The power under
Section 31 to grant a compulsory license meant for avoiding the withholding
of the republication or refuse to allow the performance in pubic of some
work - is, essentially, for the benefit of the public. Commercial benefit to
publisher is incidental. Unless, it is demonstrated that failure to imply such
power to direct immediate republication or performance of a work in public
would be detrimental to public interest, the power to grant ad hoc compulsory
license, cannot be implied.35

In the following part an attempt has been made to explain the law relating to statutory licenses.

33 Id. at Page 183.

34AIR 2012 SC 2144 (FB) Supreme Court of India. Justice Jasti Chelameswar delivered the
judgment.

35 Id. at Para 58, Page 2160.


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Part III
Statutory Copyright License

Statutory license is different from compulsory license. In case of the latter refusal by the owner
of the copyright owner is the sine quo non for grant. In the case of former refusal is not a
condition precedent. Former is limited to cover version of sound records and broadcast. The
latter covers all works. Latter is granted by the Copyright Board, the former is not granted by
anyone but can be simply acquired as per the provisions of the Act. There are two types of
statutory license. One, statutory license for cover versions. Two, statutory license for
broadcasting of literary and musical works and sound recording. Following deals with these
statutory licenses.

Section 31C deals with the statutory license for cover versions. It reads as under:

(1) Any person desirous of making a cover version, being a sound recording in
respect of any literary, dramatic or musical work, where sound recordings
of that work have been made by or with the license or consent of the owner
of the right in the work, may do so subject to the provisions of this Section:

Provided that such sound recordings shall be in the same medium as the last
recording, unless the medium of the last recording is no longer in current
commercial use.

(2) The person making the sound recordings shall give prior notice of his
intention to make the sound recordings in the manner as may be prescribed,
and provide in advance copies of all covers or labels with which the sound
recordings are to be sold, and pay in advance, to the owner of rights in each
work royalties in respect of all copies to be made by him, at the rate fixed
by the Copyright Board in this behalf.36

36 Chapter VII of the Rules deals with the statutory license for cover versions. Rule 23 deals with the notice for
making Cover Version. It reads as under:(1) Any person intending to make a cover version, being a sound
recording in respect of any literary, dramatic or musical work under sub-section (1) of Section 31C shall give a
notice of such intention to the owner of the copyright in such works and to the Registrar of Copyright at least
fifteen days in advance of making the cover version and shall pay to the owner of the copyright in the original
literary, dramatic and musical works. Along with the notice, the amount of royalties due in respect of a minimum
of fifty thousand copies and if the number is more, for all the copies of cover version to be made, at the rates
determined by the Board in this regard under Rule 27 and provide copies of all covers and labels with which the

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Provided that such sound recordings shall not be sold or issued in any
form of packaging or with any cover or label which is likely to mislead or
confuse the public as to their identity, and in particular shall not contain the
name or depict in any way any performer of an earlier sound recording of
the same work or any cinematograph film in which such sound recording
was incorporated and, further, shall state on the cover that it is a cover
version made under this section.

(3) The person making such sound recordings shall not make any alteration in
the literary or musical work which has not been made previously by or with

cover version is to be sold.


Provided that in respect of works in a particular language or dialect for which the Board by general order has
fixed a lower minimum as per proviso to sub-section (4) of Section 31C, the applicant shall pay the royalty for
the lower minimum fixed by the Board and if the number is more, for all the copies of the cover version.
Provided further that any person intending to make a cover version shall give a notice under this chapter
only after the royalty to be paid is determined by the Board under Rule 27 and published in the Official Gazette
and in the website of the Copyright office and the Board.
Explanation: For the purpose of this Rule Cover Version means a sound recording made in accordance
with Section 31C and this rule.
(2) Such notice shall contain the following information, namely:-
(a) the particular of the work in respect of which cover version is to be made;
(b) alterations, if any, which are proposed to be made for the adaptation of the work to the cover version and
evidence of consent of the author of work, if required, for making such alteration;
(c) the name, address and nationality of the owner of the copyright in the work;
(d) particulars of the sound recording made previously of the work;
(e) the total number of copies of the cover version and the calendar year in which it is proposed to be made;
(f) the medium in which the sound recording was last made and the cover version is proposed to be made;
(g) the price at which the cover version is proposed to be sold; and
(h) the details of the advanced payment of royalties paid as determined by the Board in this regard under Rule
27.
Rule 24 deals with the conditions to be followed while making cover version. It reads as under:
(1) While making the cover version the producer shall maintain the integrity of the original literary, dramatic or
musical works, except to the extent as may be technically necessary for the purpose of making the cover version.
(2) The cover version shall not be issued in any form of packaging or with any cover or label including any label
or carton or inlay card or website having design or colour scheme or layout or getup similar to that of the original
sound recording which is likely to mislead or confuse the public as to the identity of the original sound
recording.
(3) The cover version shall not use the label of the original sound recording and shall state in bold letters on the
cover that it is a cover version made under Section 31C.
(4) the cover version shall prominently display the names of performers and shall not contain the name or depict in
any way performer of an earlier sound recording of the same work or any cinematograph film in which such
sound recording was incorporated.
Rule 25 deals with the notice for making additional copies of Cover Version. It follows as under:
A person who made cover version under a license granted under Section 31C after giving notice and intends to
make additional copies during the period for which he gave notice for making cover version under Section 31C or
desiring to continue with the making of cover version shall give fresh advance notice under Rule 23 and comply
with all the conditions including the payment of advance royalties determined by the Board in this regard under
Rule 27.
Rule 26 deals with the maintaining of records. It reads as under:
(1) The person making cover version shall maintain at its principal place of business a register containing the
details of total number of copies made, sold and number of copies remaining in stock, except in the case of
sale by on-line downloads.

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the consent of the owner of rights, or which is not technically necessary for
the purpose of making the sound recordings:

Provided that such sound recordings shall not be made until the
expiration of five calendar years after the end of the year in which the first
sound recordings of the work was made.

(4) One royalty in respect of such sound recordings shall be paid for a
minimum of fifty thousand copies of each wade during each calendar year
in which copies of it are made:

(2) The person making such cover version shall maintain separate books of accounts containing particulars about
the total expenditure in making cover version under different heads of expenditure along with total income
derived from the sale of number of copies of such cover version.
(3) The records, registers and books of accounts kept at the principal place of business of the person making
cover version shall be open for inspection to the owner of rights or his duly authorised agent or representative
on his behalf during the business hours with prior permission of the person making such cover version and, if
needed, they may obtain copies of relevant extracts at their own cost.
Rule 27 deals with the manner of determining royalties as under:
(1) The Board shall immediately after its constitution either suo motu or on receipt of a request from any
interested person give public notice of its intension to fix royalties for making cover version under Section 31C
and may invite suggestions for determining the same.
(2) The notice under sub-section (1) shall be published by the Board in the Official Gazette and the same to be re-
published in two daily news papers having circulation in the major part of the country and shall post the same
on the website of the Copyright Office and the Board.
(3) Any owner of copyright or any person involved in the business of making cover version or any other
interested person may within thirty days from the date of publication of public notice under sub-section (1) may
give suggestions with adequate evidence as to the rate of royalties to be fixed including different works,
languages, media and the Board.
(4) The Board shall, after giving an opportunity of being heard to the persons who made relevant suggestions
under sub-rule (3), consider such suggestions, as it deems fit.
(5) The Board shall within a period of two months from the last date of receipt of the suggestions, determine the
royalties payable to the owner of the copyright under sub-section (2) of Section 31C. The Board while
determining the royalty shall take into consideration the following factors, namely:
(a) the retail price of the earlier sound recording;
(b) the prevailing standards of royalties with regard to literary, dramatic or musical work for making such
recording;
(c) the nature and class of the work, language, format and medium in which it is to be sold; and
(d) such other matters as may be considered relevant by the Board.
(6) The Board may revise the rates of royalties periodically, at least once in a year, keeping in view of the
provision of this rule.
Rule 28 deals with the complaint in respect of non-payment of royalties. It reads as under:
(1) The owner of a copyright in any literary, dramatic or musical works included in original sound recording may
make a complaint to the Board in case of non-payment of royalty in full, as determined by the Board, in
respect of the cover version purported to be made.
(2) If the Board is prima facie satisfied as to the genuineness of the complaint, it may pass an interim order
directing the person making the cover version to cease from making further copies.
(3) The Board may, after holding such enquiry as it considers necessary and after giving an opportunity of being
heard to the owner of rights in any literary, dramatic or musical works included in original sound recording,
make such further order, as it deems fit, including an order for payment of royalty.

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Provided that the Copyright Board may, by general order, fix a lower
minimum in respect of walks in a particular language or dialect having
regard to the potential circulation of such walks.

(5) The person making such sound recordings shall maintain such registers
and books of account in respect thereof, including full details of existing
stock as may be prescribed and shall allow the owner of rights or his duly
authorized agent or representative to inspect all records and books of
account relating to such sound recording:

Provided that if on a complaint brought before the Copyright Board to


the effect that the owner of rights has not been paid in full for any sound
recordings purporting to be made in pursuance of this section, the
Copyright Board is, prima facie, satisfied that the complaint is genuine,
it may pass an order ex parte directing the person making the sound
recording to cease from making further copies and, after holding such
inquiry as it considers necessary, make such further order as it may deem
fit, including an order for payment of royalty.

Explanation. - For the purposes of this Section cover version means


a sound recording made in accordance with this Section.

Following cases deal with statutory license.

In Star India Pvt. Ltd. v. Piyush Agarwal37 distinguishing between use of the exact
clips of original audio and/or visual recording and its use only for information, the Court
discussed the concept of version recording (or cover version as it is now called) as under:

The copyright in a sound recording is in addition to the copyright in the


underlying musical and literary work which are themselves also subjects of a
copyright. A sound recording includes a subsequent original sound recording
made from the musical and literary work and which is called a version
recording i.e. a sound recording made after a first sound recording is made by
use of the musical work and literary work/lyrics. The principles qua version
recording (now called cover version) were contained in Section 52(1)(j) of
the unamended Act38 which has now been deleted, and the equivalent
provision of which is now Section 31C of the present Act.39

37 MANU/DE/5535/2012 (SB) Delhi High Court. Justice Valmiki J. Mehta delivered the
judgment.

38 Repealed by the Copyright (Amendment) Act 2012. (Act No. 27 of 2012).


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In Mars Recording Private Limited v. Saregama India Limited40 the question was
whether the Appellant was entitled to make a sound recording notwithstanding the refusal of
consent by the Respondent. The Court said yes. As the Appellant-Plaintiff has issued a notice of
intention of making sound recordings, as contemplated under Section 52(1)(j)(ii) of the Act on
June 2006, the Court noted that the reference to a statutory license was not to be found in the
Act prior to its amendment in 2012. The Court also noted that the variation of the procedure to
secure license to make a sound recording as is contemplated under Section 52(1)(j)(ii) and the
procedure to obtain statutory license for cover versions under Section 31C as under:

In so far as a compulsory license is concerned, provision is made as to the


manner in which an application is made to the Copyright Board and dealt
with. Section 52(1)(j) on the other hand, does not require an application to be
made for obtaining a license from the Copyright Board or for consent from the
owner of the Copyright in the work which has been authorized for being used
in making an existing sound recording. This may be viewed from another
perspective. Section 30 which contemplates a voluntary license was adequate
protection for the owner of a copyright if the prior consent of the owner was
always necessary. There was then no necessity to have enacted Section 52(1)
(j). It is also significant that there are no provisions or procedure prescribed to
obtain a compulsory license to make a new sound recording. If such a license
was required there was no need to incorporate Section 52.41

Following deals with statutory license for broadcasting of literary and musical works and sound
recording in the light of Section 31D which reads as under:

(1) Any broadcasting organization desirous of communicating to the public by


way of a broadcast or by way of performance of a literary or musical work
and sound recording which has already been published may do so subject
to the provisions of this section.42
39 Id. at Para 13(ii).

40 MANU/KA/0151/2015 (SB) Karnataka High Court. Justice Anand Byrareddy delivered the
judgment.

41 Id. at Para 8.

42 Chapter VIII of the Rules deals with the statutory license for Broadcasting of literary and musical works and
sound recording. Rule 29 deals with the notice to owner for communication to the public of literary and musical
works and sound recording
(1) Any broadcasting organisation desirous of communicating to the public by way of a broadcast or by way of
performance of a published literary or musical work and sound recording under sub-section (1) of Section 31D
shall give a notice of its intention to the owner of the copyright and to the Registrar of Copyrights before a

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(2) The broadcasting organization shall give prior notice, in such manner as
may he prescribed, of its intention to broadcast the work stating the
duration and territorial coverage of the broadcast, and shall pay to the
owner of rights in each work royalties in the manner and at the rate fixed
by the Copyright Board.

(3) The rates of royalty for radio broadcasting shall he different from
television broadcasting and the Copyright Board shall fix separate rates for
radio broadcasting and television broadcasting.

period of five days in advance of such communication to the public and shall pay to the owner of the copyright,
in the literary or musical work or sound recording or nay combination thereof, the amount of royalties due at
the rate fixed by the Board in this regard:
Provided that in case of communication to the public by way of broadcast or by way of performance of a
newly published literary or musical work or sound recording or any combination thereof, which has been
published within the said period of five days of such communication and which do not form part of the
scheduled programmes, the notice shall, be given before such communication to the public:
Provided further that in case of communication to the public by way of broadcast or by way of performance
of any published literary or musical work and sound recording or any combination thereof, in unforeseen
circumstances, the notice shall, be given within twenty-four hours of such communication to the public.
Provided also that any broadcasting organisation shall give a notice under this Chapter only after the royalty
to be paid is determining by the Board under Rule 31 and published in the Official Gazette and in the website of
the Copyright Office and the Board.
(2) Every such notice shall be in respect of works belonging to one owner only.
(3) Separate notices shall be given for communication to public by way of radio broadcasting or television
broadcast or by way of performance of a literary or musical work and sound recording which has already been
published.
(4) The notice under sub-rule (1) shall contain the following particulars, namely:
(a) Name of the channel;
(b) Territorial coverage where communication to public by way of radio broadcast, television broadcast or
performance under sub-rule (3) is to be made;
(c) Details necessary to identity the work which is proposed to be communicated to the public by way of radio
broadcast, television broadcast or performance under sub0rule (3);
(d) Year of publication of such work, if any;
(e) Name, address and nationality of the owner of the copyright in such works;
(f) Names of authors and principal performers of such works;
(g) alterations, if any, which are proposed to be made for the communication to works, reasons thereof, and the
evidence of consent of the owners of rights, if required for making such alteration;
(h) Mode of the proposed communication to public, i.e., radio, television or performance;
(i) Name, if any, of the programme in which the works are to be included;
(j) Details of time slots, duration and period of the programme in which the works are to be included;
(k )Details of the payment of royalties at the rates fixed by the Board; and
(l) Address of the place where the records and books of accounts are to be maintained for inspection by the owner of
rights.
Rule 30 deals with maintaining of records as under:
(1) Records containing the details of the owners in respect of total number of works broadcast, the details of such
works and the time slot, duration and period of the broadcast shall be maintained by the broadcasting
organisation at its principal place of business and shall be open to inspection on prior notice by the owner of
rights or his duly authorised agent or representative in the works during business hours and may obtain copies of
relevant extracts from such records at their cost. The broadcasting organisation shall maintain separate records
for radio broadcasting and television broadcasting.
(2) The broadcasting organisation shall maintain separate books of accounts for communication to public by way of
broadcast containing such details as may be determined by the Board at the time of fixing the rate of royalty and

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(4) In fixing the manner and the rate of royalty under sub-section (2), the
Copyright Board may require the broadcasting organization to pay an
advance to the owners of rights.

(5) The names of the authors and the principal performers of the work shall,
except in case of the broadcasting organization communicating such work
by way of performance, he announced with the broadcast.

(6) No fresh alteration to any literary or musical work, which is not


technically necessary for the purpose of broadcasting, other than shortening
the work for convenience of broadcast, shall he made without the consent
of the owners of rights.

(7) The broadcasting organization shall-

render to the owners of rights such reports and accounts.


Rule 31 deals with manner of determining royalties. It reads as under:
(1) The board shall immediately after its constitution either suo motu or on receipt of a request from any
interested person, give public notice of its intension to fix royalties for communication to the public of literary or
musical work and sound recording under Section 31D and may invite suggestions for determining the same.
Such notice shall be given separately for radio and television broadcasting.
(2) The notice under sub-rule (1) shall be published by the Board in the Official Gazette and shall be re-published in
two daily news paper having circulation in the major part of the country and shall be posted on the website of the
Copyright Office and the Broad.
(3) Any owner of copyright or any broadcasting organisation or any other interested person may within thirty days
from the date of publication of public notice under sub-rule (1) shall give suggestions with adequate evidence as
to the rate of royalties to be fixed including different rates for different works and different formats.
(4) The Board shall after giving an opportunity being heard to the persons who made relevant suggestions under
sub-rule (3), consider such suggestions, as it deems fit.
(5) The Board shall within a period of two months from the last date of receipt of suggestions, determine separate
rates of royalty to be paid to the owners of literary or musical work and sound recording for radio and
television broadcasting respectively.
(6) The Board shall determine the royalties payable to the owner of the copyright under sub-section (2) of Section
31D for radio and television broadcast separately.
(7) The Board while determining the royalty shall take into consideration the following factors, namely:
(a) time slot in which the broadcast takes place and different rates for different time slot including repeat broadcast;
(b) different rates for different class of works;
(c) different rates for different nature of use of work;
(d) the prevailing standards of royalties with regards to such works;
(e) the terms and conditions included in the Grant of Permission Agreement (GOPA) between Ministry of
Information and Broadcasting and the broadcast for Operating Frequency Modulation (FM) Radio Broadcasting
Service; and
(f) such other matters as may be considered relevant by the Board.
(8) The Board while determining the payment under sub-rule (5) shall take into consideration, the following factors,
namely:
(a) works included in the schedule programmes;
(b) works newly published and not included in the scheduled programme;
(c) works communicated to the public on unexpected circumstances; and
(d) use of works in excess of the duration, different time slot or territorial coverage than mentioned in the
notice.
(9) The Broad may revise the rates of royalties periodically, at least once in a year keeping in view of provisions of
these rules.

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(a) maintain such records and books of account, and render to the owners
of rights such reports and accounts; and

(b) allow the owner of rights or his duly authorized agent or representative
to inspect all records and books of account relating to such broadcast, in
such manner as may he prescribed.

(8) Nothing in this section shall affect the operation of any license issued or
any agreement entered into before the commencement of the Copyright
(Amendment) Act, 2012.
In South Indian Music Companies Association v. Union of India 43the Petitioner
challenged inter alia, the constitutionality of the provisions of Section 31D as violative of
Article 19(1)(g) of the Constitution of India, as it provides for the royalties to be fixed for
radio broadcasting by the Board directly. The Court rejected the contention of the Petitioner
and declared Section 31D as constitutionally valid. The Court observed as under:

[W]hen a challenge is made to Section 31D, being violative of Article 19(1)


(g), it has to be demonstrated with clarity that the restrictions are not
reasonable. Such a right is subject to implied limitations made explicit by
Article 19(2) to 19(6) of the Constitution.

Section 31 and 31D provides for a mechanism to deal with the public interest
vis--vis the private interest. It has been introduced by way of a public policy.
It has got an in-built mechanism to take care of the interest of the owner.
Guidelines have been provided for the purpose of fixing royalty under Rule
31(7) and (8). The owner would be given reasonable opportunity of being
heard. There has to be satisfaction that the refusal is not reasonable. Section
31D was introduced taking note of Article 11(2) and 13 of Berne Convention
and Article 15(2) of the Rome Convention (for sound recordings) and Article
9(1) of the TRIPS Agreement. It was meant to support the development and
growth of private radio broadcasting. The object is also to strike at the
monopoly to the detriment of the general public. While doing so, the
provisions also take care of the interest of the owner.44

43 MANU/TN/0447/2016 (DB) Madras High Court. Justice M.M. Sundresh delivered the
judgment. The same issue was raised also in Super Cassettes Industries Ltd. v. Union
of India MANU/DE/2228/2015 (DB) Delhi High Court. Chief Justice G. Rohini delivered the
judgment.

44 Id. at Para 25.


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Following deals with the law relating to copyright societies.

Part IV
Copyright Societies

Copyright Societies are also known as Collecting Societies for they collect license fee from the
licensees. Copyright Societies are formed primarily for better and efficient exploitation and
administration of the copyright. An individual copyright owner may not have the capacity or the
bargaining power to fully reap the benefits of copyright. The individuals enter into a contract
with the Copyright Societies and the Copyright Societies enter into contracts with others for
granting permission of use of copyrighted material. These Societies fix tariff rate and frame their
own regulations. Chapter VII of the Act deals with the Copyright Societies and Section 33 deals
with the Registration of Copyright Society as under:

(1) No person or association of persons shall, after coming into force of the
Copyright (Amendment) Act, 1994 commence or, carry on the business of
issuing or granting licenses in respect of any work in which copyright
subsists on respect or in respect of any other rights conferred by this Act
except under or in accordance with the registration granted under sub-
section (3):

Provided that owner of copyright shall, in his individual capacity,


continue to have the right to grant licenses in respect of his own works
consistent with his obligations as a member of the registered copyright
society:

Provided further that the business of issuing or granting license in


respect of literary, dramatic, musical and artistic works incorporated in a
cinematograph films or sound recordings shall he carried out only through a
copyright society duly registered under this Act

Provided also that the performing rights society functioning in


accordance with the provisions of section 33 on the date immediately before
the coming into force of the Copyright (Amendment) Act, 1994 shall be
deemed to be a copyright society for the purposes of this Chapter and every

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such society shall get itself registered within a period of one year from the
date of commencement of the Copyright (Amendment) Act, 1994.

(2) Any association of persons who fulfils such conditions as may be prescribed
may apply for permission to do the business specified in sub-section (1) to
the Registrar of Copyrights who shall submit the application to the Central
Government.45

(3) The Central Government may, having regard to the interests of the authors
and other owners of rights under this Act, the interest and convenience of the
public and in particular of the groups of persons who are most likely to seek
licenses in respect of the relevant rights and the ability and professional
competence of the applicants, register such association of persons as a
copyright society subject to such conditions as may be prescribed46:

45 Rule 44 deals with the conditions for submission of application for registration of copyright society as
under:(1) Any association of persons, having an independent legal personality, comprising seven or more
authors and other owners of rights (hereinafter referred to as the application) formed for the purpose of
carrying on the business of issuing or granting licenses in respect of a right or set of rights in specific
categories of works may file with the Registrar of Copyrights an application in Form VIII for submission to
the Central Government for grant of permission to carry on such business and for its registration as a
copyright society. The Central Government may grant registration of the society for a period of five years
under sub-section (3A) of section 33.
(2) An application under sub-rule (1) of rule 44 shall be signed by the Chairman, all other members of the
Governing Council (by whatever name called) with such number of persons elected from among the
members of the society consisting of equal number of authors and other owners of right, if any, for the
purpose of the administration of the society and the Chief Executive Officer of the applicant (who need
not be a member).
(3) The business of issuing or granting license in respect of literary, dramatic, musical and artistic works
incorporated in a cinematograph film or sound recording shall be carried out only through a copyright
society duly registered under section 33 of the Act.

46 Rule 46 deals with the conditions for grant of permission to carry on copyright business , as under:(1) An
applicant referred to in rule 44 for registration of it as a copyright society shall not be eligible to be
considered for such registration unless-
(i) the instrument by which the applicant is established or incorporated creates a commitment on it to deal
with only the business of issuing or granting licenses in respect of a right or set of rights in specific
categories of works and other activities ancillary thereto; and
(ii) the applicant is willing to comply with the provisions of the Act and the rules made thereunder.
(2) The applicant shall not carry out the business by way of sub-licensing or transferring the rights of collection
and distribution of royalties in respect of a right or set of rights in specific categories of works to any other
person or copyright society:
Provided that the applicant may enter into agreement with any society or organisation administering rights
corresponding to the right or set of rights administered by the applicant to entrust to such foreign society or
organisation the administration in any foreign country of the right or set of rights administered by the
applicant, or for administrating in India the rights administered in a foreign society or organisation under
sub-section (2) of section 34 of the Act.
Explanation: For the purpose of this instrument means the memorandum and articles of association.

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Provided that the Central Government shall not ordinarily register more
than one copyright society to do business in respect of the same class of
works.

(3A) The registration granted to a copyright society under sub-section (3) shall
be for a period of five years and may he renewed from time to time before
the end of every five years on a request in the prescribed form and the
Central Government may renew the registration after considering the report
of Registrar of Copyrights on the working of the copyright society under
section 3647:

Provided that the renewal of the registration of a copyright society shall he


subject to the continued collective control of the copyright society being
shared with the authors of works in their capacity as owners of copyright or
of the right to receive royalty:

Provided further that every copyright society already registered before


the coming into force of the copyright (Amendment) Act, 2012 shall get
itself registered under this Chapter within a period of one year from the date
of commencement of the Copyright (Amendment) Act, 2012.

47 Rule 47 deals with the applications and conditions for re-registration or renewal of copyright society, as
under:(1) A Copyright Society registered section 33 and desirous of carrying on the business as a copyright
society shall submit an application for re-registration in Form-IX to the Registrar of Copyrights within a
period two months from the date of coming into force of these rules.
(2) A copyright society registered under this chapter may apply for renewal of its registration within a
period of three months before the expiry of its registration. The application for such renewal shall be made to
the Registrar of Copyrights in Form-IX for submission to the Central Government for grant of permission to
continue with its business and the Central Government may renew the registration of Copyrights on the
working of the copyright society.
(3) In case of renewal of registration the application shall submit a copy of resolution passed by the General
Body declaring that all the royalties collected till the previous accounting year have been distributed to all
accessible members and no complaint in this regard is pending.
(4) The applicant in case of re-registration or renewal of registration shall submit necessary documents
indicting re-election to the Governing Council including its chairman.
Rule 48 deals with documents accompanying applications as under:
Every application made under rule 44 and 47 shall be accompanied by
(a) a true copy of the instrument by which the applicant is established or incorporated;
(b) the consent in writing of the individuals named in the application to act as members of the Governing
Council of the applicant;
(c) a declaration containing the objectives of the applicant, the bodies through which it will function and
arrangements for accounting and auditing;
(d) an undertaking to the effect that the instrument by which the applicant is established or incorporated provides
for conforming the same to the provision of the Act and these rules;
(e) a copy of the Register of authors and owners containing the list of the authors and other owners of rights,
their names and addresses;
(f) a statement as to the changes, if any, made in the instrument since the last General Body in case of application
made under rule 47; and
(g) copies of various schemes as mentioned in this chapter as approval by the General Body in case of
application made under rule 47.

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(4) The Central Government may, if it is satisfied that a copyright society is
being managed in a manner detrimental to the interests of the authors and
other owners of right concerned, cancel the registration of such society after
such inquiry as may be prescribed.48

(5) If the Central Government is of the opinion that in the interest of the authors
and other owners of right concerned or for non-compliance of sections 33A,
sub-section (3) of section 35 and section 36 or any change carried out in the
instrument by which the copyright society is established or incorporated and
registered by the Central Government without prior notice to it is necessary
so to do, it may, by order, suspend the registration of such society pending
inquiry for such period not exceeding one year as may be specified in such
order under sub-section (4) and that Government shall appoint an
administrator to discharge the functions of the copyright society.

Section 33A deals with the tariff scheme by copyright society. It reads as under:
48 Rule 53 deals with the cancellation of registration of a copyright society as under:The registration of a
copyright society as such may be cancelled by the Central Government after giving the copyright society a
reasonable opportunity of being heard, if
(a) any of the particulars furnished in the application for registration is, at any time, found to be untrue or
incorrect and misleading in any manner; or
(b) after holding an inquiry by an officer duly appointed by the Central Government, the Central Government
is satisfied that-
(i) the copyright society failed to cooperate with the inquiry officer; or
(ii) the complaints against the copyright society are found to be true; or
(iii) the copyright society is being managed in a manner detrimental to the interests of the members
concerned; or
(iv) the copyright society persistently fails to properly maintain its accounts and get them audited; or
(v) the copyright society failed to distribute the royalties as per the scheme; or
(vi) the copyright society persistently fails to properly maintain its accounts and get them audited; or
(vii) the copyright society utilises its funds for purposes other than those mentioned in the instrument; or
(c) the society has not complied with-
(i) section 33A of the Act regarding the publication of Tariff scheme by the copyright society; or
(ii) sub-section 3 of section 35 of the Act regarding equal representation of authors and other owners of rights
in the Governing Council of copyright society as specified in rule 44; or
(iii) section 36 of the Act regarding submission of returns and reports to the Registrar of Copyrights by
copyright society; or
(iv) the procedure for obtaining approval of authors and other owners of right for collection and distribution
of royalty; or
(d) the society is issuing or granting license in respect of the right or set of rights in the specific category of
works for which it is not registered.
Rule 54 deals with the conditions subject to which a copyright society may accept authorisation and an author or
other owner of rights may withdraw such authorisation as under:
(1) A copyright society may accept from an author or other owner of rights or his duly authorised agent, exclusive
authorisation to administer the right or set of rights in the specific categories of works for which the copyright
society is registered, if such author or other owner or such agent enters into an agreement, in writing, with the
copyright society specifying the rights to be administered, the duration for which such rights are authorised to be
administered, the quantum of royalty agreed to and the frequency at which such royalty shall be paid by the
copyright society in accordance with its Scheme of Tariff and Distribution:

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(1) Every copyright society shall publish its tariff scheme in such manner as
may be prescribed.

(2) Any person who is aggrieved by the tariff scheme may appeal to the
Copyright Board and the Board may, if satisfied after holding such inquiry
as it may consider necessary, make such orders as may be required to
remove any unreasonable element, anomaly or inconsistency therein:

Provided that the aggrieved person shall pay to the copyright society
any fee as may be prescribed that has fallen due before making an appeal to
the Copyright Board and shall continue to pay such fee until the appeal is
decided, and the Board shall not issue any order staying the collection of
such fee pending disposal of the appeal:

Provided further that the Copyright Board may after hearing the parties
fix an interim tariff and direct the aggrieved parties to make the payment
accordingly pending disposal of the appeal.

Section 34 deals with the administration of rights of owner by copyright society.49 It reads as
under:

(1) Subject to such conditions as may be prescribed,-

(a) a copyright society may accept from an author and other owners of right exclusive
authorisation to administer any right in any work by issue of licenses or collection of
license fees or both; and

(b) an author and other owners of right shall have the right to withdraw such
authorisation without prejudice to the rights of the copyright society under any
contract.

(2) It shall be competent for a copyright society to enter into agreement with any foreign
society or organisation administering rights corresponding to rights under this Act, to
entrust to such foreign society or organisation the administration in any foreign
country of rights administered by the said copyright society in India, or for

49 Rule 52 deals with the powers and functions of the Administrator, as under:(1) On appointment of the
administrator under rule 50 read with sub-section (5) of section 33 of the Act, all powers of the copyright society
shall vest in him and all other representative bodies or committees of the copyright society other than the general
body shall stand dissolved.
(2) The administration shall arrange for the reconstitution of the dissolved bodies before the expiry of the period of
suspension failing which, the bodies so suspended shall stand revived at the end of the period of suspension for
their remaining term, excluding the period of suspension.

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administering in India the rights administered in a foreign country by such foreign
society or organisation:

Provided that no such society or organisation shall permit any discrimination in


regard to the terms of license or the distribution of fees collected between rights in
Indian and other works.

(3) Subject to such conditions as may be prescribed, a copyright society may-

(i) issue licenses under section 30 in respect of any rights under this Act;

(ii) collect fees in pursuance of such licenses;

(iii) distribute such fees among author and other owners of rights after making
deductions for its own expenses;

(iv) perform any other functions consistent which the provisions of section 35.

Section 35 deals with the control over the copyright society by the owner of rights. It reads as
under:

(1) Every copyright society shall be subject to the collective control of the
owners of rights under this Act whose rights it administers (not being owners
of rights under this Act administered by a foreign society or organisation
referred to in sub-section (2) of section (34) and shall, in such manner as
may be prescribed,-

(a) obtain the approval of such owners of rights for its procedures of
collection and distribution of fees;

(b) obtain their approval for the utilisation of any amounts collected as fees
for any purpose other than distribution to the owner of rights; and

(c) provide to such owners regular, full and detailed information concerning
all its activities, in relation to the administration of their rights.

(2) All fees distributed among the owners of rights shall, as far as may be, be
distributed in proportion to the actual use of their works.

(3) Every copyright society shall have a governing body with such number of
persons elected from among the members of the society consisting of equal

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number of authors and owners of work for the purpose of the administration
of the society as may be specified.50

(4) All members of copyrights society shall enjoy equal membership rights and
there shall be no discrimination between authors and owners of rights in the
distribution of royalties.

Section 36 deals with the submission of returns and reports. It provides as under:

(1) Every copyright society shall submit to the Registrar of Copyrights such
returns as may be prescribed.

(2) Any officer duly authorised by the Central Government in this behalf may
call for any report and also call for any records of any copyright society for
the purpose of satisfying himself that the fees collected by the society in
respect of rights administered by it are being utilised or distributed in
accordance with the provisions of this Act.

Section 36A deals with the rights and liabilities of performing rights societies. It reads as under:

Nothing in this Chapter shall affect any rights or liabilities in any work in
connection with a copyright society which had accrued or were incurred on or
before the day prior to the commencement of the Copyright (Amendment) Act,
2012, or any legal proceedings in respect of any such rights or liabilities
pending on that day.

Following deals with the cases relating to Copyright Societies.

In Eastern India Motion Pictures Association v. Indian Performing Right Society


Ltd.51the question before the Court was whether under the provisions of the Act, the Respondent
acquired any right of granting a license for exhibition of a cinematograph film or not. The Court
said yes and noted that Section 33 which lays down, inter alia, that every performing rights

50 Rule 45 deals with the membership of Copyright Society as under:Membership of every


copyright society shall be open to all the authors and other owners of a right and set of rights in
specific categories of works for which it is registered.

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society shall, within the prescribed time and in the prescribed manner, prepare, publish and file
with the Registrar of Copyrights, statements of all fees, charges or royalties which it proposes to
collect for the grant of licenses for performance in public of works in respect of which it has
authority to grant such licenses. The Respondent, therefore, has the right to charge fees for grant
of licenses.
In Eastern India Motion Pictures v. Performing Right Society Ltd. 52 the Copyright
Board decided that the Respondent had authority to grant license in respect of the music
contained in the soundtrack of a cinematograph film. The question before the Court was whether
the Copyright Board had the jurisdiction to decide the question of authority of the society or not.
The Court said yes and noted that Sub-section (1) of Section 33 of the Act specifically uses the
expression in respect of which it has authority to grant such license. If in a given case it is
shown that the society has no authority to grant such license that would be the end of the matter.
Accordingly if the authority of the society is challenged the Board has the jurisdiction to go into
the same.

In Indian Performing Right Society Ltd. v. Sanjay Dalia 53 the question before the
Delhi High Court was whether the Court has territorial jurisdiction to entertain and try the suit
instituted by the Plaintiff, a copyright society, by virtue of Section 62(2) of the Act, as the
Plaintiff carries on business through its branch office situated within the territorial limits of the
High Court. The Court said no as no part of the cause of action has arisen in territorial limits of
the High Court. The Court noted that Section 62(2) has expanded the scope of Section 20 of
Civil Procedure Code by extending the jurisdiction with reference to not only the Defendant but
also the Plaintiff. The Court concluded as under:

51 AIR1974Cal257(DB) Calcutta High Court. Chief Justice Sankar Prasad Mitra delivered the
judgment.

52 AIR1978Cal477 (DB) Calcutta High Court. Justice B.C. Basak delivered the judgment.

53 MANU/DE/2346/2007 (SB) Delhi High Court. Justice Badar Durrez Ahmed delivered the
judgment. This judgment also referred in Indian Performing Right Society Ltd. v. Badal
Dhar Chowdhry MANU/DE/0747/2010(SB) Delhi High Court. Justice Rajiv Sahai Endlaw
delivered the judgment.
Page 175 of 255
[M]erely having a branch office at Delhi would not mean that the Plaintiff
carries on business in Delhi. The plaintiff would be deemed to carry on
business at a branch office only if a cause of action had arisen in Delhi. The
plaint does not disclose any cause of action having arisen in Delhi. In the
absence of such an averment and in the absence of any cause of action having
arisen in Delhi, the Plaintiff cannot be deemed to carry on business in Delhi.
Therefore, the pre-condition for attracting Section 62(2) of the Copyright Act,
1957 has not been satisfied.54

On appeal in Indian Performing Right Society Ltd. v. Sanjay Dalia 55 the Supreme
Court reiterated the same as under:

[T]he provisions of section 62 of the Copyright Act and Section 134 of the
Trade Marks Act have to be interpreted in the purposive manner. No doubt
about it that a suit can be filed by the Plaintiff at a place where he is residing
or carrying on business or personally works for gain. He need not travel to file
a suit to a place where Defendant is residing or cause of action wholly or in
part arises. However, if the Plaintiff is residing or carrying on business etc. at
a place where cause of action, wholly or in part, has also arisen, he has to file
a suit at that place.56
In Indian Performing Right Society Ltd. v. Debashis Patnaik 57 the Plaintiff argued
that the Defendant, the Director of a hotel, has committed violation of the rights of the Plaintiff
as the Defendant was indulged in the illegal activities of playing music at its hotel premises
without a license from the plaintiff and without making payment of the license fee. The Court
accepted the argument of the Plaintiff and noted that the Defendant has no right whatsoever for
playing the music without obtaining the license from the Plaintiff and without paying the
royalties to the Plaintiff. The Court awarded the Plaintiff not only the actual and compensatory
damages suffered by the Plaintiff but also the punitive damages.

54Id. at Para 15.

55http://www.judis.nic.in/supremecourt/imgs1.aspx?filename=42728 (DB) Supreme Court of


India. Justice Arun Mishra delivered the judgment.

56 Id. at Para 47, Page 49.

57 MANU/DE/0675/2007(SB) Delhi High Court. Justice Gita Mittal delivered the judgment.
Page 176 of 255
In Entertainment Network (India) Ltd. v. Super Cassette Industries Ltd.58the
Supreme Court elaborated the provisions relating to Copyright Society as under:

Registration of such copyright society is mandatory in character. Sub-section


(2) of Section 33 provides for that any association of persons who fulfils such
conditions as may be prescribed may apply for permission to do the business
specified in Sub-section (1) to the Registrar of Copyrights who shall submit
the application to the Central Government. Sub-section (3) of Section 33
empowers the Central Government to grant a license having regard to the
interest of the authors and other owners of rights under the Act, the interest
and convenience of the public and in particular of the groups of persons who
are most likely to seek licenses in respect of the relevant rights and the ability
and professional competence of the applicants, register such association.
Section 34 provides for administration of rights of owner by copyright society.
The proviso appended thereto prohibits any discrimination in regard to the
terms of license or the distribution of fees collected between rights in Indian
and other works. The concept of copyright society appears to be that the
interest of the copyright holder can be protected by the said society while
granting license so as to enable all players to have the benefit of a single
window; as such a society is entitled to:

(i) issue licenses under Section 30 in respect of any rights under this
Act;

(ii) collect fees in pursuance of such licenses;

(iii) distribute such fees among owners of rights after making


deductions for its own expenses;

(iv) perform any other functions consistent with the provisions of


Section 35.59

On the issue of the determination of the royalties, the Court observed as under:

When the owner of a copyright or the copyright society exercises monopoly in


it, then the bargaining power of an owner of a copyright and the proposed
licensee may not be same. When an offer is made by an owner of a copyright
for grant of license, the same may not have anything to do with any term or
condition which is wholly alien or foreign therefore. An unreasonable demand
if acceded to, becomes an unconstitutional contract which for all intent and
purport may amount to refusal to allow communication to the public work
recorded in sound recording. A de jure offer may not be a de facto offer.60

58 2008(37) PTC 353(SC), (2008)13SCC30. Supreme Court (DB) Justice S.B.Sinha delivered the judgment.

59 Id. at Page 370-371.


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In Phonographic Performance Ltd. v. Hotel Gold Regency 61the issue before the
Court was whether the Copyright Society has power to institute a suit in its own name for
infringement of copyright. The Court said no and observed as under:

Section 33(1) of the Copyright Act, 1957 prohibits any person or association
of persons from commencing or carrying on the business of issuing or
granting licenses in respect of any work in which copyright subsists or in
respect of any other rights conferred by the said Act except under or in
accordance with the registration granted under Section 33(3) thereof. The first
proviso to Section 33(1) stipulates that an owner of copyright shall, in his
individual capacity, continue to have the right to grant licenses in respect of
his own works consistent with his obligations as a member of the registered
copyright society. These provisions indicate that the business of issuing or
granting licenses in respect of any work in which copyright subsists can only
be conducted by a person or association of persons etc., registered as a
copyright society under Section 33(3). They also indicate that the owner of the
copyright shall continue to have the right to grant licenses in respect of his
own works consistent with his obligations as a member of the registered
copyright society. The copyright society, Therefore, does not have the
exclusive right to grant licenses and owner of the copyright retains his
individual right to grant licenses in respect of his own works.62

A plain reading of Section 34 indicates that the copyright society is entitled to


receive from an owner of rights, exclusive authorisation to administer any
right in any work by issue of licenses or collection of license fee or both. The
owner has the right to withdraw such authorisation without prejudice to the
rights of the copyright society under any contract. The extent of authorisation
to administer any right in any work has been indicated in Section 34(1)(a) to
be issuance of licenses or collection of license fee or both. Section 34(3) also
indicates that a copyright society may issue licenses under Section 30 in
respect of any rights under the Act; it may collect fees in pursuance of such
licenses ;distribute such fees among owners of rights after making deductions
for its own expenses; and perform any other functions consistent with the
provisions of Section 35. Leaving aside the provisions of Section 35 for the
moment, it is apparent that the copyright society can have authorisation only
with respect to issue of licenses and / or collection of license fees and
consequently distribution of such fees among owners of the rights after

60 Id. at Page 386.

61 2008(37) PTC 587 (Del) (SB) Delhi HC. Justice Badar Durrez Ahmed delivered the
judgment.

62 Id. at Para 17, Page 592.


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making deductions for its own expenses. Conspicuous by its absence is the
right to institute an infringement action.63

Reverting to Section 35 of the Copyright Act, 1957, a reading of the same


would make it clear that the provision merely stipulates that every copyright
society shall be subject to the collective control of the owners of the rights
under the Act whose rights it administers. The copyright society is required to
obtain various approvals from the owners of rights, such as the approval for
its procedures of collection and distribution of fees; for the utilisation of any
amounts collected as fees for any purpose other than distribution to the
owners of rights. The copyright society is also required to provide to such
owners regular, full and detailed information concerning all its activities, in
relation to the administration of their rights. Section 35(2) stipulates that all
fees distributed among the owners of the rights shall, as far as may be, be
distributed in proportion to the actual use of their works. Section 35 does not,
in any way, amplify the authority granted to a copyright society under Section
34. On the other hand, Section 35clearly stipulates that the copyright society
would be under the collective control of the owners of the rights and would
have to obtain approvals from them as well as provide full information to
them. The rights of a copyright society are, therefore, circumscribed by the
provisions of Section 34. Section 34(1)(a) clearly stipulates that the copyright
society may accept from an owner of rights exclusive authorisation to
administer any right in any work by issue of licenses or collection of license
fee or both. The exclusive authorisation to administer any rights in a work
are limited to issuance of licenses and / or collection of license fee and
obviously distribution of such fees [as entailed by Section 34(3)] among
owners of the rights after making deductions for the expenses of the copyright
society.64

But Division Bench of the Delhi High Court in Phonographic Performance Limited v.
Lizard Lounge65 reversing the decision of the Single Bench noted that a reading of the
provisions of Section 33 and 34 make it clear that the Copyright Society can accept from the
owners of the copyrights the authorization to administer rights and issue licenses and collect
fee in pursuance to licenses. While referring the Statement of Objects and Reasons of the
Copyright Amendment Act 1992, the Court noted that the new provisions of Chapter VII
providing for such Copyright Societies were incorporated with various objectives and one such
objective was to improve the enforcement of copyright with benefits both to the holders of the

63 Id. at Para 19, Page 593.

64 Id. at Para 20, Page 594.

65 MANU/DE/2475/2008 (DB) Delhi High Court. Justice Sanjay Kishan Kaul delivered the judgment. Also
referred in Phonographic Performance Limited v. M/s. Spring Club MANU/DE/0630/2014 (SB) Delhi
High Court. Justice Sanjeev Sachdeva delivered the judgment.

Page 179 of 255


right and to the general public. The Court further elaborated the position of the Copyright
Societies as under:
[T]he very object of providing for such a Copyright Society was not only to
administer the license regime and recovery of fee in a better manner but also
to prosecute claims for infringement. To hold otherwise would be a half job
done. Individual owners of copyright find it difficult to enter into multiple
license agreements and recover fee or enforce their rights. The creation of a
Copyright Society is to serve all the three objectives without denuding the
author of its own individual rights.66
In Super Audio Madras Private Limited v. Entertainment Network India
Private Limited67 the question before the Court was whether there is a bar for the copyright
owner to file an appeal as against the order passed by the Board in his individual capacity. The
Court said no and observed as under:

[B]ecoming a membership of copyright society is not a compulsion under the


Statute; but at the same time, under the first proviso to Section 33, the owner
of the copyright shall, in his individual capacity, continue to have the right to
grant licenses in respect of his own works consistent with his obligations as a
member of the registered copyright society. Therefore, his right to continue as
a copyright owner has not taken away by the substituted Act 38 of 1994.68

The Court concluded that even if a copyright owner is a member of the Copyright Society, his
individual right as a copyright owner continues and by becoming a member, they are not
assigning their rights to the Copyright Society.
In Music Broadcast Private Ltd. v. Indian Performing Right Society Ltd. 69 the
issue before the Court was whether the Defendant was entitled to claim and/or demand royalty
fees and/or license fees from the Plaintiff in respect of the sound recording comprising of
musical and/or literary work broadcast by them at their Radio station. The Court said no and
observed as under:

66 Id. at Para 27.

67 MANU/TN/3951/2010(SB) Madras High Court. Justice R. Subbiah delivered the judgment.

68 Id. at Para 20.

69 M ANU/MH/0923/2011 (SB) Bombay High Court. Justice S.J. Vazifdar delivered the
judgment.
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The Defendant acquires such right as its members are entitled to and capable
of assigning to it. The Defendant cannot have any higher right than those of
its members with whom it has entered into assignment agreements. Merely
because Section 33 provides for the formation of two societies viz. IPRS- the
Defendant and PPL, it does not lead to the conclusion that a license must be
obtained from both of them even if it is otherwise not necessary under the
provisions of the Act and in particular Section 14 thereof.70

In Phonographic Performance Ltd. Company v. Dream Merchants, Events


and Entertainment Group71 the issue before the Court was whether the duration of the
event or the duration of the sound recordings i.e., being played in the event, would be the basis
for demanding the payment from the actual users. The question was left open by the Court and
the Defendants were not restrained from conducting the event as it would also not be in the
interest of Plaintiff inasmuch as stoppage of event would be a revenue loss to Plaintiff society
and/or its members.

In The Federation of Hotels & Restaurants Association of India v. Union of


India72 the Writ Petition was filed for striking down Sections 2(ff), 13, 33(3), 34(3) of the
Act, on the ground that these provisions violate Article 14 and 19(1)(g) of the Constitution of
India. The Court rejected the maintainability of the Writ Petition and noted as under:

[T]he broadcast or dissemination of music to the public at large is neither a


statutory responsibility nor a duty of a public character. The Copyright and
Performing Societies, IPRS/PPL are an amalgamation of conglomeration of
individuals/owners.73

The Court also rejected the contention of the Petitioner that the fundamental rights of the
Petitioners under Article 19(1)(g) of the Constitution have been violated because of the
demands raised by the IPRS and PPL and noted as under:
Suffice it to say that the amendments carried out in the Copyright Act, 1957
are calculated to guarantee a fair return to the authors, composers or lyricist or
sound recorders, as the case may be. There is no absolute, untrammeled or
unbridled right existing or granted to the public at large to enjoy fruits of such

70 Id. at Para 76.

71 MANU/KA/0955/2011(SB) Karnataka High Court. Justice Aravind Kumar delivered the


judgment.

72 MANU/DE/1149/2011 (DB) Delhi High Court. Justice Vikramajit Sen delivered the
judgment.

73 Id. at Para 8.
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creation without any payment in recompense or for payments which the
public may be willing to give. The initial burden or duty of harmonizing these
competing interests and rights has been laid at the door of the Copyright
Board in the case of price fixation/tariff and in other cases with the Registrar
of Copyrights.74
...

In a laissez faire economy, such as what exists in India today, every person
is entitled to claim any price for utilization of rights or services. We are not
dealing with essential commodities. If the Government is of the opinion that
the public at large is being exploited, appropriate legislation shall, no doubt,
be passed.75

Prima facie, there is legal foundation for the IPRS as well as PPL to claim
payment against use of the copyrights held by them. If and when the
Petitioners approach the concerned appropriate authorities for adjudication of
their disputes, a definitive answer shall be given with regard to legitimacy of
these claims.76
In Event and Entertainment Management Association v. Union of India 77the
Petitioner contended that monopoly rights are being created in favour of copyright societies
without any regulatory mechanism to deal with arbitrary price fixation of levying of royalties of
various copyrighted works. The Court said no and observed as under:
The provisions of Sections 33-36 make it clear that in their functioning
the copyright societies are controlled by and are accountable to the owners of
the copyrights. There is also an overall supervisory control by the central
government. As regards the power to fix tariffs, the earlier scheme under the
unamended Act has been consciously departed from by the legislature. There
are checks put in place in terms of Section 33(3) at the time of registration of
a copyright society. The Central Government has to account for the interests
of authors and other owners of rights as well as the interests and convenience
of the public and in particular of the groups of persons who are most likely to
seek licensees. Once a copyright society is registered, the control that can be
exercised over it by the Central Government and by the owners of the
copyrights is as given in Section 35 Act. Instead of the Central Government
itself controlling the fixation of royalty tariff, the legislature has required the
copyright society to fix tariffs subject to obtaining approval of the owners of
rights. This is as regards the procedure of collection and distribution of fees as

74 Id. at Para 16.

75 Id. at Para 20.

76 Id. at Para 21.

77 MANU/DE/2006/2011(SB) Delhi High Court. Justice S. Muralidhar delivered the judgment.


Page 182 of 255
well as for the utilization of any amounts collected as fees for any purpose
other than distribution to the owner of rights. The copyright society will
provide to such owners regular, full and detailed information concerning all
its activities in relation to the administration of their rights. The above
statutory provisions have been supplemented by Rules 12, 14, 14A, 14B, 14F,
14G, 14H, 14I, 14J and 14K. In addition Rule 14L provides for meeting of
copyright societies, 14M provides for accounts and proper audit. Under Rule
14L, as soon as the Tariff Scheme and the Distribution Scheme are prepared,
the copyright society is to call a general meeting of the owners of rights
whose names are recorded in the Register of Owners to approve the same.
Under Rule 14N, within a period of twelve months from the holding of a
meeting, an AGM is to be held of the owners of rights. The documents to be
presented in the annual general meeting of owners of rights are listed out
under Rule 14O. Under Rule 14P, returns are to be filed by the copyright
societies with the Registrar of Copyrights. In other words, under Chapter V of
the Rules, a very detailed procedure has been laid out to regulate the working
of copyright societies. This has to be further understood in the context of
Section 18, which provides for assignment of copyright. Such assignment is a
pre-condition to becoming a member of IPRSL or any other copyright society.
As a result of such assignment the copyright society becomes the exclusive
owner of the public performing rights of its members.78
The Court also made it clear that the question whether the copyright societies have
discharged their functions in accordance with the Act must be examined in the first instance
by the Central Government in which adequate powers have been vested under Section 33(4)
read with Section 35(3). The Court also noted as under:

The owners of the copyright too have adequate supervisory control over the
functioning of the copyright societies of which they are members . . . What
should be the appropriate tariff for a copyrighted work, how the royalties and
fees collected should be distributed amongst the owners of different rights are
issues which are required to be left to be determined by the copyright
societies working under the control of the copyright owners.79

The Court held that the Copyright Board and not the High Court is equipped to entertain a
disputed question of fact in relation to the fixation of tariffs.
In Event and Entertainment Management Association v. Union of India 80the
impugned circular was challenged in which a privilege was provided to the Super Cassette
Industries Limited (SCIL) over other copyright societies. The Court declared such circular
unsustainable in law for the simple reason that there has to be equal protection of the law in
terms of Article 14 of the Constitution. The Court noted as under:
78 Id. at Para 19.

79 Id. at Para 25.

80 MANU/DE/7443/2011 (SB) Delhi High Court. Justice S. Muralidhar delivered the judgment.
Page 183 of 255
The Police is not expected to act differently depending on who the
complainant is. All complaints under the Act require the same seriousness of
response and the promptitude with which the police will take action.
Likewise, the caution that the Police is required to exercise by making a
preliminary inquiry and satisfying itself that prima facie there is an
infringement of copyright will be no different as regards the complaints or
information received under the Act. The apprehension of the Petitioner that
the impugned Circular is not an innocuous one and that it privileges
complaints received from SCIL over other complaints of violations of the Act
cannot be said to be unfounded. As long the police are discharging their
statutory duties in accordance with law, there is no need for circulars such as
the impugned one.81
In Indian Performing Right Society Ltd. v. Aditya Pandey82the question before the
Court was whether a separate license in respect of such literary and musical works can be
asserted by the owner of copyright in such works in addition to the license secured from the
copyright holder in the sound recording? The Court said no and observed as under:

Section 14(a) of the Act authorizes the owner of copyright in literary and
musical works to perform the work in public or communicate it to the public.
On the other hand Section 14(e) of the Act authorizes the owner of copyright
in sound recording only to communicate the work in public. This subtle
distinction between the rights of owners of literary and musical works on one
hand and sound recording on the other has to be seen in the backdrop of the
definition of the expression performance as defined under Section2(q) of the
Copyright Act, 1957 as it was originally enacted and definitions of various
expressions under the amended Copyright Act viz. broadcast,
communication to the public, performance and performer contained in
Sections 2(dd), (ff), (q) and (qq) of the Act respectively. Section 2(q) in the
Copyright Act as originally enacted defined performance to mean any mode
of visual or acoustic presentation, including any such presentation by the
exhibition of a cinematographic film, or by means of radio-diffusion, or by
the use of a record, or by any other means and, in relation to a lecture,
includes the delivery of such lecture. The expression communication to the
public was not defined when the Act was promulgated. The amendment in
the year 1994, significantly changed the definition of the expression
performance. The amended Section 2(q) defines performance to mean
any visual or acoustic presentation made live by one or more speakers.
Section 2(dd) defines the expression communication to the public to mean:
making any work available for being seen or heard or otherwise enjoyed by
the public directly or by any means of display or diffusion other than by
issuing copies of such work regardless of whether any member of the public
81 Id. at Para 10.

82 2012(50) PTC 460 (Del) (DB) Delhi High Court. Justice Pradeep Nandrajog delivered the
judgment.
Page 184 of 255
actually sees, hears or otherwise enjoys the work so made available. The
definitions of the words broadcast and performer were also introduced vide
Sections 2(dd) and (qq) in the amended Act. A combined reading of the
definition of the said expressions, when seen in the light of difference in the
definition of the expression performance under the unamended and
amended Acts, brings out that the Copyright Act draws a distinction when
communication to the public is by way of live performance and when it is by
way of diffusion. Thus, whereas the owner of copyright in literary and
musical works enjoys the right to communicate said works to the public by
way of live performance the owner of copyright in sound recording does not
enjoy similar right to communicate the sound recording to the public by way
of live performance. A necessary corollary to the aforesaid is that the
communication of a sound recording to the public by the owner of the
recording in no way encroaches upon the right of the owner of the underlying
literary and musical works to perform said underlying works in the public83

In Indian Performing Right Society v. Adventure Communication India


Private Limited84 the Plaintiff sought an injunction restraining the Defendant from
organizing the events including communicating Plaintiffs repertoire of musical works
administered to the public without obtaining license from it. Holding for the Plaintiff the Court
observed as under:
Section 33 of the Copyright Act, 1957 empowers the Central Government to
register an association of persons fulfilling the prescribed conditions to do
business of issuing or granting licenses in respect of any work for which the
Copyright subsists or in respect of any other right conferred by the Act, in
accordance with the registration granted to such an association. Ordinarily, the
Central Government is to register only one copyright society to do business in
respect of the same class of work. Section 34 of the Act provides that a
copyright society may accept from an owner of rights, exclusive authorization
to administer any right in any work by issue of licenses or collection of
license fees or both. It is also permissible for a copyright society to enter into
an agreement with a foreign society or organization administering rights
corresponding to the rights under the Act and to entrust to such foreign
society or organization, the administration in any foreign country, of rights
administered by the said copyright society in India, or for administering in
India the rights administered in a foreign country by such foreign society or
organization. A copyright society can issue license under Section 30 of the
Act, collect fees and distribute such fee among the owners of right after
deducting its own expenses.85

83 Id. at Para 39, Page 478.

84 MANU/DE/4760/2012(SB) Delhi High Court. Justice V.K. Jain delivered the judgment.

85 Id. at Para 3.
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In Indian Performing Right Society Limited v. State of West Bengal 86 the
question before the Court was whether the Deputy Commissioner of Police by issuing the
circular and the Joint Secretary, Department of the Government of West Bengal by writing the
letter; acted in excess of their power and authority. The Court said yes. The Petitioner
contended that due to the circular and letter issued by the Respondent, the bars, hotels,
restaurants, etc. were no longer recognised the Petitioners right to grant licenses and collect
royalty. The Court noted as under:

IPRS claiming right to grant licenses was entitled to sue the owners of the
bars, hotels, restaurants, etc. if they contravened its right to issue or grant
licenses in terms of Section 33 of the Copyright Act, 1957. If someone
violated its right to issue or grant licenses that could entitle it to take steps for
prosecution as well, and in such a case, perhaps, the police would have
incurred certain statutory obligations to ensure an effective prosecution. But I
am unable to see how the Deputy Commissioner could issue the circular with
a view to enforcing IPRS's legal right, if any, to grant licenses.87
The State Government and the police could not create an exclusive right for
IPRS to grant licenses and collect royalty, for disputes concerning the right, if
any, were to be decided only by the appropriate Civil and Criminal Courts,
and only in execution of orders of such Courts, if directed, the State
Government and the police could take steps and issue orders, circulars, etc. if
necessary.88

In Indian Performing Right Society Ltd. v. Gauhati Town Club 89 the question
before the Court was whether the Delhi High Court has the territorial jurisdiction to decide the
matter where the Plaintiff's repertoire was performed to the public in Gauhati, without
obtaining a license from the Plaintiff. The Court said yes and noted as under:
As far as the aspect of territorial jurisdiction is concerned, Section 62(2) of the
Copyright Act permits action for infringement of copyright to be instituted in
the Court within whose jurisdiction the Plaintiff carries on business. There is
no reason for this Court to doubt the statement of the Plaintiff that it carries on
business within the jurisdiction of this Court. The suit is undoubtedly in

86 MANU/WB/0984/2012 (SB) Calcutta High Court. Justice J K Biswas delivered the judgment.

87 Id. at Para 8.

88 Id. at Para 9.

89 MANU/DE/0582/2013 (SB) Delhi High Court. Justice Rajiv Sahai Endlaw delivered the
judgment.
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respect of infringement of copyright of the Plaintiff. Section 51(a)(ii) provides
that copyright in a work is deemed to be infringed when any person without a
license granted by the owner of the copyright 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. Thus
the Defendant no. 2 Stadium having permitted for profit the Defendant no. 1
to use the Stadium for communication to the public of the work in which the
Plaintiff has copyright is deemed to have infringed copyright.90

In Leopold Cafe & Stores v. Novex Communications Pvt. Ltd. 91 the question
before the Court was whether the Defendant, an agent of the copyright owners, was entitled to
grant licenses on behalf of owners of copyright. The Court said yes and observed as under:
There is also the seemingly nice distinction between issuing and granting
a license. Both words must be read together with their conjunctive. Issuing
speaks possibly to the physical act of generating a license. Granting is the
legal effect of that issuance. What Section 33 forbids is an engagement in the
business of issuing and granting licenses in works in which copyright
subsist. This cannot mean that a copyright owner cannot appoint an agent to
grant any interest on behalf of the copyright owner. That is something that
Section 30 in terms permits. The express permission in Section 30 cannot be
occluded by an extension of the express prohibition in Section 33. All that the
two sections, read together, require is that the factum of agency must be
disclosed so that the licensee knows that it has a valid license from the
copyright owner; i.e., that it is made known by the agent that it is acting on
behalf of the holder of copyright in the works in question, even though the
licensee may throughout deal only with the agent and never directly with its
principal. The minute the principal is undisclosed and the license is issued and
granted in the agent's own name, the prohibition in Section 33 comes into
play.92

90 Id. at Para 18.

91 MANU/MH/1015/2014(SB) Bombay High Court. Justice G.S. Patel delivered the judgment.

92 Id. at Para 14.


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In Indian Performing Right Society Ltd. v. Union of India 93 the question before the
Court was whether the Central Government had jurisdiction to form a prima facie opinion that
an enquiry is required to be conducted into the affairs of the Petitioner society in respect of the
alleged violations of the Act and the Rules during the period it was a registered copyright society
notwithstanding the fact that subsequently its registration had lapsed. The Court said yes and
rejected the submission of the Respondent that it ceased to be a copyright society on the date of
issuance of order dated 27 February 2014 i.e. the order recording prima facie opinion to
conduct the enquiry against the Petitioner society. The Court noted as under:

[T]he Petitioner society was registered as a copyright society way back in the
year 1996, and therefore, admittedly the Petitioner was a registered copyright
society from 1996 till 21 June 2013. Since the alleged violations had taken
place during this period between 1996 to 21 June 2013, it has to be held that
the Government of India has jurisdiction to conduct an enquiry against the
Petitioner society in respect of the alleged violations of the Act and the
Rules.94
In Chitra Jagjit Singh v. Indian Performing Rights Society 95the Plaintiff contended
that the Defendant continued to issue license, even though, the Defendant itself claimed that it
was no longer a copyright society registered under the Act for failing the compliance of the
second proviso to Section 33A. The Court accepted the contention of the Plaintiff and
restrained the Defendant from granting any license in respect of the works of the Plaintiff and
of her husband late Jagjit Singh and recover any license fee from any third party in respect of
her works.

Part V
Conclusion

93 MANU/MH/2580/2015(DB) Bombay High Court. Chief Justice M.S. Shah delivered the
judgment.

94 Id. at Para 18.

95 MANU/DE/0917/2016 (SB) Delhi High Court. Justice Vipin Sanghi delivered the judgment.
Page 188 of 255
It may be concluded that problem in or in relation to copyright contracts arise:

1 If the parties fail to agree in unequivocal, unambiguous, clear and certain terms as
to their respective rights and obligations. In most cases, the sound of silence of
parties as to their respective rights and obligations can be heard through
implication of law.
2 If the parties do not follow the provisions of the Copyright Act, 1957 while
entering into a contract.

As to the first ownership of copyright the law is favorable to the employer and/or government as
against the author. Agreements relating to first ownership may be express or implied. Though
there is no format of agreement of assignment and license, but the provisions as to mode of
assignment and license as given in the Act are required to be followed.

Copyright Wrong: Copy or Not to Copy

This Paper seeks to identify and explain the basic reasons of copying and not copying. It also
seeks to identify and explain copyright wrong in the light of the provisions of the Copyright Act,
19570 (hereinafter, the Act) and case law. The Paper is divided into four parts. Part I seeks to
identify and explain the basic reasons of copying and not copying. Part II seeks to identify the
basic terminologies involved in a copyright lis. Since the Act does not define these basic
terminologies; hence, an attempt to understand the meaning and concept of these terminologies
with the help of dictionaries and case law has been made. Part III seeks to identify the copyright
wrongs of civil nature in the light of the relevant provisions of the Act. An attempt has also been

Professor (Dr.) Ghayur Alam, Professor in Business and IP Laws, Ministry of HRD Chair
Professor of IP Law at the National Law Institute University, Bhopal. The author acknowledges
the research assistance provided by Mr. Sumit Bhattachrya and Mr. Abhinav Pradhan; Research
Associates-MHRD Chair on IPR at the National Law Institute University, Bhopal.

0 Act 14 of 1957.
Page 189 of 255
made to classify these wrongs into: (i) strict liability wrongs and (ii) fault based wrongs. Part IV
concludes.
Part I
Copy Right and Copy Wrong

Can we exist, live and evolve without copying? Can we progress and develop without
emulating? Can we realize and actualize ourselves without imitating? The answers to these
questions seem to be in the negative. However, copying is a thing of necessity not of sufficiency.
It is a beginning not an end. The world is and would have been both poorer and richer with and
without copying. If the world stops with copying nothing new will come about. If the world
stops copying, hardly any beginning can be made.

To copy or not to copy is an alter ego of to be or not to be. The act of copying is both a natural
phenomenon and a social fact. In nature every living organism including human beings are
programmed to copy. Copying is an innate and inherent quality of humans. Our genes, the basic
building blocks of our body and life, are programmed to copy and to replicate. Gene is encoded
as deoxyribonucleic acid (DNA). One of the essential characteristics of DNA is that it is a
copying material. Some copying of and by DNA therefore are necessary for our existence,
survival and for healthy life. Excessive, un-programmed and uncontrolled copying of DNA, like
excess of anything, is bad and devastating. When DNA starts copying in a manner (particularly
uncontrolled mutation) other than the manner in which it is programmed to copy, it creates
imbalance in the body causing diseases. When DNA starts excessive copying or stops copying,
we stop living and start dying. Humans, have been able to devise methods of editing some of
the manners of copying of and by DNA to restore normal pattern of copying. So some copying
by DNA is good and some of it is bad.
The act of copying is also a social fact. We copy. We copy consciously. We copy subconsciously.
We copy knowingly. We copy unknowingly. Copy we must. We copy our parents, our siblings,
our friends, our teachers, and others. Our learning process is mainly dependent on our ability to
copying. Most of the knowledge that we possess are copied, told, or acquired knowledge. For
educating kids parents are advised not to preach or teach them. Kids mostly learn by observing
their parents and others. Many a times the person being copied derives pleasure and satisfaction
and may also feel proud of the fact that he or she is being emulated and imitated. Imitation may
be flattering or otherwise. The intense desire of copying is deeply ingrained in us. This desire
influences our role orientation and role behavior. Copying is thus a habit. It is a social fact. It is a
reality.

We copy for various reasons: (i) learning, (ii) entertainment, (iii) flattering, and (iv) adding to the
existing knowledge. We copy and have to copy to create new knowledge. We create new
knowledge mostly by copying. Most of the knowledge we create are inspired by the existing

Page 190 of 255


knowledge and only add to the existing ones. Incremental and evolutionary development of
knowledge has been the rule of knowledge development. Exponential and revolutionary
development of knowledge has been the exception. We never or at least hardly create new
knowledge out of nothing. Copying is a necessity. It is a conditio sine qua non for existence.
However, copying is not the conditio per quam for a good and free life particularly in the realm
of knowledge. Unnecessary copying is a surest prescription for dependency. Dependency is
antithetical to freedom. It is the surest route leading to serfdom.

Although nature and society both recognize the value of copying, yet they discourage excessive
and unnecessary copying. Nature allows copying of and by DNA in a given sequence. If the
given DNA sequence is disturbed by mutation or otherwise, diseases are the natural
consequence. Similarly, society allows us to copy and replicate (reproduce) ourselves by
establishing the institution of marriage. Babies born to a married couple are legitimate according
to both social and legal norms. However, babies born to an unmarried couple are illegitimate.
Though the babies born in either ways necessarily inherit the DNA of their ancestors. The nature
does not discriminate, on the basis or otherwise of marriage, in transmitting the DNA from one
generation to another generation. The society, however, approves only the first method of
copying (procreation) and disapproves of the second method. Excessive copying (procreation)
causes population explosion. Society therefore discourages excessive and illegitimate copying.
Society also discourages copying in a manner we are not programmed to copying. Two very
popular sayings in India may be fruitfully used to explain the social imagination about copying.
Translated in English language the first saying roughly means: if a crow tries to imitate the gait
of a swan, it may forget its own gait, and the second saying roughly means: imitating monkey.
These sayings have pejorative connotations. Copying therefore is a necessary but not a sufficient
condition for the existence and development. For learning and advancement of learning, copying
is a condition necessary but not a condition sufficient. It is not a condition sufficient for learning
and advancement of learning. Learning by copying may replicate the same learning repeatedly
yielding nothing but stagnation and dependency. Dependency is fundamentally problematic. It is
the fertile mother of all problems. Dependency is antithetical to freedom. If we, as a society or as
a country, remain dependent on the knowledge and technology produced by others and keep on
copying with impunity we will only be able to copy what is made accessible to us by others and
hence will remain dependent. Dependency on knowledge of others has the potential and the
tendency to make us intellectually colonized. Intellectual colonialism and imperialism is more
devastating than political and economic colonialism. As an intellectual colony we will not be
in a position to take meaningful decision for ourselves. We as a society will also be labelled as an
imitating or mimicking society. This charge of mimicking is not as serious as the problem of
dependency. Let us understand the problem of dependency with the help this multiple choice
question: in the market place of ideas, as a country, India is a: (a) producer of new knowledge
and new technology, (b) distributors of new knowledge and new technology, (c) importer and
consumer of new knowledge and new technology. One of the important instructions for selecting
the most appropriate choice is that only one choice is correct. I have put this question to the
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audience in many seminars and workshops and invariably the choice of the audience was for the
alternative (c) importer and consumer of new knowledge and new technology. The other question
that I have asked is: Name the most authoritative textbook in your discipline. The answer has
been the name of a book by a foreign author.

Legal institution being a social institution has responded to the act and the fact of copying in
many ways. One of the responses has been through the route of copyright law. Copyright law, in
theory, was born for advancement of learning and to promote authorship. Historically, it was
born to protect and promote the interests of printers and publishers. The void between the theory
and the fact is congenital and has been widening with the course of time. Primary purpose of the
copyright law, at least in theory, is advancement of learning and dissemination of knowledge.
Copyright law recognizes and institutionalizes the natural and social phenomenon of both
copying and not copying. It seeks to encourage advancement of learning in two ways. One, by
attaching evil consequences to illegitimate forms of copying. Evil consequences are necessary
for two reasons. First, to advance legitimate method of creation. Second, some forms of copying
are harmful to the society in the same way as some forms of copying is harmful in case of DNA.
Two, by recognizing some copying as fair dealing or fair use. Fair dealing is a defence to
copyright wrong.

Some acts of copying, therefore, are acts recognized and approved by the trinity: nature, society
and law. Freedom is good. Restriction is bad. We want both freedom and restriction; reasonable
restrictions are necessary to further freedom. However, we want freedom as a matter of rule and
reasonable restriction as exception. Freedom of thought perhaps is the only freedom without any
restriction. Every other freedom is subject to reasonable restrictions. We are absolutely free to
think and not to think as we like. Man made law neither has the means nor the capacity to know
and try thinking. Thinking when manifested either by words or by deed, the manifestation may
become the subject of legal concern. Law responds at least in three ways on the basis of type of
manifestation of thinking. One, some manifestations are encouraged, protected or incentivized,
e.g., formulation of new theories, new scientific principles, new research, invention, new art,
literary, artistic, dramatic works. Two, law attaches evil consequences to some manifestations,
e.g., use of abusive or offending language, or commission of any other act made punishable by
law. Three, law regulates certain manifestations, e.g., freedom of speech and expression.
Freedom of speech and expression are fundamental rights. It is freedom which the Constitution
calls fundamental. Restrictions are not fundamental. Reasonable restrictions on fundamental
rights are part of fundamental rights. Such restrictions are necessary for furtherance of freedom.
The Supreme Court of India has read many a rights in the provisions of Articles 19 and 21 of the
Constitution of India. So far the Court, however, has not explicitly read right to copy as implicit
in the provisions of Articles 19 (1) (a) and 21 of the Constitution of India. Though right to
copying seems to be necessarily implicit in the right of freedom of speech and expression for
the act of copying is both a natural phenomenon and social fact. If a thing is social, that thing is
not antisocial. If a thing is not antisocial, it is definitely not illegal. The copyright law recognizes
Page 192 of 255
the act and the fact of copying by recognizing certain acts (fair dealing) which do not constitute
infringement of copyright.

The Act makes certain provisions relating to fair dealing in Section 52 of the Act. The
provisions of this Section are in the nature of defenses and are not in the nature of right. The
provisions of Section 52 of the Act are in furtherance to freedom of speech and expression. An
act of copying which falls under any of the provisions of Section 52 of the Act is not a copyright
wrong. The burden of proving that an act of copying is not infringing falls on the defendant. Had
the provisions of Section 52 been in the nature of right, the burden of proving, perhaps, would
have been otherwise. In this paper, however, we are neither concerned with the provisions of
Section 52 nor we will deal with the normative question: should the provisions of Section 52 be
elevated to the status of right? Suffice it to say, for purposes of this paper, that constituents of
copyright infringement and constituents of fair dealing must be taken into account to
comprehend copyright wrong. In other words, provisions of Section 51 minus the provisions of
Section 52 constitute copyright wrong.

In this paper an attempt has been made to identify copyright wrongs of civil nature. 0 These civil
wrongs are in the nature of statutory tort for the duties not to infringe copyright are prescribed by
the Act. The infringement of such duties generally creates strict or no-fault liability. In some
cases of infringement, however, the defendant may be absolved of liability if he successfully
establishes infringement without knowledge. In all cases of infringement without
knowledge, the extent of liability may be reduced to injunction only, i.e., damages or accounts
may not be granted by the Court0. In other words, existence of liability in most cases is strict.
The extent of liability depends on knowledge and absence of knowledge.
In a copyright infringement suit the plaintiff must prove by clear and cogent evidence 0 that the
defendants work0 is substantially similar 0 to the work of the plaintiff. It is a well-settled
principle of law that the standard of proof in criminal cases is the highest. In criminal cases the

0 The evil consequences (punishment) attached to copyright wrongs have been discussed in
Ghayur Alam, Intellectual Property Wrongs, 2 NLIU Journal of Intellectual Property Law
5-38 (2013).

0 See, Section 55 of the Act.

0 R.G. Anand v. Delux Films [1979] 1 S.C.R. 218, 249 (FB), Justice Murtaza Fazal Ali delivered the judgment
and observed that, As a violation of copyright amounts to an act of piracy it must be proved by clear and cogent
evidence.

0 Section 2(y) of the Act defines the work. It provides as under: work means any of the following works,
namely:-(i) a literary, dramatic, musical or artistic work; (ii) a cinematograph film; (iii) a sound recording.

Page 193 of 255


standard of proof is: beyond reasonable doubt. In a civil case the standard of proof is balance
of probabilities.0 In a civil proceeding relating to copyright, the standard of proof is clear and
cogent evidence. This standard of proof is higher than the standard of proof required in ordinary
civil proceeding. The Court in R.G. Anand0 did not bring out the reason for application of a
higher standard of proof in copyright matters except saying it is an act of piracy. A closer and a
deeper look may reveal the reason for this departure from the standard of preponderance of
probabilities. It seems that the Court was saying, You have a monopoly. Therefore, you must
bring in clear and cogent evidence to prove that the defendant has wronged your monopoly. In
your case, mere proof that preponderance of probabilities are on your side will not suffice. Law
values public domain and access to knowledge more preciously than the copyright. Although
the observation as to clear and cogent evidence by the Supreme Court has been made in a
copyright matter, yet the logic of this observation may be extended to other members of family
of intellectual property rights for the simple reason that every member of IP family is a kind of
monopoly. It may be said that proving a copyright wrong is not an easy task. It requires the
plaintiff to discharge a very heavy burden of proof. On the one hand, law places a very high
burden on the shoulder of the plaintiff and, on the other hand, the law arms the defendant with so
many shields. The strongest shield in the hands of defendant is the defence of fair dealing 0
incorporated by Section 52 of the Act. In addition to the defence of fair dealing, the defences of
merger doctrine0, doctrine of scenes a faire0, and de-minimus principle0 are also available to
the defendant. In other words, even if the plaintiff discharges his burden of proving by clear and
cogent evidence that the defendant has made a substantial copy of the work of the plaintiff, the
defendant may escape liability by pleading any of the defences available to him. The sword of
the plaintiff, therefore, must be very sharp and heavy. The sword must be able to disarm the
defendant of all his defences.

0 Supra n. 4 in R.G. Anand at p. 260.

0 LORD DENNING, LANDMARKS IN THE LAW 192(London: Butterworths, 1984)

0 Supra n. 4 in R.G. Anand.

0 See, Section 52 of the Act.

0 Ideas are free to all. In some circumstances, however, there is a merger of idea and expression, i.e.,an idea is
inseparably tied to a particular expression. In such instances rigorously protecting the expression would confer a
monopoly over the idea itself.

0The doctrine is often invoked to immunize from liability similarly of incidents or plot that necessarily follows from
a common theme of setting.

0 The maxim means that law will not resolve petty or unimportant disputes.
Page 194 of 255
Copying of an idea, strictu sensu, is not a copyright wrong but copying the mode of expression
of an idea may be a copyright wrong, in a civil proceeding, only if (i) the plaintiff successfully
proves by clear and cogent evidence that the defendant has made either an identical or a
substantial copy of the work of the plaintiff, and (ii) the defendant fails to plead or prove any of
the defences available to him.

Therefore, in a copyright lis, the plaintiff has a heavier burden of proof in comparison to the
weight of preponderance of probabilities the standard of proof applicable to other ordinary
civil proceedings. The clear and cogent standard of proof seems to be closer to the standard of
criminal law, i.e., the prosecution must prove the guilt of the accused beyond all reasonable
doubts. The purport of copyright law seems to enrich public domain and expects the monopoly
owner to prove infringement by clear and cogent evidence, i.e., you have the monopoly you must
bring in clear and cogent evidence of infringement. If the plaintiff successfully discharges his
burden, liability under the copyright law may come into existence. Further, in case of
unregistered copyright the burden of proof on the shoulder of the plaintiff is heavier in
comparison to registered copyright. For, in case of latter registration creates a prima facie
evidence of validity0 which is absent in case of the former. In case of registered copyright if the
defendant is assailing the validity of the copyright, he must rebut the presumption of validity of
copyright. Rebuttal of this presumption, however, does not result in the determination of
infringement, for, infringement must be proved by the plaintiff both clearly and cogently.
Copyright law attaches evil consequences of: (i) injunction, and or damages, or accounts,
discovery, forfeiture and seizure if the plaintiff proves by clear and cogent evidence that the
defendant has substantially or materially copied from the work of the plaintiff.

The burden of the plaintiff is discharged if he successfully establishes that the work 0 the
defendant is substantially (or materially) similar to the work of the plaintiff. The defendant may
bring in evidence and argument to prove that the two works are not substantially similar. The
other defences available to the defendant are that the work of the plaintiff is not: (i) a work in the
copyright law sense, (ii) original in the copyright law sense, (iii) not fixed on a tangible
medium,0 (iv) merger doctrine (v) scene a fair or (vi) de minimis. Further, the defendant may
plead any of the grounds enumerated under Section 52 of the Act to escape liability.

0 See, Section 48 of the Act.

0 See, provisions of Sections 2 (y) and 13 of the Act for the meaning of work. Also see, Ghayur
Alam, Qualification of Copyright Candidate in India, 1 JOURNAL OF INTELLECTUAL
PROPERTY RIGHTS 17, 22-33 (2012).

0 Id. at 22-62.
Page 195 of 255
Since the role of Prince of Denmark (lead role) in the drama of copyright infringement is played
by the character substantial similarity. Existence of substantial similarity in the expressions
(not substantial similarity of ideas, or of subject matters, or of themes, or of legendary or
historical facts0) of the work of the defendant with of the plaintiffs is necessary to constitute
copyright wrong. A clear understanding of the meaning of basic copyright vocabularies will help
understand the meaning of copyright wrong. To understand the meanings of substantial
similarity, of idea, and of expression is a necessity.

Part II
Substantial Similarity: Matter of Irresistible Impression

In this paper, the three terminologies: (i) substantial similarity, (ii) material similarity, and
(iii) fundamental similarity will be used interchangeably. Neither of these terms has been
defined by the Act. Neither term has an entry in the dictionaries. 0 To constitute a copyright
wrong, the work of the defendant must be either identical or substantially similar to the work of
the plaintiff. In case of identical works there is hardly any difficulty. It is the determination of
substantial similarity which is problematic. The identicalness or substantial similarity of the
two works relate to the mode of expression of the work. It does not relate to the idea
underlying or contained in the two works, for, copyright does not protect an idea. A clear
understanding of the meaning of the words idea, expression, substantial, material and
similarity will help us better appreciate the nuances of copyright wrong. The table given below
records the dictionary meaning of the words idea and expression.

2.1Dictionary Meaning

0 Supra n. 4 in R.G. Anand.

0 BLACKS LAW DICTIONARY, 6th ed., (West Publishing, 1991); P.RAMANATHA AIYER, THE LAW
LEXICON THE ENCYCLOPAEDIC LAW DICTIONARY, 2 edn. Y.V. Chandrachud Ed. (New Delhi: Wadhwa and
Company, 2000); THE CONCISE OXFORD DICTIONARY, 10 th ed., (New York: Oxford University Press, 1999);
THE OXFORD ADVANCED LEARNERS DICTIONARY, 7th ed., (New York: Oxford University Press, 2005);
AVTAR SINGH, COLLEGE LAW DICTIOANRY, 2nd Ed., (Nagpur: Lexis Nexis Butterworth Wadhwa (2013)
(2002); BRYAN A GARNER, A DICTIONARY OF MODERN LEGAL USAGE, 2 ed., (New York: Oxford
University Press, 1995).

Page 196 of 255


S. Name of the Dictionary Meaning of Idea Meaning of Expression
No.

1 P.RAMANATHA AIYER, An object of the mind existing in A word, phrase or form of


THE LAW LEXICON apprehension, thought or conception. speech.
THE ENCYCLOPAEDIC
LAW DICTIONARY The concept of work which is not minutely The act of manifesting by action
detailed. or language.0

The image as it exists in the mind as a


matter of reflexion is an idea.0

2. THE CONCISE A thought or suggestion as to a possible course The action of expressing


OXFORD DICTIONARY of action. something. A word or a phrase
expressing an idea.0
A mental impression.

A belief.0

3. THE OXFORD PLAN/ THOUGHT a plan, thought or SHOWING FEELINGS/


ADVANCED suggestion, especially about what to do in a IDEAS things that people say,
LEARNERS particular situation. write or do in order to show
DICTIONARY their feelings, opinions and
IMPRESSION a picture or an impression in ideas: an expression of
your mind of what somebody/ something support.0
like.

OPINION an opinion or a brief about


something0

0 P.RAMANATHA AIYER, THE LAW LEXICON THE ENCYCLOPAEDIC LAW


DICTIONARY, 3rd edn. Y.V. Chandrachud Ed. 1735 (New Delhi: Wadhwa and Company, 2005).

0 Id.

0 THE CONCISE OXFORD DICTIONARY, 10 th ed.,704(New York: Oxford University Press,


1999).

0 Id. at 502.

0 THE OXFORD ADVANCED LEARNERS DICTIONARY, 7 th ed., 768 (New York: Oxford
University Press, 2005).

0 Id. at 538.
Page 197 of 255
S. Name of the Dictionary Meaning of Idea Meaning of Expression
No.

4. COLLEGE LAW An object of the mind exiting in A word, phrase or form of


DICTIONARY apprehension, thought or conception. speech; the act of manifesting
by action or language.0
IDEA, NOTION, CONCEPTION,
PERCEPTION, SENSATION

The perceiving of something external by the


mind through the senses is called a
sensation; the image as it exists in the mind
as a matter of reflection is an idea. When
two or more ideas are combined so that the
expression of them would take the form of
an affirmation, that is a notion. Conception
is a conscious act of the understanding,
assimilating objects or impression.
Sensation is physical, and perception that
operation of the mind in regard to external
things which follows and is based upon
sensation

IDEA The concept of a work, which is not


minutely detailed. (copyright).0

5. A DICTIONARY OF Many writers seem unable to say idea without No entry


MODERN LEGAL adding or concept. The habit is a bad one, the
USAGE two words being virtually interchangeable
eg.: [T]hey are all appealing to the same
fundamental idea or concept, though it is
extraordinarily difficult to define exactly the
nature of that idea or concept. Edward Jenks,
The Book of English Law 2 ( P. B fairest ed.,
6th ed., 1967). In that sentence idea alone
would suffice in both places.0

0 AVTAR SINGH, COLLEGE LAW DICTIOANRY, 2nd Ed., 362 (Nagpur: Lexis Nexis
Butterworth Wadhwa, 2013)(2002).

0 Id. 295.

0 BRYAN A GARNER, A DICTIONARY OF MODERN LEGAL USAGE 413 (Oxford: Oxford


University Press, 1995).
Page 198 of 255
S. Name of the Dictionary Meaning of Idea Meaning of Expression
No.

6. Apple Dictionary Version1. a thought or suggestion as to a 1.the process of making


2.2.3 (118.5) possible course of action. known ones thoughts
or feelings. the
a concept or mental impression. conveying of feeling in
the face or voice, in a
an opinion or belief. work of art, or in the
performance of a piece
2. (the idea) the aim or purpose. of music.

3. Philosophy (in Platonic thought) an 2 .the look on someones


eternally existing pattern of which face that conveys a
individual things in any class are particular emotion.
imperfect copies.
3.a word or phrase, esp.
(in Kantian thought) a concept of an idiomatic one, used
pure reason, not empirically based to convey an idea.
in experience.
Mathematics - a
ORIGIN late Middle English (Sense collection of symbols
3): via Latin from Greek idea form, that jointly express a
pattern, from the base of idein to quantity.
see.0
4.the production of
something, esp. by
pressing or squeezing it
out.

5. Genetics the
appearance in a
phenotype of a
characteristic or effect
attributed to a
particular gene. (also
gene expression )the
process by which
possession of a gene
leads to the
appearance in the
phenotype of the
corresponding
character.

ORIGIN late Middle


0 See, New American Oxford Dictionary (Apple Computers, Digital Version 2.2.3 (118.5),
(2005-2011).
Page 199 of 255
A perusal of the above recorded entries reveals that idea is fundamentally and inseparably
related to act of mind and expression relates to act of body or act of any part of body.
In the following table, we record the dictionary meaning of the words: substantial,
substantially and material and materially.

S. Name of the Dictionary Meaning of Substantial and Meaning of Material and


No. Substantially Materially

1 P.RAMANATHA AIYER, THE Substantial is not the same as As an adjective, relating to or


LAW LEXICON THE not unsubstantial i.e., just consisting of matter
ENCYCLOPAEDIC LAW enough to avoid the de minimis corporeal; not spiritual;
DICTIONARY principle. One of the primary physical; substantial as
meaning of the word is equivalent opposed to formal. (Johnson
to considerable, solid, or big.0 Dict.)

Substantially- In a substantial As a noun, the substance or


manner, so as to be substantial; matter of which anything is
essentially. The word made (Webster Dict.);
substantially means as far as everything of which anything
practicable or so far as is made (Bouvier Dict.)0
possible.0

0 Id.

0 Supra n. 18 in P.RAMANATHA AIYER, at 4526.

0 Id. at 4529.

0 Id. at 1203.
Page 200 of 255
S. Name of the Dictionary Meaning of Substantial and Meaning of Material and
No. Substantially Materially

2. BLACKS LAW DICTIONARY Of real worth and importance; of Important; more or less
considerable value. Belonging to necessary; having influence or
substance; actually existing; real; effect; going to the merits;
not seeming or imaginary; not having to do with matter, as
illusive; solid; true; veritable. distinguished from form.
Something worthwhile as Representation relating to
distinguished from something matter which is so substantial
without value or merely nominal. and important as to influence
Synonymous with material.0 party to whom made is
material.0
Substantially-Essentially; without
material qualification; in the main;
in substance; materially; in a
substantial manner. About,
actually, competently, and
0
essentially.

3. THE CONCISE OXFORD Of considerable importance, size As a noun, the matter from which
DICTIONARY or worth. Important in material or a thing is or can be made;
social or material terms.0 information or ideas for use in
creating a book, performance,
Substantially- To a great or or other work.
significant extent. For the most
part. Essentially.0 As an adjective, denoting or
consisting of physical objects
rather the mind or spirit;
important, essential, relevant.0

Materially- Substantially;
considerably.

In terms of material possession.0

0 BLACKS LAW DICTIONARY, 6th ed., 1428, (West Publishing, 1991).

0 Id.

0 Id. at 976.

0 Supra n. 20 in THE CONCISE OXFORD at 1430.

0 Id.
Page 201 of 255
S. Name of the Dictionary Meaning of Substantial and Meaning of Material and
No. Substantially Materially

4. THE OXFORD ADVANCED 1.large in amount, value or As a noun, a substance that


LEARNERS DICTIONARY importance. Considerable. things can be made from;
things that are needed in order
2. large and solid; strong built. to do a particular activity;
information or ideas used in
Substantially- Very much; a books.
lot.Mainly; in most details, even if
not completely.0 As an adjective, important and
needing to be considering.0

Materially in a noticeably or
important way. (sic)0

5. STROUDS JUDICIAL A word of no fixed meaning; it is an


DICTIONARY OF WORDS AND unsatisfactory medium for carrying
PHARSES the idea of some ascertainable
proportion of the whole.0

0 Id. at 879.

0 Id.

0Supra n. 22 in THE OXFORD ADVANCED LEARNERS at 1531.

0 Id. at 945.

0 Id.

0 DANIEL GREENBERG & ALEXANDRA MILLBROOK, STROUDS JUDICIAL


DICTIONARY OF WORDS AND PHARSES, Vol. 3, 2552 (London: Sweet & Maxwell, 2000).
Page 202 of 255
S. Name of the Dictionary Meaning of Substantial and Meaning of Material and
No. Substantially Materially

6. COLLEGE LAW DICTIOANRY Substantial is not the same as not The matter from which
unsubstantial i.e., just enough to anything is made that out of
avoid the de minimus principle. One which anything is or may be
of the primary meanings of the word made of such consequence
is equivalent to considerable, solid importance or significance as to
or big. be likely to influence the
determination of a course; to
The word Substantial when used alter the character of an
with reference to an injury caused or instrument etc; corporeal, of or
likely to be caused by a nuisance consisting of matter.0
only means actual, or real as
opposed to trivial, not serious, Materially Substantially
temporary, occasional, unimportant, essentially; in an important
imaginary or seeming. degree.0

Of importance and value; relating to


or proceeding from the essence of a
thing; of ample or considerable
amount or quantity. 0

Substantially- In a substantial
manner; so as to be substantial
essentially.0

0 Supra n. 24 in COLLEGE LAW DICTIOANRY at 739.

0 Id. at 739.

0 Id. at 491.

0 Id. at 492.
Page 203 of 255
S. Name of the Dictionary Meaning of Substantial and Meaning of Material and
No. Substantially Materially

7. Apple Dictionary Version 2.2.3 1. of considerable importance, size, 1. the matter from which a thing
(118.5) or worth. strongly built or made. is or can be made.
(of a meal) large and filling.
important in material or social 2. facts, information, or ideas for
terms; wealthy. use in creating a book or other
work. items, esp. songs or
2. concerning the essentials of jokes, comprising a
something. performers act.

3. real and tangible rather than 3. cloth or fabric.


imaginary.
4. denoting or consisting of
ORIGIN Middle English: from Old physical objects rather than
French substantiel or Christian the mind or spirit. concerned
Latin substantialis, from with physical needs or desires.
substantia being, essence.0 concerned with the matter of
reasoning, not its form.
Substantially- 1. to a great or
significant extent. 5. important; essential; relevant.
chiefly Law (of evidence or a
2. for the most part; essentially.0 fact) significant, influential, or
relevant, esp. to the extent of
determining a cause or
affecting a judgment.

ORIGIN late Middle English


(in the sense relating to
matter): from late Latin
materialis, adjective from
Latin materia matter.0

Materially

1.[often as submodifier ]
substantially; considerably.

2. in terms of wealth or material


possessions.0

0 Supra n. 27 in New American Oxford Dictionary.

0 Id.

0 Id.
Page 204 of 255
In the following table, we record the dictionary meaning of the words: similar, similarity and
identical.

S. Name of the Dictionary Meaning of Similar and Meaning of Identical


No. Similarity

1 P.RAMANATHA AIYER, THE Sameness in essential particulars. 1. Exact similar for all
LAW LEXICON THE Similar denotes particular practical purposes.
ENCYCLOPAEDIC LAW resemblance, and may also denote
DICTIONARY sameness in all essential 2. The very same, expressing
particulars.0 or resulting in identity.0

2. BLACKS LAW DICTIONARY No Entry. Exactly the same for all


practical purposes.0

3. THE CONCISE OXFORD Derivative (noun) under the word1. Exactly alike.
DICTIONARY similar of same kind in
appearance, character, or quality,2. Expressing an identity.0
without being identical.0

4. THE OXFORD ADVANCED The state of being like 1. Similar in every detail.
LEARNERS DICTIONARY [somebody/something] but not
exactly the same.0 2. the same.0

0 Id.

0 Supra n. 18 in P.RAMANATHA AIYER at 4374.

0 Id.

0 Supra n. 32 in BLACKS LAW DICTIONARY at 745.

0 Supra n. 20 in THE CONCISE OXFORD DICTIONARY at 1337.

0 Id. at 705.

0 Supra n. 22 in THE OXFORD ADVANCED LEARNERS DICTIONARY at 1422.

0 Id. at 769.
Page 205 of 255
S. Name of the Dictionary Meaning of Similar and Meaning of Identical
No. Similarity

5. COLLEGE LAW DICTIOANRY With nothing added as The very same; expressing
distinguished from rigorous; as or resulting in identity.
distinguished from compound.0
Exactly similar for all
practical purposes.0

6. Apple Dictionary Version 2.2.3 1. the state or fact of being similar.


(118.5) a similar feature or aspect.

2. resembling without being


identical.

3. Geometry (of geometric figures)


having the same shape, with the
same angles and proportions,
though not necessarily of the
same size.

ORIGIN late 16th cent. (also as a


term in anatomy meaning
homogeneous): from French
similaire or medieval Latin
similaris, from Latin similis like.0

In view of the numerous meanings of a word, it may be said that dictionaries can only be used to
begin with but cannot be used to determine the meaning of a word. When we ask: which
meaning out of the several meanings is the meaning of a word for our purposes, the dictionary
cannot provide an answer. In a such a situation we have to look somewhere else. In the following
we make an attempt to understand the concepts of idea and expression.

2.2 Idea and Expression

An idea may be old. It may be new. It may be useful. It may be useless. It may be idiotic. It may
be a flash of genius. It may be constructive. It may be destructive. It may be good. It may be bad.

0 Supra n. 24 in COLLEGE LAW DICTIOANRY at 719.

0 Id at 739.

0 Supra n. 27 in New American Oxford Dictionary.


Page 206 of 255
It may conform to and support the existing system of beliefs. It may be iconoclastic. In the
ultimate analysis, it provides justification, explanation, manner of making or doing something. It
is a product of mind. The world certainly would have been poorer but for the ideas. The world
has been, is, and would be better or worse in terms of fraternity, liberty, equality, peace,
prosperity, development, and happiness because of idea. It is neither the clash of culture nor the
clash of religion but the clash of ideas which is producing the problems of terrorism by both
State and non-state actors, poverty, hunger and exploitation. Idea of Hitler was an idea. Idea of
Gandhi was also an idea. No philosopher, no thinker, and no scientist can downplay the
significance of ideas. Monopolization of ideas is hardly supported by law except by way of trade
secret. Ideas are necessary for existence, for survival, for progress, for development and for
happiness. Ideas have the power of defining. Attempt to define an idea has hardly been
successful. John Stuart Mill cites one of the conversations he had with his father James Mill in
the following words:

I remember at some time in my thirteenth year, on my happening to use


the word idea, he asked me what an idea was; and expressed some
displeasure at my ineffectual efforts to define the word:0

The dialogue between the father and the son shows that the father was expecting from a thirteen
years old son to know the meaning of idea in precise terms. The story also tells us that the word
idea is central to intellectual discourse. It may be said that ideas are of two types. First, ideas
based on facts, observation, experience and experiment. Second, ideas based only on ideas,
imagination, epiphany, or fantasy and never ever based on facts, observation, experience or
experiment. Every reasonable man has at least three abilities. First, ability to perceive facts
through senses. Second, ability to conceive an idea in the mind with or without the help of facts.
Third, ability to relate one phenomenon with other phenomenon, one phenomenon with an idea,
an idea with a phenomenon, an idea with another idea. The ability to perceive is present in
almost equal measure in every reasonable man. The ability to conceive a new idea is not so
equally distributed. The ability to relate is least equally distributed. Coming up with a new idea
with or without the help of known or unknown facts is not the main forte of every reasonable
man. Generally, creativity is an act of a rational being and not of a reasonable being. Reasonable
beings have the ability to reproduce themselves through sexual union, copying or otherwise and
so do the non-reasonable beings like animals have the ability to reproduce themselves. Creating
with and from mind seems to be the act of rational beings alone. Rational beings generally create
new ideas with the help of existing ideas. However, some ideas may be created out of nothing.
Generally the progression of ideas is mathematical, incremental and evolutionary. Exceptionally,

0 JOHN STUART MILL, AUTOGRAPHY 14 (Penguin Classics 1990) (1873). Available at


http://ebooks.adelaide.edu.au/m/mill/john_stuart/m645a/index.html.

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development of ideas may be geometrical, exponential, and revolutionary. Creativity is generally
determined by the destination where the existing and known ideas are taken to. Creativity may
lie in the fact that the new idea has not been borrowed from anyone or anywhere. New ideas
generally question the existing ideas and seek to provide an alternative therefor.

Significance of idea has been recognized and advocated by almost every thinker and philosopher.
The proposition, No one stop an idea whose time has come has become a clich in intellectual
discourse. According to Isaiah Berlin, The German poet Heine, in one of his famous writings,
told us not to underestimate the quiet philosopher sitting in his study; if Kant had not undone
theology, he declared, Robespierre might not have cut off the head of the King of France. 0 It
appears that idea is so basic, so fundamental and so necessary that its existence as publici
juris is non-negotiable. It is not a thing of commerce. It cannot be owned by one to the
exclusion of others. It is necessary for everyone. No member of IP family, except trade secret,
protects an idea per se. This is why copyright law says hands off to ideas. Let ideas remain
in the public domain.

Now we move to understand the concept of expression.

Humans have the innate and inherent desire to express themselves. This desire is determined by
our genes. One of the features of genes is that they express and want to express themselves.
Some of them may remain recessive though and express themselves, later. We would not have
been humans but for the fact that the genes expressed themselves in such a way that we are
expressed as humans. We express ourselves in at least three ways. One, by conduct. Two, by
words (oral or written), symbol, or gesture. Three, by silence. Expression by conduct may take
several forms: acting, dancing, singing, music, cinematograph film, running, physical workout,
acrobatics, drama, gymnastics, swimming, playing, mimicking, mime, imitating, etc. Expression
by words, symbol or gesture includes speech, lecture, novel, script, poem, drawing, painting,
books, research paper, etc. Silence is also a form of expression for it may be have its own
sounds.

The choice of words, arrangement of words, style of presentation, effectiveness of


communication, brevity and felicity of expression make a writer, a poet, a script writer, essayist,
a copywriter, a play writer, a novelist, or a researcher. Similarly, a performer, a dancer, a
musician, a singer, a lecturer, an actor, a lawyer becomes popular by the manner of her
expression. The depth of idea and idea expressed may not immediately capture the attention of

0 Isaiah Berlin, A Message to the 21 st Century, THE NEW YORK REVEIW OF BOOKS
(October 23, 2014).
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the reader or audience. The manner and the style of presentation of the idea may capture or
distract the attention of reader or audience. Ideas by and themselves may not appear to be
appealing, or aesthetic, or of utility. Ideas need a Shakespeare, a Goethe, a Prem Chand, a
Ghalib, a Mir.

Every human being is an individual. As an individual, he is different from every other


individuals. Although at the genetic level the difference between one individual and others is less
than one per cent. This less than one per cent difference brings about huge differences in our
phenotype and behaviour. Let us take example of the thumb impression. At present the
population of the world is more than seven billion. Billions of people must have born and died.
But the thumb impressions of no two individuals are the same. Similarly, the behavior, conduct,
speech, writing style, or eating habit of no two individuals is the same. It follows from here that
the expression of idea by no two individuals can be the same, unless one of them has copied,
imitated, or emulated the expression of the other either consciously or subconsciously. This is the
point that copyright law emphasizes. The copyright law says, You want to copy the idea, do it.
But do not borrow the expression of the other. The expression must be yours. It must originate
from you. Your expression should not be a copy of the expression used by others. Your
expression will be copy of the expression of the other, if it gives an irresistible impression, to an
ordinary spectator, reader or audience, of the mode of expression used by any other person. At
this juncture, it worthwhile to make a distinction between copyright wrong and plagiarism.
First, former is an economic wrong and the latter is an academic wrong. Second, copying of an
idea does not constitute a copyright wrong, but it does constitute plagiarism. Third, the defendant
cannot escape liability under copyright law merely by showing that he has properly
acknowledged the plaintiff, but the charge of plagiarism may be denied by showing full and
proper acknowledgment of the work of plaintiff.

An idea may exist without being expressed. An expression generally communicates some
meaning or some idea. Expression is a translation of an idea. Expression brings the idea from the
mind into the world. Expression is determined or is at least guided by an idea. We may
distinguish an idea from the idea involved in its expression. Same idea may be expressed in a
variety of ways by the same person or by different persons. Some expressions are attractive and
some are repulsive. It is the idea employed to express an idea which makes it attractive or
otherwise.

Now we proceed to find the meaning the words as interpreted - constructed by Courts.

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2.3Interpreted - Constructed Meaning

The device of interpretation-construction is used by Courts to determine semantic content and


define the legal effect of words used in a Statute or elsewhere. Since words have multiple
meanings, the device is primarily used to make a selection of meaning according to the context
of the text. Context itself is a thing which may fall either in the category of determinate reference
or in the category of indeterminate reference. At times the context is self revealing and at times it
is not self revealing. The problem of finding the meaning is heightened when the context is not
self revealing. The device of interpretation-construction, therefore, is used for myriad purposes.
First, to clarify and explain the meaning. Second, to avoid or at least minimize the ambiguity of
meaning. Third, to avoid or at least minimize the vagueness of meaning. Fourth, to avoid or at
least minimize the absurdity of literal meaning. Fifth, to avoid or at least minimize the
inconsistency in the meanings. Sixth, to avoid or at least minimize the repugnancy in the
meanings. Seventh, to avoid or at least minimize the unreasonable meaning and promote
reasonable meaning. Eight, to avoid or at least minimize the unjust and unfair meaning and
promote just and fair meaning. Ninth, to avoid or at least minimize the arbitrary meaning. Tenth,
to avoid or at least minimize the evil consequences of literal meaning. Eleventh, to bring about
certainty in the meaning. Twelfth, to bring about calculability and predictability about meaning.
Thirteenth, to avoid or at least minimize the litigation and social costs.

Let us see how the Courts have used the device of interpretation-construction in finding of the
meaning of the words of copyright law.

The Supreme Court in R.G. Anand v. Delux Films, 0observed that an idea, principle, theme, or
subject matter or historical or legendary facts being common property cannot be the subject
matter of copyright of a particular person. The Court further observed as under:
It is always open to any person to choose an idea as a subject matter and
develop it in his own manner and give expression to the idea by treating it
differently from others. Where two writers write on the same subject
similarities are bound to occur because the central idea of both are the
same but the similarities or coincidences by themselves cannot lead to an
irresistible inference of plagiarism or piracy.0
on a careful consideration and elucidation of the various authorities and
the case law on the subjectthe following propositions emerge:

0 Supra n. 4 in R.G. Anand.

0 Id. at 248.
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1. There can be no copyright in an idea, subject matter, themes, plots or
historical or legendary facts and violation of the copyright in such cases
is confined to the form, manner and arrangement and expression of the
idea by the author of the copyrighted work.

2. Where the same idea is being developed in a different manner, it is


manifest that the source being common, similarities are bound to occur.
In such a case the Courts should determine whether or not the
similarities are on fundamental or substantial aspects of the mode of
expression adopted in the copyrighted work. If the defendant's work is
nothing but a literal imitation of the copy-righted work with some
variations here and there it would amount to violation of the copyright.
In other words, in order to be actionable the copy must be a substantial
and material one which at once leads to the conclusion that the
defendant is guilty of an act of piracy.

3. One of the surest and the safest test to determine whether or not there
has been a violation of copyright is to see if the reader, spectator or the
viewer after having read or seen both the works is clearly of the opinion
and gets an unmistakable impression that the subsequent work appears
to be a copy of the original.

4. Where the theme is the same but is presented and treated differently so
that the subsequent work becomes a completely new work, no question
of violation of copyright arises.

5. Where however apart from the similarities appearing in the two works
there are also material and broad dissimilarities which negative the
intention to copy the original and the coincidences appearing in the two
works are clearly incidental no infringement of the copyright comes
into existence.

6. As a violation of copyright amounts to an act of piracy it must be proved


by clear and cogent evidence after applying the various tests laid down
by the case-law discussed above.
7. Where however the question is of the violation of the copyright of stage
play by a film producer or a director the task of the plaintiff becomes
more difficult to prove piracy. It is manifest that unlike a stage play a
film has a much broader prospective, wider field and a bigger
background where the defendants can by introducing a variety of
incidents give a colour and complexion different from the manner in
which the copyrighted work has expressed the idea. Even so, if the
viewer after seeing the film gets a totality of impression that the film is
by and large a copy of the original play, violation of the copyright may
be said to be proved.0

0 Id. at 249.
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In R. Madhavan v. S.K. Nayar,0 the question before the Kerala High Court was whether the
defendant had infringed the copyright in the novel of plaintiff by using it in the script of the film
and whether the script of the film and arrangements of the same situations and characters and
structure of the theme of the film are colourable imitations, of script, arrangements of scenes
situations and characters and structure of the theme in the novel of the plaintiff. The Court found
that material incidents situations and scenes portrayed in the film were substantially and
materially different from the situations incidents and scenes portrayed in the novel of the
plaintiff, and observed as under:

[T]hat mere introduction of some changes here and there in order to


disguise the attempt at plagiarism or interchanges of relative position in
which the principal actors stand to create an impression that the story of
the film is entirely different is not sufficient to rule out the theory of
colourable imitation. The safest test to determine whether or not there has
been a violation of copyright is to find out if the reader, spectator or
viewer after having read or seen both the works can get an impression that
the impugned work or film is an imitation of the other.0

In Anil Gupta v. Kunal Dasgupta,0 the question before the High Court was whether the
idea conceived by the plaintiffs for producing a reality TV programme Swayamvar was a novel
concept and same could be protected. Referring to the decisions of Supreme Court, the Court
observed as under:

[W]hen the idea is developed and even if there are similarities, substantial
fundamental aspect of the mode of expression adopted in the copyright
work and the defendants work is literal imitation to the copyright work
with some variations, it would amount to violation of the copyright.0

0 AIR1988Ker39. Kerala High Court (DB) Justice P.K. Shamsuddin delivered the judgment.

0 Id at 45.

0 2002(25) PTC1(Del). Delhi High Court (SB) Justice Vijendra Jain delivered the judgment.

0 Id at 21.
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In Barbara Teler Bredford v. Sahara Media Entertainment, 0 answering the question
why the theme of a play, like the marriage of an heir contingent to a beggar girl does not create a
copyright, the High Court observed as under:

The answer is two-fold. The first answer is that these characters are
common, no doubt, but too common. Therefore, there is no protection
given by the law to the first writer who is not really the first writer at all.
The above idea of the risk of a fortune being lost to others, the other idea,
of, say, two persons looking alike, are not the subject of the authors
original literary work. The second reason for not giving protection in this
regard is even more important. If plots and ordinary prototype characters
were to be protected by the copyright law, then soon would come a time in
the literary world, when no author would be able to write anything at all
without infringing copyright. . . The law of copyright was intended at
granting protection and not intended for stopping all literary works
altogether by its application.0
On the question that how one distinguishes between a copy of an idea or a plot, which is
permitted, the Court observed as under:

The best answer is that there are no final answers yet, and there is no hope
that there will be any final answers ever. These are situations of legal
assessment. Just as there is no mathematical formula for finding out when
it is just and convenient to appoint a receiver, similarly, although at a more
refined level of intellectual operation, there is no final and exact way of
determining what is a copy, or what is a copy of the expression, or what is
a copy of the idea, or what is a copy of the idea only. This is why copy has
never been attempted to be defined in any of the copyright Acts either here
or in England, or to the best of our knowledge (which is not much),
anywhere else in the world. It is an exercise doomed to failure from the
very beginning. It will either become too long for an Act, seeking to
encompass in it all the judicial pronouncements of value of all the civilized
countries in the world in all the different cases or it would be short, simple
and wrong.0

In NRI Film Production Associates (P) Ltd. v. Twentieth Century


0
Fox Film Corporation, the question before the Karnataka High Court was whether the

0 2004(28) PTC474(Cal). Calcutta High Court (DB) Justice Ajoy Nath Ray delivered the
judgment.

0 Id. at 489-490.

0 Id. at 490.
Page 213 of 255
appellants film infringes the copyright in the film script of the respondent. The Court observed
as under:

There is no comparative basis between plaintiffs film and film script of


the respondent. . .The treatment and presentation of the concept in the film
is totally different from the script. . .The picturisation of blasting of
nuclear missiles, disruption of communications, traffic jams are nothing
but scene a faire commonly found in scientific fictions.
In fact (work of the respondent)0 is only at the stage of film script, a
reading material. Whereas (work of the appellant) is a visual
material. The presentation and picturisation of ideas into events in a visual
form involves technical skills and expertise of photography. The depiction
of the events of nuclear missile attacks, the traffic jams, disruption of
communications, devastating effects of the nuclear bombardment could get
altogether a different photographic treatment varying from person to
person. The photographic expression of the work in the film would itself
constitute a copyright.0

In The Chancellor Masters and Scholars of the University of Oxford v.


Narendera Publishing

House,0 it was contended that the plaintiffs books have been reproduced by the defendant.
While deciding the issue relating to the merits of copyright protection; the Delhi High Court has
elaborated the Idea-Exression Dichotomy and the Doctrine of Merger as under:

A foundational element of copyright law is that it does not grant the author
of a literary work protection on ideas and facts . . . It is only the creative
expression of such ideas and facts that is rewarded by law, by conferring a
privilege to exclusively exploit such expression for a limited time. Law

0 MANU/Kar/0354/2004. (Karnataka High Court) Justice K. Sreedhar Rao delivered the


judgment.

0 Emphasis added.

0 Id. at Para 23.

0 2008(38)PTC 385(Del). Delhi High Court (SB) Justice S. Ravindra Bhat delivered the
judgment.
Page 214 of 255
does not protect every such expression. The law affords protection to
expressions that are fixed in a medium and are original. In India
Section 13 of the Copyright Act states that only original literary, artistic,
dramatic and musical works are subject matter of copyright. A literary
work, in order to qualify as work in which copyright can subsist, must
therefore be original.0

Regarding the doctrine of merger, the Court observed as under:

An aspect peculiar to copyright law, is the doctrine of merger, is involved


in this case. This doctrine posits that where the idea and expression are
intrinsically connected, and that the expression is indistinguishable from
the idea, copyright protection cannot be granted. Applying this doctrine
Courts have refused to protect the expression of an idea that can be
expressed only in one manner, or in a very restricted manner, because
doing so would confer monopoly on the idea itself.0

Regarding mathematical questions and answers, the Court observed as under:

Mathematical questions are expression of laws of nature. The discovery


of such laws cannot confer monopoly to those who describe it. The reason
is that language is a limited medium, which enables description of such
laws of nature in only a few ways. Recognition of copyright as inhering in
the questions themselves . . . without existence of the creative element of
originality would deny access to ideas, thus robbing one of the primary
objectives of copyright law (promotion of creativity) of vitality, thereby
stifling intellectual growth. Interestingly, Section 3(k) of the Patents Act,
1970 explicitly denies any form of patent protection to a mathematical
method or algorithms. Prima facie, Parliament could not have intended
that innovations such as new mathematical questions, denied benefit of
patent protection-which if granted is of restricted duration-could be
refused, but a wider protection in time, by way of copyright, could have
been granted.0

0 Id. at 390.

0 Id. at 391.

0 Id.
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In HT Media Limited v. UTV News Limited, 0 the plaintiff alleged that the defendants have
slavishly copied and represented the unique features of advertisement through their
advertisement. The Court observed that the advertisement of the plaintiff was made through
newspaper and attracted readers, while that of the defendants was through satellite channels and
attracted viewers. While vacating the interim order, the Court held that the plaintiff has not stated
that by virtue of the defendants advertisements it has suffered any loss or its readership has been
reduced.

In Twentieth Century Fox Film Corporation v. Zee Telefilms Ltd.,0 on the question
whether the defendants have substantially copied the T.V. serial of the plaintiff, the Court
observed as under:

In considering the question of substantiality, the similarity between the


programs can also be considered individually in certain situations and then
to consider whether the entirety of what had been copied represented a
substantial part of the plaintiffs program. Even regarding the substantial
copy by the defendants, what is to be decided is by its quality of copy
rather by its quantity. This has not been disputed by both the parties that
under the Copyright Act protection for an original work does not extend to
any idea, procedure, process, system, method of operation, concept,
principle, or discovery regardless of the form in which it is described,
explained, illustrated or embodied in such work. A statutory protection
does not extend to the intellectual conceptions apart from the thing
produced. The protections of Copyright Act are not intended to either
enlarge or to contract the scope for copyright production and the basic
dichotomy between the idea and its expression remain unchanged. The
rules of the copyright provide that ideas, plans, method, systems, or
device, as distinguished from the particular manner in which they are
expressed or described in a right, are not copyrightable.0

In India TV Independent News Service Pvt. Ltd. v. Yashraj Films Pvt. Ltd., 0 the
Court has noticed that in the law of copyright there is considerable confusion regarding the
application of de minimis maxim. The Court observed as under:

0 G.A.No.2038 of 2010. Calcutta High Court (SB) Justice Patheriya delivered the judgment.
Available at: judic-nic-in-kolkatta-judge-Result disp.

0 2012(51) PTC 465 (Del) (SB), Justice Anil Kumar delivered the Judgment.

0 Id. at 507.

0 2013(53) PTC 586 (Del) (DB), Justice Pradeep Nandrajog delivered the judgment.
Page 216 of 255
It is trite that the pre-requisite to copyright infringement is a demonstrable
copying of the copyrighted work. But since not all copying is
infringement, there must be substantial similarity between the two works.
Courts have identified two types of substantial similarities: (i)
Comprehensive non literal similarity; where Courts have strived to identify
the fundamental essence of the structure, and it being copied, even where
specific expression is not copied. (ii) Fragmented literal similarity, in
which bits of specified expressions are copied, but the overall structure is
not. It is in the latter, that Courts have employed de minimis holding that
substantial similarity is present only if the amount of literal expression
copied is more than de minimis. Thus, de minimis used in these cases is
simply the opposite of substantial similarity i.e. to say that the use is de
minimis is to say that the alleged infringing work is not substantially
similar to the original. This approach is to be found in the opinion reported
as 307 F.Supp. 2d 928 Neal Publications v. F&W Publications Inc, a case
where the defendant had copied a few phrases from the plaintiffs guide;
the opinion reported as 388 F. 3d 1189 (9th Cir. 2004) Newton v.
Diamond, where the notes were sampled by the Beastie Boys and the
average audience was opined not to recognize the appropriation.0

In Mansoob Haider v. Yashraj Films Pvt. Ltd., 0 the Bombay High Court made the
following observation:

It has been accepted as a matter of law that the identity between the two
works must be substantial. The appropriation must be of a substantial or
material part of the protected work. Infringement exists when a study of
the two works plainly shows that the answering defendants work is a
transparent reproduction (or translation into another medium) of the
plaintiffs protected work. Coincidence or similarity may be due to one or
more of several factors. Mere chance is only one of them. They may both
have a common inspiration or source.0

Now we proceed to identify the copyright wrongs of civil nature in the light of the provisions of
the Act.
Part III
Copyright Wrongs of Civil Nature

0 Id. at 593-594.

0 MANU/MH/0790/2014 (SB); Justice G.S. Patel delivered the Judgment.

0 Id. at para 31(SB).


Page 217 of 255
Copyright wrong is both a civil wrong and an offence. 0 This part seeks to: (i) identify the wrongs
of civil nature under the Act, and (ii) answer what copyright wrongs are strict liability wrongs
and what are fault based wrongs.

Section 51 of the Act identifies the situations in which copyright is infringed. It reads as under:

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
condition 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

(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 or 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 purpose 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 infringement.

0 Ghayur Alam, Intellectual Property Wrongs, 2 NLIU Journal of Intellectual Property


Law 5-38 (2013).
Page 218 of 255
In the light of the provisions of Section 51 (a) (i), it may be said that copyright infringement
occurs when any person: (1) exercises any right of copyright owner enumerated under Section 14
of the Act without a licence from the owner, (2) exercises any right of the copyright owner
enumerated under Section 14 without a licence from the Registrar of the Copyright, (3)
exercises any right of the copyright owner enumerated under Section 14 in contravention of the
conditions of a licence granted by the owner, (4) exercises any right of the copyright owner
enumerated under Section 14 in contravention of the conditions of a licence granted by the
Registrar of the Copyright, (5) exercises any right of the copyright owner enumerated under
Section 14 in contravention to condition imposed by a competent authority under the Act. These
five wrongs are strict liability wrongs in the light of the provisions of Section 51 (a) (i) of the
Act. The only fault based wrong is recognized by Section 51 (a) (ii) of the Act which provides
that a person who 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.0 In
case of the wrong falling under the provisions of Section 51 (a) (ii), the defendant may escape
liability if he proves either (i) he was unaware or, (ii) he had no reasonable ground of believing
that his act constitutes infringement. Defendant may escape liability, only after rebutting the
presumption of infringement.

In the light of the provisions of Section 51 (b), it may be said that copyright infringement occurs
when any person: (1) makes infringing copies of the work for sale, (2) makes infringing of the
work copies for hire, (3) sells infringing copies of the work, (4) lets infringing copies of the work
for hire, (5) by way of trade displays infringing copies, (6) offers for sale of infringing copies, (7)
offers for hire of infringing copies, (8) distributes infringing copies for the purpose of trade, (9)
distributes infringing copies to such an extent as to affect prejudicially the owner of the
copyright, (10) exhibits infringing copies by way of trade in public, (11) imports infringing
copies into India.

By virtue of the provisions of Section 51 it may be said that in all, there are seventeen types of
copyright infringements. All copyright infringements except one [Section 51 (a) (ii)] are strict
liability infringements. The infringements identified under Section 51 (b) may be read under the
provisions of Section 51 (a) (i) read with the provisions of Section 14. It appears that as a matter
of abundant caution to bring about clarity in law, the provisions of Section 51 (b) have made
explicit what is implicit in Section 51(a)(i).
0 Emphasis added.
Page 219 of 255
Section 530 of the Act provides for the importation of infringing copies. In Gramophone
Company of India Ltd. v. Birendra Bahadur Pandey, 0 the meaning of import used
in Section 53 of the Copyright Act was settled by the Supreme Court. 0 Section 53A0 of the Act
deals with resale share right in original copies. Section 55 0 of the Act deals with civil remedies
for infringement of copyright.

0 Section 53.Importation of infringing copies:The owner of any right


conferred by this Act in respect of any work or any performance embodied in such
work, or by his duly authorised agent may give notice in writing to Commissioner
of customs, or to any other officer authorised in this behalf by the Central Board
of Excise and Customs,-
(a) that he is the owner of the said right, with proof thereof; and
(b) that he requests the commissioner for a period specified in the
notice,
which shall not exceed one year, to treat infringing copies of the work
as prohibited goods, and that infringes copies of the work are
expected to arrive in India at a time and a place specified in the notice.
(2) The Commissioner, after scrutiny of the evidence furnished by the
owner of the right and on being satisfied may, subject to the provisions of sub-
section (3), treat infringing copies of the work as prohibited goods that have been
imported into India, excluding goods in transit:
Provided that the owner of the work deposits such amount as the
Commissioner may require as security having regard to the likely
expenses on demurrage, cost of storage and compensation to the
importer in case it is found that the works are not infringing copies.
(3) When any goods treated as prohibited under sub-section (2) have been
detained, the Customs Officer detaining them shall inform the importer as well as
the person who gave notice under sub-section (1) of the detention of such goods
within forty-eight hours of their detention.
(4) The Customs Officer shall release the goods, and they shall no longer
be treated as prohibited goods, if the person who gave notice under sub-section
(1) does not produce any order from a Court having jurisdiction as to the
temporary or permanent disposal of such goods within fourteen days from the
date of their detention.

0 [1984]2SCR664, (FB) Justice O. Chinnappa Reddy delivered the judgment.

0 Id. at 691-692. The Court held that, The word import in Sections 51 and 53 of the Copyright
Act means bringing into India from outside India, that it is not limited to importation for
commerce only but includes importation for transit across the country.

0 Section 53A. Resale share right in original copies:(1) In the case of


resale for a price exceeding ten thousand rupees, of the original copy of
a painting, sculpture or drawing, or of the original manuscript of a

Page 220 of 255


The proviso to Section 55(1) reduces the extent of liability if the defendant proves that on the
date of infringement he was not aware and had reasonable ground for believing that copyright
subsisted in the work. The defendants liability in the aforementioned situation, gets limited to
injunction and profit and defendant cannot be made liable to pay damages. The proviso to
Section 55(1) does not absolve the defendant from liability. So far as the question of existence of
liability is concerned, it remains strict in nature. It is the extent of liability which gets reduced.
Section 560 of the Act deals with protection of separate rights. The Section 57 0 of the Act deals
with authors special rights. Section 58 0 of the Act deals with rights of owner against persons
possessing or dealing with infringing copies. Section 58 Rights of owner against persons
literary or dramatic work or musical work, the author of such work if he
was the first owner of rights under section 17 or his legal heirs shall,
notwithstanding any assignment of copyright in such work, have a right
to share in the resale-price of such original copy or manuscript in
accordance with the provisions of this section:
Provided that such right shall cease to exist on the expiration of the term
of copyright in the work.
(2) The share referred to in sub-section (1) shall be such as the Copyright
Board may fix and the decision of the Copyright Board in this behalf
shall be final:
Provided that the Copyright Board may fix different shares for different
classes of work:
Provided further that in no case shall the share exceed ten per cent of the
resale price.
(3) If any dispute arises regarding the right conferred by this section, it
shall be referred to the Copyright Board whose decision shall be final.

0 Section 55, civil remedies for infringement of copyright:(1) Where


copyright in any work has been infringed, the owner of the copyright
shall, except as otherwise provided by this Act, be entitled to all such
remedies by way of injunction, damages, accounts and otherwise as are
or may be conferred by law for the infringement of a right :
Provided that if the defendant proves that at the date of the infringement he
was not aware and had no reasonable ground for believing that
copyright subsisted in the work, the plaintiff shall not be entitled to any
remedy other than an injunction in respect of the infringement and a
decree for the whole or part of the profits made by the defendant by the
sale of the infringing copies as the court may in the circumstances
deem reasonable.
(2) Where, in the case of a literary, dramatic, musical or artistic work, or,
subject to the provisions of sub-section (3) of section 13, a
cinematograph film or sound recording, a name purporting to be that of
the author, or the publisher, as the case may be, of that work, appears
on copies of the work as published, or, in the case of an artistic work,
appeared on the work when it was made, the person whose name so
appears or appeared shall, in any proceeding in respect of infringement
of copyright in such work, be presumed, unless the contrary is proved,
to be the author or the publisher of the work, as the case may be.
(3) The costs of all parties in any proceedings in respect of the
infringement of copyright shall be in the discretion of the court.

Page 221 of 255


possessing or dealing with infringing copies. Section 59 0 of the Act deals with the restriction on
remedies in the case of works of architecture. Section 600 of the Act deals with remedy in the
case of groundless threat of legal proceedings. Section 610 of the Act deals with owners of
copyright to be party to the proceeding. Section 620 of the Act deals with jurisdiction of Court
over matters relating to copyrights. Section 74 0 of the Act deals with the powers of Registrar of
Copyrights and Copyright Board to possess certain powers of civil Courts. Section 75 0 of the Act
deals with orders for payment of money passed by Registrar of Copyrights and Copyright Board
to be executable as a decree.

0 Section 56 Protection of separate rights:Subject to the provisions of this


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

0 Section 57 Authors special rights: Independently of the authors copyright and even after the
assignment either wholly or partially of the said copyright, the author of a work shall have the right-
(a) to claim authorship of the work; and
(b) to restrain or claim damages in respect of any distortion, mutilation, modification or other act in
relation to the said work if such distortion, mutilation, modification or other act would be prejudicial to
his honour or reputation:
Provided that the author shall not have any right to restrain or claim damages in respect of any adaptation
of a computer programme to which clause (aa) of sub-section (1) of section 52 applies.
Explanation.- Failure to display a work or to display it to the satisfaction of the author shall not be deemed to be
an infringement of the rights conferred by this section.
(2) The right conferred upon an author of a work by sub-section (1), may be exercised by the legal
representatives of the author.

0 Section 58, Rights of owner against persons possessing or dealing with


infringing copies:All infringing copies of any work in which copyright subsists,
and all plates used or intended to be used for the production of such
infringing copies, shall be deemed to be the property of the owner of the
copyright, who accordingly may take proceedings for the recovery of
possession thereof or in respect of the conversion thereof :
Provided that the owner of the copyright shall not be entitled to any remedy in
respect of the conversion of any infringing copies, if the opponent proves-
(a) that he was not aware and had no reasonable ground to believe that
copyright subsisted in the work of which such copies are alleged to be
infringing copies; or
(b) that he had reasonable grounds for believing that such copies or plates
do not involve infringement of the copyright in any work.

0 Section 59, Restriction on remedies in the case of works of


architecture:Notwithstanding anything contained in the Specific Relief Act, 1963,
where the construction of a building or other structure which infringes or which, if

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The following part concludes.

Part IV
Conclusion

completed, would infringe the copyright in some other work has been commenced,
the owner of the copyright shall not be entitled to obtain an injunction to restrain the
construction of such building or structure or to order its demolition.
(2) Nothing in section 58 shall apply in respect of the construction of a building or
other structure which infringes or which, if completed, would infringe the copyright in
some other work.

0 Section 60, Remedy in the case of groundless threat of legal


proceedings:Where any person claiming to be the owner of copyright in
any work, by circulars, advertisements or otherwise, threatens any other
person with any legal proceedings or liability in respect of an alleged
infringement of the copyright, any person aggrieved thereby may,
notwithstanding anything contained in section 34 of the Specific Relief Act,
1963 institute a declaratory suit that the alleged infringement to which the
threats related was not in fact an infringement of any legal rights of the
person making such threats and may in any such suit-
(a) obtain an injunction against the continuance of such threats; and
(b) recover such damages, if any, as he has sustained by reason of such
threats.
Provided that this section shall not apply if the person making such threats,
with due diligence, commences and prosecutes an action for infringement
of copyright claim by him.

0 Section 61, Owners of copyright to be party to the proceeding:(1) In every


civil suit or other proceeding regarding infringement of copyright instituted
by an exclusive licensee, the owner of the copyright shall, unless the court
otherwise directs, be made a defendant and where such owner is made a
defendant, he shall have the right to dispute the claim of the exclusive
licensee.
(2) Where any civil suit or other proceeding regarding infringement of
copyright instituted by an exclusive licensee is successful, no fresh suit or
other proceeding in respect of the same cause of action shall lie at the
instance of the owner of the copyright.

0 Section 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

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Following propositions emerge from the above discussion:

Proposition 1: Every act of making a copy is not a copyright wrong.

Proposition 2: Some act of making a copy may be a copyright wrong.

Proposition 3: Copyright wrong is an act, done without the permission of the


copyright owner, or in breach of any condition imposed by the
competent authority.

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

0 Section 74, Registrar of Copyrights and Copyright Board to possess


certain powers of civil courts:The Registrar of Copyrights and the
Copyright Board shall have the powers of a civil court when trying a suit
under the Code of Civil Procedure, 1908, in respect of the following
matters, namely :-
(a) summoning and enforcing the attendance of any person and examining
him on oath;
(b) requiring the discovery and production of any document;
(c) receiving evidence on affidavits;
(d) issuing commissions for the examination of witnesses or documents;
(e) requisitioning any public record or copy thereof from any court or office;
(f) any other matter which may be prescribed.
Explanation.- For the purpose of enforcing the attendance of witnesses, the
local limits of the jurisdiction of the Registrar of Copyrights or the
Copyright Board, as the case may be, shall be limits of the territory of
India.

0 Section 75 Orders for payment of money passed by Registrar of Copyrights


and Copyright Board to be executable as a decree:Every order made by the
Registrar of Copyrights or the Copyright Board under this Act for the
payment of any money or by the High Court in any appeal against any such
order of the Copyright Board shall, on a certificate issued by the Registrar of
Copyrights, the Copyright Board or the Registrar of the High Court, as the
case may be, be deemed to be a decree of a civil court and shall be
executable in the same manner as a decree of such court.

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Proposition 4: Making identical or substantially similar copies of modes of
expression may be a copyright wrong.

Proposition 5: Making identical or substantially similar copies of mode of


expressions may not be a copyright wrong if any of the defenses
pleaded by the defendant is successful.

Proposition 6: Identical or substantially similarity relate to mode of expression of


the two works and not to the underlying ideas of the two works.

Proposition 7: Substantial similarity means a similarity in the mode of expression


of the plaintiffs and defendants work which is strikingly similar
to the ordinary reader., spectator, or audience to negative any
irresistible impression.

Proposition 8: Determination of identicalness of the two works is not


problematic. Determination of substantial similarity is problematic.

Proposition 9: Standard of proof in a copyright lis is clear and cogent evidence.


The plaintiff has a higher burden of proof in a copyright lis in
comparison to an ordinary civil suit in which the standard of proof
is preponderance of probabilities.

Proposition 10: In case of registered copyright the plaintiff is not required to prove
the validity of copyright for there is a statutory presumption
therefor. If the defendant assails the validity, he must rebut the
presumption.

Proposition 11: If the defendant fails to rebut the presumption of validity of


copyright, the defendant is not relieved of his burden of proving
infringement.

Proposition 12: Statutory defences available to the defendant are that the work of
the plaintiff is not: (i) a work in the copyright law sense, (ii)
original in the copyright law sense, (iii) fixed on a tangible
medium; and (iv) any of the defences of fair dealing under Section
52 of the Act.

Proposition 13: Common law defences available to the defendants are: (i) that the
work of defendant is neither identical nor substantially similar to
the work of the plaintiff, (ii) merger doctrine (iii) scene a fair or
(iv) de minimis.

Page 225 of 255


Proposition 14: All copyright infringements except one [Section 51 (a) (ii)] are
strict liability infringements.

Proposition 15: By virtue of the provisions of Section 51 it may be said that in all,
there are seventeen types of copyright infringements envisaged by
the Act.

Proposition 16: Extent of liability of the defendant, not the existence of his liability,
is reduced to injunction and profit (damages will not be awarded)
if he proves that on the date of infringement he was not aware and
had reasonable ground for believing that copyright subsisted in the
work.

Proposition 17: Copyright law enforces monopoly only if the plaintiff brings in
clear and cogent to prove infringement of copyright.

Proposition 18: Clear and cogent evidence by and in itself is not determinative of
copyright infringement, the defendant may escape liability through
any of the doors of defences.

Proposition 19: The threshold of clear and cogent evidence clearly outweighs the
public interest against the private right, i.e., copyright.

Proposition 20: Copyright law does not seek to balance the right of the copyright
owner with public interest. Rather in case of a conflict between the
two, the copyright must yield to, must succumb to, and must give
way to public interest.

Proposition 21: Norms of Copyright law are in consonance with the norms of
nature and society.

Page 226 of 255


Intellectual Property Wrongs0
Prof. (Dr.) Ghayur Alam*

Law enforces an intellectual property (hereinafter referred to as IP) only if it is wronged 0 or


infringed0. IP wrongs are of two types: tort and crime. All IP wrongs are tort. Some IP wrongs are
both tort and crime. In India there are seven IP statutes, namely: (i) the Copyright Act, 1957; (ii)
the Trade Marks Act, 1999; (iii) the Geographical Indications of Goods (Registration and
Protection) Act, 1999; (iv) the Semiconductor Integrated Circuits Layout Design Act, 2000; (v)

0 *Professor in Business and Intellectual Property Law, Ministry of Human Resource Development Chair in IPR &
Chairperson of Centre of Science Technology and Law at the National Law Institute University, Bhopal. The
author would like to acknowledge the research assistance provided by Mr. Sumit Bhattacharya and Mr. Abhinav
Pradhan, Research Associates, MHRD Chair on IPR at the National Law Institute University, Bhopal. The word
wrong used in the title of this paper may mean at least two things. One, as a word signifying infringement of a
legal right. Two, as a word signifying harm to the society caused by intellectual property. This paper is
concerned with the first meaning only and not with the second meaning. On second meaning, see Robin
Feldman, Intellectual Property Wrongs, 18 STAN. J. L. BUS. & FIN. 250 (2013). During the first revision of this
paper, as a matter of abundant caution for ex abundanti cautela non nocet, a visit was made to the world
wide web to find out whether any paper has already been published with the title Intellectual Property Wrongs
and the above mentioned paper by Robin Feldman was found. It is a matter of great relief that Robin Feldman has
used the word wrong in the sense of harm or burden and not in the sense of legal wrong. The incidence in the
formulation of title of this paper and that of Feldmans may be described as that of coincidence.

0 Intellectual property rights are exclusive rights or negative rights, i.e., the right to prevent
third parties through appropriate legal proceedings. None of the intellectual property rights is a
positive right. All the statutory provisions employ the term exclusive right. For use of the term
exclusive see, Section 14 of the Copyright Act, 1957; Section 48 of the Patents Act, 1970;
Section 28 of the Trade Marks Act, 1999; Section 21 of the Geographical Indications of Goods
(Registration and Protection) Act, 1999; Section 2(c) of Designs Act, 2000; Section 17 of the
Semiconductor Integrated Circuits Layout Design Act, 2000; and Section 28 of the Plant Variety
Protection and Farmers Right Act, 2001.

0 All the Statutes in India relating to IP employ the term infringement except the Designs Act,
2000. For the use of the term infringement see Section 51 of the Copyright Act, 1957; Chapter
XVIII of the Patents Act, 1970; Section 27, 29, 52, 53, 67, 75, 76, 134, 135 of the Trade Marks
Act, 1999; Section 22 of the Geographical Indications of Goods (Registration and Protection)
Act, 1999; Section 18 of the Semiconductor Integrated Circuits Layout Design Act, 2000; and
Section 64 of the Plant Variety Protection and Farmers Right Act, 2001. Section 22 of the
Designs Act, 2000, the only IP statute, employs the term piracy.
Page 227 of 255
the Plant Variety Protection and Farmers Right Act, 2001; (vi) the Patents Act, 1970; and (vii)
the Designs Act, 2000. According to the provisions of the first five statutes, above named
(hereinafter these five statutes are referred to as IP statutes unless the context otherwise
requires), IP wrongs are both tort and crime.0 According to the provisions of the last two statutes
IP wrongs are tort only. So there are five IP wrongs which are both tort and crime and there are
two IP wrongs which are only tort.

In this paper, no attempt has been made to analyze the provisions relating to civil wrongs. 0
Further, no attempt has been made to discuss trade secret or confidential information for this
branch of IP is not codified in India. The provisions of the [Draft] National Innovation Act, 2008
have not been touched for the simple reason that this so called Act is not an Act/statute.

This paper deals with the IP offences under the five IP statutes. Since, most of the IP statutes
have adopted the method of silence as to classification 0 of offences. The paper therefore seeks to

0 Why the law puts in a higher value for wrongs under the five statutes in comparison to patents
and designs, seems to be an open question. In other words, why some IP wrongs are more serious
and some IP wrongs are less serious. What is it, for example, that makes copyright wrong a
wrong against the whole society and against the IP holder as well? For a copyright wrong both
the criminal proceeding and the civil proceeding can run simultaneously under the provisions of
the Copyright Act. However, only civil proceedings can be initiated in case of a patent wrong or
a design wrong. The question is: what is that is missing in case of a patent and design and is
present in case of copyright, trade mark, geographical indication of goods, plant variety and
semiconductor of layout designs. Had these questions been addressed to John Austin he would
have said, Because the law says so. The normativists, however, will not be satisfied with this
answer and some of them may try to cover the bare bodies of statutory provisions with the cloth
of justificatory theories, no doubt ex post. Some of them may also try to develop an argument
for the proposition that it is not necessary to criminalize IP wrongs and hence all IP wrongs
should be decriminalized. These questions, without any doubt, are questions for scholars but are
hardly of much significance for a professional lawyer. In this paper, however, no attempt has
been made to address these questions.

0 Another paper dealing with the civil wrongs in IP statutes is in progress.

0 There are four bases of classification of offences. These bases are: (i) constituent of an
offence only an act which is reus or the intention must also be reus; (ii) power of police
officer to arrest arrest with or without warrant; (iii) bail a right or discretion of the court,
Page 228 of 255
identify these silences. The questions relating to classification of offences are: whether the
offences are (a) ordinary offences0 or strict liability offences0, (b) cognizable offences or non-
cognizable offences; (c) bailable offences or non-bailable offences; and (d) compoundable
offences or non-compoundable offences. The IP statutes do not provide explicit, clear and direct
answers to these questions. Labeling an offence with the appropriate tag serves the value of
certainty. So far as the labeling of an offence as an ordinary or strict liability offence is
concerned, the statutes generally do not label an offence with such tags. However, the statues do
employ the terms like knowingly and voluntarily to incorporate the requirement of mens
rea. Thereby making the exercise of labeling an offence with the tag of ordinary or strict quite
easy. But when statutes remain silent as to bailable-ness, cognizable-ness, and compoundable-
ness, the silence becomes a very kind host to problems. The reason for non-labeling of IP
offences seems to be the legislative assumption that the IP offences are clearly subsumed by the
general scheme of classification0 of offences. As a corollary to this assumption there seems to
exist a related assumption: Courts will be able to label the IP offences with the appropriate tag
with the help of the general scheme of classification. However, these assumptions ignore
indeterminate character of major premises. Indeterminacy is inherent in the general scheme of
classification itself. Such an indeterminacy is bound to beget confusion eventually. This is
exactly what had happened and is happening in case of IP offences. Some of the High Courts
read into the major premise a meaning other than meaning read into the same premise by other
High Courts. These opposite meanings of the same premise are not without costs. This paper
argues that the indeterminacy of the major premise has been the raisons d'tre of uncertainty
in the penal side of IP law. Uncertainty in law is a costly affair. In this case, the cost is on the
Constitution because for the same offence under the same statute the people are treated
differently at different places resulting in the denial of equality in space. The cost is on
administration of justice for uncertainty begets unnecessary litigations. These unnecessary
litigations add to the number of pending cases and increase the burden of the Courts, also puts in
unnecessary costs of time and money on the parties. The law instead of producing social benefits
produces social costs. Some parties and professionals may become the beneficiary of this

and (iv) the competency of parties to enter into a compromise with or without the permission of
the Court.

0 Ordinary offences are those offences where the concurrence of both mens rea and actus
rea is necessary to constitute the offence.

0 Strict liability offences are those offences where mere actus reus is sufficient to constitute
the offence.

0 By general scheme of classification of offences, we mean the scheme of Code of Criminal


Procedure, 1973.
Page 229 of 255
uncertainty but the costs on the legal system and the society far outweigh the benefit of the
uncertainty. This type of uncertainty in law is neither necessary nor insurmountable. One need
not be a philosopher or a genius to suggest a way out to dispense with this type of uncertainty.
The way out is very simple. It is by amending the statute. Simple does not necessarily means
easy. The difficulty of simplicity exists at least for the following reasons: the amount of time
spent by the legislators in the legislature, the amount of time so spent in the legislature and its
correlation with law-making for generally when it comes to law making both the legislature and
the legislators take the back seat, voting is done by whip of the political parties and not by
discussion and debate, and individual legislators rarely speak their independent mind. It seems
that we do not have a government by discussion. We seems to have a government by whip.

In view of the above noted problems and for purposes of convenience, this paper is divided into
two parts. Part I seeks to analyze the offences under the Copyright Act. Part II concludes.

Part I
Copyright Offences

The Copyright Act, 1957 (hereinafter in this Part referred to as the Act) does classify the
offences. First type of offence is envisaged under Section 63 of the Act which provides as under:

Any person who knowingly infringes or abets the infringement of

(a) the copyright in a work,0 or


(b) any other right conferred by this Act (except the resale share right
conferred by S. 53A
shall be punishable with imprisonment for a term which shall not be less than six months
but which may extend to three years and with fine which shall not be less than fifty
thousand rupees but which may extend to two lakh rupees:
Provided that where the infringement has not been made for gain in the course of trade
or business the court may, for adequate and special reasons to be mentioned in the
judgment, impose a sentence of imprisonment for a term of less than six months or a fine
of less than fifty thousand rupees.
Explanation Construction of a building or other structure which infringes or which, if
completed, would infringe the copyright in some other work shall not be an offence under
this section.
A perusal of Section 63 reveals at least seven things. Firstly, the nature of offence envisaged
under this Section is ordinary for the opening sentence of the Section employs the term
knowingly, ergo, the provisions incorporate the requirement of mens rea. In an ordinary offence
the prosecution has a higher burden in comparison to strict liability offences. For, in case of

0 For meaning of copyright in case of different types of work see Section 14 of the Act.
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former the prosecution is required to prove both mens rea and actus reus. In case of latter the
prosecution is required to prove only actus reus. In Dr. A.K. Mukherjee v. State0 explaining the
meaning of the term knowingly in Section 63 of the Act, the Court observed as under:

A bare perusal of the provision would go to show that emphasis is on the words
knowingly infringes . . . the Copyright in a work. These words clearly postulate
knowledge on the part of the accused that he was infringing the copyright in a work.
Mere possibility of his having known it would not suffice. There has to be clear and
conclusive proof of the requisite knowledge. Even the existence of reasonable means of
knowing would not be enough. In short thus the use of the word knowingly in the
provision results in requiring mens rea in the full sense . . . This in short, being the
legal requirement under Section 63 . . ., evidence shall have to be led to bring home the
required guilty knowledge.0

Dr. A.K. Mukherjee has therefore raised the bar for the prosecution when it held Mere
possibility of his having known it would not suffice. In other words, constructive knowledge on
the part of the accused is not sufficient to constitute the offence under Section 63. Actual
knowledge on the part of the accused is necessary to bring the case under the provisions of
Section 63.

Secondly, under Section 63 both commission and abetment of commission of infringement of


copyright are an offence. The provisions do not make any difference between the commission
and abetment. The two have been treated at par by the Act.

Thirdly, clause (a) of Section 63 makes it an offence to knowingly infringe or abet the
infringement of any of the exclusive rights (copyright) in any of the work as enumerated under
Section 14 of the Act. Section 14 of the Act classifies the work into five categories for purposes
of meaning of copyright. Each class of work has many exclusive rights which are further
divisible. For example if an assignee has, acquired from the owner of the copyright, the exclusive
right to reproduce the work in physical format only, the assignee will commit the offence of
infringement under Section 63 if he reproduces the work in digital format.

Fourthly, clause (b) of Section 63 covers the commission and abetment of infringement any
right other than the copyright conferred by this Act.0 A brief clarification as to the difference
between copyright and any other right is quite in order. Besides copyright 0, the Copyright
Act, 1957 confers other rights. These other rights are special rights, performers moral right, and
authors economic right. There are three special rights namely, (i) broadcast reproduction right

0 1994 Cri.L.J.2469 (Single Judge).

0 Id. ,2471.

0 Rights conferred by this Act cannot mean rights created under a contract between the owner
and the assignee or licencee as the case may be.
Page 231 of 255
under Section 37 of the Act, (ii) performers right under Section 38 of the Act, and (iii) authors
right under Section 57 of the Act. The first two special rights are generally referred to as the
neighboring rights or related rights and the third special right is commonly referred to as the
authors moral rights. Performers Moral Right has been introduced by way of an amendment 0 by
inserting Section 38B in the Act for the first time in 2012. The other significant amendment in
2012 relates to conferring of an inalienable and nonnegotiable right on the author to share in the
royalties.0 We call this right as authors economic right. Section 63 therefore does not make
any difference between infringement of copyright and of any other right. 0 There is only one

0 Meaning of copyright is provided under Section 14 of the Act in case of all the six types of
works. Meaning of copyright in case of literary, dramatic and musical works (except computer
programs) is the same. Meaning of copyright in case of computer programs is the meaning of
copyright in case of literary work plus. Meaning of copyright in case of artistic work is narrower
in comparison to the meaning of copyright in case of literary, dramatic and musical works.
Meaning of copyright in case of cinematographic film is narrower in comparison to meaning of
copyright in case of artistic work. Meaning of copyright in case of sound recording is the
narrowest. Copyright is also known as economic right and it is the right of the owner of
copyright in a work who may not necessarily be the author.

0 Copyright (Amendment) Act, 2012. Published on June 08, 2012 for general information in
THE GAZETTE OF INDIA, EXTRAORDINARY, Part II - Section 1, No. 29, New Delhi, and
brought into force with effect from June 21, 2012 by way of a Notification on June 20, 2012 in
THE GAZETTE OF INDIA, EXTRAORDINARY, Part II - Section 3 - Sub-section (ii), No.
1164, New Delhi.

0 See Sections 18, 19, 35 (4) and 38A of the Copyright Act, 1957.

0 The Copyright Act, 1957 treats infringement of copyright and any other right differently
while dealing with them as civil wrongs.
Page 232 of 255
copyright wrong which is only a civil wrong 0 and not an offence0, i.e., if the owner of the
copyright in the specified works does not share the proceeds of resale of original copies.

Fifthly, under Section 63 the offence has been made punishable with both imprisonment and
fine. The minimum term of imprisonment cannot be less than six months and the maximum term
may extend to three years. Neither the provisions of Section 63 nor any other provision of the
Act makes it explicit whether the offences under this Section are: cognizable or non-cognizable;
bailable or non-bailable, and compoundable or non-compoundable. These labelings are very
handy in the administration of criminal justice system. Since the Act does not label the offence,
we refer to the general scheme of classification of offences. Section 2 (a) of the Code of
Criminal Procedure, 1973 (hereinafter referred to as the Code) defines bailable offence as
under:
bailable offence means an offence which is shown as bailable in the First Schedule, or
which is made bailable by any other law for the time being in force; and non-bailable
offence means any other offence.
Section 2(c) of the Code defines cognizable offence as under:

0 Section 53A reads as under: (1) In the case of resale for a price exceeding
ten thousand rupees, of the original copy of a painting, sculpture on drawing,
or of the original manuscript of a literary or dramatic work or musical work,
the author of such work if he was the first owner of rights under Section 17 or
his legal heirs shall, notwithstanding any assignment of copyright in such
work, have a right to share in the resale price of such original copy or
manuscript in accordance with the provisions of this section: Provided that
such right shall cease to exist on the expiration of the term of copyright in the
work.
(2) The share referred to in sub section (1) shall be such as the Copyright Board
may fix and the decision of the Copyright Board in this behalf shall be final :
Provided that the Copyright Board may fix different shares for different
classes of work:
Provided further that in no case shall the share exceed ten per cent of the
resale price.
(3) If any dispute arises regarding the right conferred by this section, it shall
be referred to the Copyright Board whose decision shall be final.
Section 53A provides five things. Firstly, these rights are the rights of the author (or his legal heirs) where he is
also the first owner of the copyright and not of the owner of the copyright where he is not the
author of the work. Secondly, such a right arises if (i) there is a resale of the original copy of a painting,
sculpture on drawing, or of the original manuscript of a literary or dramatic work or musical work, and (ii) the
resale price exceeds ten thousand rupees. Thirdly, such a right will not extinguish by virtue any assignment.
Fourthly, author where he is also the first owner of the copyright shall have a right to share in the resale price of
such original copy or manuscript in accordance with the provisions of this Section. Fifthly, this right will cease to
exist with the cessation of term of copyright in the work. Sub-section (2) of this Section empowers the Copyright
Board to fix the share of the author in the resale price, which may be different for different types of work, not
exceeding ten percent of the resale price. This sub-section also gives finality to the order of the Copyright Board
as to the fixation of share. Sub-section (3) of this Section provides that any dispute as to the rights conferred by
Section 53A shall be referred to the Copyright Board whose decision shall be final.

0 See, Section 63 (b) of the Act.


Page 233 of 255
cognizable offence means an offence for which, and cognizable case means a
case in which, a police officer may, in accordance with the First Schedule or under
any other law for the time being in force, arrest without warrant.0

The First Schedule of the Code is divided into two parts. Part I deals with the offences under the
Indian Penal Code, 1860. Part II deals with offences under any other law for the time being in
force in India. Here, the Copyright Act, 1957 is the law for the time being in force in India.
Part II of the First Schedule of the Code provides as under:

Classification of Offences against other Laws

1. If punishable with death, imprisonment for life or imprisonment for more than 7
years - Cognizable, Non-bailable, Triable by Court of Session
2. If punishable with imprisonment for 3 years and upwards but not more than 7
years - Cognizable, Non-bailable, Triable by Magistrate of the First Class
3. If punishable with imprisonment for less than 3 years or with fine only - Non-
cognizable, Bailable, Triable by any Magistrate
The indeterminacy is evident in the language of the aforementioned provisions. A reading of the
provisions of 2 and 3 above creates the indeterminacy. Had the language of the provisions of 2
above have been If punishable with imprisonment for more than 3 years instead of If
punishable with imprisonment for 3 years and upwards the problem of indeterminacy would
have been easily avoided. For the words punishable with imprisonment for 3 years includes the
offence where the maximum imprisonment can be three years and hence punishable with
imprisonment for less than 3 years which drags the offence in class 3. A reference to the general
scheme of the Code to label the offence under Section 63 of the Act will produce the following
picture:

a. offences under Section 63 do not fall in class 1 for they are not punishable with death,
imprisonment for life or imprisonment for more than 7 years,
b. offences under Section 63 may fall in class 2 for they are punishable with
imprisonment for 3 years, hence are cognizable and non-bailable,
c. offences under Section 63 may fall in class 3 for they are punishable with
imprisonment for less than 3 years, hence are non- cognizable and bailable.
The above picture presents the classic problem of gray area of two overlapping circles. It should
have been and could have been black or white, i.e., either this or that. But it may be either this
or that. This uncertainty of the statutory provisions has been further confounded by the
conflicting decisions of the High Courts. Instead of a movement from molar to molecular taking
place, confusion and hence chaos became the characteristic feature. High Courts of Kerala and
Gauhati on the one hand and the High Courts of Andhra Pradesh and Delhi had had the occasion
to deal with the question: whether the offences under 63 of the Copyright Act are non-bailable?

0 Emphasis added.
Page 234 of 255
High Courts of Kerala and Gauhati answered the question in affirmative and held that the
offences under Section 63 are non-bailable. High Courts of Andhra Pradesh and Delhi answered
the question in negative and held that the offences under Section 63 are bailable.

The first case on this point is Jitendra Prasad Singh v. State of Assam 0. In this case the
question was whether the offence is a bailable offence? The Court observed as under:
While considering the above question, it is of utmost importance to note that the
offence alleged to have been committed by the petitioner is covered by Section 63 of
the said Act and it is punishable with imprisonment for a term, which may extend to
three years. By virtue of Part II, contained in Schedule 1 to the Code of Criminal
Procedure, an offence under the other special law, if punishable with imprisonment for
less than three years or with fine only, is non-cognizble, but bailable. However, if the
offence is punishable with imprisonment for three years and upward but not more than
seven years, the same shall be non-bailable.
What is, now, essential to note is that the expression punishable with imprisonment
for a term, which may extend to three years, is distinctly different from the expression
if punishable with imprisonment for less than three years inasmuch as the expression
namely, punishable with imprisonment for a term, which may extend to three years,
will mean that the imprisonment can be for a term as long as three years, but the
expression, punishable with imprisonment for less than three years will mean that
the offence is punishable with imprisonment for a period, which is less than three
years. Viewed from this angle, the offence under Section 63 of the said Act is a non-
bailable offence. The provisions of Section 438, Cr.P.C. can, therefore, be applied, if
need be, in respect of offence punishable under Section 63 of the said Act.0
In Amarnath Vyas v. State of A.P.0 the High Court of Andhra Pradesh had initially rejected
the application for anticipatory bail on the ground that offence under Section 63 of the Act is
bailable. On a reconsideration of the matter the Court observed as under:
The punishment thus prescribed under the said provision is a minimum
sentence of six months and the maximum sentence, which may extend up to
three years. The Act does not contain any provision, which makes the offence
punishable under Section 63 of the Act as non-bailable one.
The Act seeks to define the copyright and prescribe punishment for
imprisonment thereof. The offence is obviously, as can be seen from Section
70 of the Act, cognizable and triable by a Court, which is not inferior to that
of a Metropolitan Magistrate or a Judicial Magistrate of First Class.
Therefore, there has been no provision in the Act which makes offence
clearly a non-bailable one. Undoubtedly, the offence punishable under
0 2003(26)PTC486(Gau) (Single Judge).

0 Id., at 487.

0 2007 Cri .L.J. 2025. (Single Judge).


Page 235 of 255
Section 63 of the Act is triable by a criminal Court of Judicial Magistrate of
First Class or Metropolitan Magistrate adopting the procedure envisaged
under the provisions of the Cr. P. C. The Cr. P.C. applies proprio vigore0
for the trial of an offence under the Act. In the absence of any specific
provision, under the Act, making the offence non-bailable one has to fall
back upon the Schedule-I appended to the Cr. P.C. Part-II classifies the
offences against other laws, . . .
....

Unmistakably, first and third categories as given in Part II of the Schedule


have no application to the facts in the instant case. Whether the second
category of the classification will attract or not is the only point germane for
consideration in the instant case. A close scrutiny of the excerpt extracted
here-in-above would clearly show that the punishment prescribed under the
provisions of the Act is for a term which may extend upto three years. If the
punishment prescribed under any special Act is for a term of three years and
upwards, it would become non-bailable. The language used in both the
provisions, if read keeping them in juxtaposition, would help us in comparing
them so as to have a clear idea.
....

The expression punishment for a term which may extend to three


years is certainly not similar to the expression punishment for
three years and upwards.0

The Court noted that the prosecution sought to place reliance upon Jitendra Prasad Singh v.
State of Assam0 for the proposition that the offence punishable under Section 63 of the Act is
non-bailable and therefore the provisions of Section 438 of the Code would attract. The
prosecution also relied on C.K. Boban v. Union of India0and the Court observed:
That judgment came to be rendered under the provisions of Customs Act, 1962. The
punishment . . . is imprisonment for a term, which may extend to three years or with
fine or with both. Repelling the contention that the expression for a term which may
extend to three years would mean that the sentence of imprisonment that could be
awarded for a period of less than three years, learned single Judge was of the view that

0 proprio vigore means by its own force or vigor. See, http://legal-


dictionary.thefreedictionary.com. Last visited on March 29, 2012.

0 Supra 23,2026. Emphasis added.

0+`Supra 21.

0 2005 Cri. L.J. 2801.


Page 236 of 255
the expression three years and upwards would definitely include an offence
punishable for a term upto three years . . .
As to both the decisions relied upon by the prosecution the Court observed as under:
Both these judgments discussed here-in-above have not considered the judgment of the
Apex Court in Rajeev Chaudhary v. State (N.C.T.) of Delhi0. The provisions of Section
167 (2) Clause (1) proviso (a) of the Cr. P. C. came up for consideration before the
Apex Court in the said judgment. The offence involved, as can be seen from the matrix
of that case, is extortion punishable under Section 386 of IPC. The punishment
prescribed therefore is imprisonment of either description for a term, which may
extend to 10 years and shall also liable to fine. The expression imprisonment which
may extend to 10 years was discussed by the Apex Court in juxtaposition to the other
expression imprisonment for 10 years or more. The proviso under Clause (1) of
Section167, Sub-clause (2) of the Cr. P. C. reads that if the period of ninety days
exceeds in the case of investigation relating to an offence punishable with death,
imprisonment for life or imprisonment for a term of not less than ten years, the remand
prisoner, as a matter of right, is entitled to bail. Therefore, the expression used therein
inter alia that imprisonment for a term not less than ten years, as per the judgment of
the Supreme Court, could not be equated with imprisonment for ten years or more; and
that the expression would cover only those offences punishable with imprisonment for
a clear period of ten years or more. Inasmuch as under Section 386 IPC the punishment
provided is imprisonment for either description for a term which may extend to ten
years, it was considered by the Apex Court and held that such an imprisonment cannot
be equated with the sentence of imprisonment for ten years or more. In the view of the
Apex Court, imprisonment for a term, which may extend to ten years cannot be
construed as similar to the sentence of ten years or more. In paragraph No. 6, the Apex
Court held thus:
In this context, the expression not less than would mean imprisonment should be
ten (10) years or more and would cover only those offences for which punishment
could be imprisonment for a clear period of ten (10) years or more. Under Section
386 punishment provided is imprisonment of either description for a term, which
may extend to ten (10) years and also fine. That means, imprisonment can be for a
clear period of ten (10) years or less. Hence, it could not be said that minimum
sentence would be ten (10) years or more. Further, in context also if we consider
Clause (i) of proviso (a) to Section 167 (2), it would be applicable in case where
investigation relates to an offence punishable (1) with death; (2) imprisonment for
life; and (3) imprisonment for a term of not less than ten years. It would not cover
the offence for which punishment could be imprisonment for less than ten (10)
years. Under Section 386 of the IPC, imprisonment can vary from minimum to
maximum of ten (10) years and it cannot be said that imprisonment prescribed is
not less than ten (10) years.0

0 2001Cri.L.J.2941.

0 2001Cri.L.J.2941, 2942.
Page 237 of 255
In view of the said authoritative pronouncement of the Apex Court, the expression used
in Second category of II Part of Schedule-I of the Cr. P. C. viz., that the term of
imprisonment for three years or upwards, but not more than seven years, cannot be
equated with the expression used in Section 63 of the Act viz., the imprisonment which
may extend to three years.
It is trite that the penal provisions shall have to be construed strictly.0 True there may be
certain other class of offences which may fall in between classification II and
classification III of Second Part of Schedule I. Merely because they are not coming
squarely within the domain of classification-III, they, cannot automatically be treated as
included in the classification-II. By default, they cannot be considered as coming within
the purview of the classification-II. Having regard to the fact that the judgments of Kerala
and Gauhati High Courts supra have not considered the judgment of the Apex Court in
Rajeev Chaudharys case (supra), with due respect, they cannot be considered as having
laid down the correct proposition of law. Therefore, the expression imprisonment for a
term which may extend upto three years, in my considered view, would not come
squarely within the expression imprisonment for three years and upwards. Therefore,
the offence punishable under Section 63 of the Act cannot be considered as non-bailable
one.
In Sureshkumar v. The Sub Inspector of Police0 the question was: whether the offence under
Section 63 of the Copyright Act a cognizable one? Answering the question the Court observed as
under:
The penal provision appears in Section 63 of the Copyright Act. The offence is
punishable with imprisonment for a term, which shall not be less than six months, but
which may extend to three years and with fine. The Copyright Act as amended does not
anywhere specifically refer to cognizability for the purpose of investigation. We therefore
have got to fall back on the Schedule to the Code of Criminal Procedure. The Schedule to
the Code of Criminal Procedure shows that if the offence under other laws is punishable
with imprisonment for three years and upwards, but not more than 7 years, the offence
will be cognizable and non-bailable. If on the contrary, the offence is punishable with
imprisonment for less than 3 years or with fine only, the offence will be non-cognizable
and bailable and can be tried by any Magistrate. The short question is whether the offence
under Section 63 will fall in the former category or the latter.
A plain reading of the stipulations in the Schedule shows that if the offence is punishable
with imprisonment for 3 years and upwards, but not more than 7 years, it must be
reckoned as cognizable. Section 63, according to me, is clearly punishable with
imprisonment for 3 years and in these circumstances the offence has to be held to be
cognizable. No binding precedent is brought to my notice. But it is stated that in Jitendra
Prasad Singh v. State of Assam and in Dr. A.K. Mukherjee v. State the High Courts have
taken the same view. These decisions are not placed [the Court]

0 Emphasis added.

0 MANU/KE/0177/2007 at para2-8. (Single Judge).


Page 238 of 255
I do not think it specifically necessary to go to any precedent. The language of provisions
of Section 63 of the Copyright Act and the language of the relevant entries in the
Schedule to the Code of Criminal Procedure make the position crystal clear. Part II of the
Schedule to the Code classifies the offences as cognizable/non-cognizable and bailable/
non-bailable and prescribes the forum for trial depending on the gravity of the
punishment as ascertained from the nature of the sentence imposable for the offences
under such other laws. Parliament has divided all offences under special laws into three
categories. . .
...

In simple language this means that there can be three categories of cases depending upon
the maximum sentence which can be imposed. The first one deals with the offences
which are punishable with imprisonment for more than 7 years. Those offences, for
which punishment imposable is 7 years, do not come within this first clause. Only
offences for which more than 7 years (not 7 years only) can be imposed do come within
this first clause.
The second class is the class of offences in which punishment of imprisonment for 7
years and below are imposable. If punishment imposable is 7 years and below upto three
years, the offences would fall within the second category. The Parliament which used the
expression for more than 7 years to identify the first category had very cautiously used
the words 3 years and upwards, but not more than 7 years to identify the second
category. The offences punishable with imprisonment for 3 years upto 7 years, both
inclusive, will fall under this second category.
The third category is that of the offences punishable with imprisonment for less than 3
years or fine. Those punishable with imprisonment for three years do not come within
this category evidently.
The offence on hand, the one under Section 63 of the Copyright Act, is punishable with
imprisonment for a period of 3 years. There can therefore be no doubt that this falls under
category 2 referred above and is consequently cognizable. No contra principle or
precedent has been pressed into service before me. The attempt to rely on the decision of
the Supreme Court in Rajeev Chaudhary v. State (NCT) of Delhi cannot at any rate help
the petitioners as the language used in the proviso to Section 167 (2) is totally different
from the language employed in the Schedule to the Code of Criminal Procedure.
In these circumstances I find no merit in the contention that the offence under Section 63
of the Copyright Act is not cognizable and that consequently the registration of the crime
and the investigation undertaken in these cases are not justified and legal.

In State Govt. of NCT of Delhi v. Naresh Kumar Garg 0 extending the logic of
Avinash Bhosale v. Union of India0, to the facts of this case the Court held that the
0 MANU/DE/0706/2013 Single Judge.

0 (2007) 14 SCC 325.


Page 239 of 255
offence punishable under Section 63 of the Act is bailable. The Court further observed: [I]t
would be fruitful to refer to the provision of Section 64 of the Act which empowers a police
officer not below the rank of Sub-Inspector to seize the infringing copies of any work. If the
offence had been cognizable and non-bailable, there was no necessity to specifically authorize
the police officer with the power of seizure.
It is noticeable that the decisions of High Courts of Andhra Pradesh and Delhi seem to be more
reasonable and fair and hence clinching. Observation of the High Court of Andhra Pradesh for
the proposition: It is trite that the penal provisions shall have to be construed strictly0makes the
decision a sound one, for, the Supreme Court of India in Tolaram Relumal v. The State of
Bombay0 has held that Penal statutes have to be interpreted strictly. Similarly, a reference to the
provisions of Section 64 of the Act by the Delhi High Court to answer the question seems to be
quite appealing. This approach of the Delhi High Court finds support in the decision of the
Supreme Court, State of Jharkhand v. Ambay Cements0, wherein it was held, It is the cardinal
rule of interpretation that where a statute provides a particular thing should be done, it should be
done in the manner prescribed and not in any other way. These observations appeal to reasons
of legality that benefit of doubt should be given to the accused. It is further noticeable that all the
decisions have been given a single Judge Bench only. Further no Supreme Court opinion is
available on the point. In above paragraphs we have seen the kind of pains and hassles faced by
the High Courts in interpreting the provisions of Section 63 of the Act. The result of such pains
and hassles is that in one State of Union of India a police officer can arrest an accused without
warrant and in the other State of Union of India the police officer cannot do so. Similarly, in one
State of Union of India bail cannot be denied to an accused while in other State of Union of India
bail may be denied to an accused. Such an uncertainty in the law militates against the idea of
equality enshrined under Article 14 of the Constitution of India which provides, State shall not
deny to any person equality before the law and equal protection of laws within the territory of
India. This inequality produced by uncertainty in law can be avoided by the Supreme Court.
Any of the High Courts could have referred the matter to the Supreme Court to have a final
opinion. The Parliament could have amended the law. The Parliament may clarify the law
declaring either of the two: (i) this offence under the Act is cognizable and non-bailable, or (ii)
this offence under the Act is non-cognizable and bailable. There may be a general provision
relating to all the offences or there may be specific provisions regarding particular offences. The
Parliament has lost one opportunity in the year 2012 when the Copyright Act was amended. It
may be mentioned that the Trade Marks Act, 1999 makes explicit provisions regarding
cognizability and non-cognizability of offences. The Copyright Act could have borrowed the
wisdom of Trade Marks Act, a statute pari materia with the Copyright Act.

0 Emphasis added.

0 AIR 1954 SC 496.

0 (2005) 1 SCC 368.


Page 240 of 255
Further, to deal with such a situation of uncertainty of conflicting opinions of the two or more
High Courts, the Law Commission of India, taking the matter suo motu in its 136th Report on
Conflicts in High Court Decisions on Central Laws - How to Foreclose and How to Resolve
submitted on February 21, 1990 to the Ministry of Law and Justice, Government made the
following recommendations with the hope that the gravity and urgency, of the situation will be
appreciated and the needful will be done as soon as possible:

(1) When High Court A is faced with a problem pertaining to on allIndia law
(excluding the Constitution of India) on which High Court B has already made a
pronouncement, if High Court A holds at view different or inconsistent from the view
already pronounced by High Court B, High Court A, instead of making its own
pronouncement, shall make a reference to the Supreme Court. The order of
reference shall be accompanied by a reasoned opinion propounding its own view with
particular specification of reasons for differing from the view pronounced by High Court
B.
(2) (a) The party supporting the reference may arrange for appearance in the
Supreme Court but will not be obliged to do so.
(b) The said party will have the option of submitting written submissions
supplementing the reasoning embodied in the order of reference.
(c) The party opposing the reference shall also have a similar option for engaging an
advocate in the Supreme Court and submitting written submissions, inter alia to
counter the written submissions, if any, submitted by the other side.
(3) The Supreme Court may require the Government of the State in which the High
Courts A and B are situated to appoint at the States cost any advocate from the State
panel of lawyers of the concerned States to support by oral arguments the view points of
the respective High Courts.
(4) All such references may be assigned to a Special Bench which may endeavor to
dispose of all such references within six months of the receipt of the references in the
Supreme Court in view of the inherent urgency to ensure uniformity.
(5) If any SLP or appeal is already pending on the same point from judgment of High
Court B or any other High Court, the said matter may be clubbed along with the
reference. Any interested party may be permitted to appear as interveners.
(6) The Supreme Court may return the reference if it appears that the parties are acting in
collusion.
(7) The Attorney General may be served with a copy of the reference and he shall be
entitled to urge the point of view of the Central Government in regard to the relevant
provision of the concerned Central Statute, if so desired.
(8) The referring High Court shall finally dispose of the appeal on all points in the light
of the decision of the Supreme Court in regard to the referred point.

Page 241 of 255


(9) The decision of the Supreme Court in the reference will have no impact or effect on
the decision of High Court B in the event of the Supreme Court upholding the
reference in ease it has become final between the parties by reason of the matter not
having been carried to the Supreme Court and the said decision shall remain undisturbed
as between the parties in High Court B.
In addition to the above the Commission also drafted a Bill for legislation on the problem. But
nothing has happened so far either from the side of the Government and Parliament or from the
side of the Supreme Court or High Court. The situation is grim and fraught with the lethargy.
What has happened with Report of the Commission has become the trend. This was a forgone
conclusion. The point is if the Government does not have the time and willingness to discuss the
recommendation of the Law Commission, why the Commission exists? Does it exist to do
research work?

In view of the above, it is suggested that till the Parliament is not amending the law on the point,
the Supreme Court may take up the matter suo motu to do complete justice under Article 142
of the Constitution of India to ensure equality before law and equal protection of laws within the
territory of India. In the alternative a public interest litigation may be filed in the Supreme Court
in this regard.

Sixthly, the proviso to Section 63 provides:

Provided that where the infringement has not been made for gain in the course of trade or
business the court may, for adequate and special reasons to be mentioned in the judgment,
impose a sentence of imprisonment for a term of less than six months or a fine of less
than fifty-thousand rupees.
The above proviso empowers the Court to award a sentence of imprisonment for a term of less
than six months or a fine of less than fifty thousand rupees for adequate and special reasons to be
mentioned in the judgment where the infringement has not been made for gain in the course of
trade or business. Similarly the amount of fine may also be less than fifty-thousand rupees.

Seventhly and lastly the explanation to Section 63 reads as under:

Explanation Construction of a building or other structure which infringes or which, if


completed, would infringe the copyright in some other work shall not be an offence under
this section.
This Explanation excludes copying of building from culpability. In other words, infringement of
copyright in a building or other structure is not an offence . It is only a civil wrong.

Having discussed the provisions of Section 63, let us move on to the provisions of Section 63A
which provides as under:

Page 242 of 255


Whoever having already been convicted of an offence under Section 63 is again
convicted of any such offence shall be punishable for the second and for every
subsequent offence, with imprisonment for a term which shall not be less than one year
but which may extend to three years and with fine which shall not be less than one lakh
rupees but which may extend to two lakhs rupees.
Provided that where the infringement has not been made for gain in the course of trade or
business the court may, for adequate and special reasons to be mentioned in the judgment,
impose a sentence of imprisonment for a term of less than one year or a fine of less than
one lakh rupees.
Provided further that for the purpose of this section, no cognizance shall be taken of any
conviction made before the commencement of the Copyright (Amendment) Act, 1984 (65
of 1984).
The provisions of Section 63A are in furtherance to the provisions of Section 63 of the Act and
deal with the problem of recidivism, i. e., second or subsequent offenders by raising the bar of
minimum sentence of six months to one year and the minimum fine from fifty-thousand rupees
to one lakh rupees. It is noticeable that the maximum sentence and fine has not been increased
in case of repeat offenders. The proviso to Section 63A merely rehearses the language of the
proviso to Section 63 empowering the Court to award lesser punishment. Second proviso to
Section 63A makes the provisions applicable with prospective effect only, i.e., after the
commencement of the Copyright (Amendment) Act, 1984.

The second type of copyright offence, in case of a computer program, is created by Section 63B
which provides as under:

Any person who knowingly makes use on a computer of an infringing copy of a computer
program shall be punishable with imprisonment for a term which shall not be less than
seven days but which may extend to three years and with fine which shall not be less than
fifty thousand rupees but which may extend to two lakh rupees.
Provided that where the computer program has not been used for gain or in the course of
trade or business, the court may, for adequate and special reasons to be mentioned in the
judgment, not impose any sentence of imprisonment and may impose a fine which may
extend to fifty thousand rupees.
There is no difference, except one, between the provisions of this Section and provisions of
Section 63. The only difference is as to the minimum imprisonment which is only seven days
under Section 63B and not six months as is provided under Section 63. Law has taken a lenient
view towards the infringers of copyright in computer programs. The reason of this lenient
approach is not explicit in the provisions of Section 63B. One reason that may explain the
leniency is the very nature of computer technology. The nature of the computer technology is
such that no material in a digital format can be opened on a computer if the users computer does
not make a copy of it. In other words, copying is an inalienable characteristic of computer.
Perhaps, for this reason the minimum imprisonment is seven days. However, there is no

Page 243 of 255


difference between the offence of Section 63 and the offence of Section 63B as to the maximum
period of punishment and also as to fine. The problems of uncertainty that exist in Section 63
also exist in Section 63B in equal measure.

After dealing with the offences in Sections 63 and 63B, the Act makes provisions regarding
seizure of infringing copies under Section 64 which provides as under:

(1) Any police officer, not below the rank of a sub inspector, may, if he is satisfied that
an offence under Section 63 in respect of the infringement of copyright in work has
been, is being, or is likely to be, committed, seize without warrant, all copies of the
work, and all plates used for the purpose of making infringing copies of the work,
wherever found, and all copies and plates so seized shall, as soon as practicable, be
produced before a Magistrate.

(2) Any person having an interest in any copies of a work or plates seized under sub
section (1) may, within fifteen days of such seizure, make an application to the
Magistrate for such copies or plates being restored to him and the Magistrate, after
hearing the applicant and the complainant and making such further inquiry as may be
necessary, shall make such order on the application, as he may deem fit.

Provisions of Section 64 empowers the police officers not below the rank of a sub inspector to
seize without warrant, all copies of the work, and all plates used for the purpose of making
infringing copies of the work, wherever found if he is satisfied that an offence under Section 63
in respect of the infringement of copyright in work has been, is being, or is likely to be,
committed. It is noticeable that Section 64 does not provide that the police officer can also arrest
the offender without warrant. Besides conferring the power on the police officer the Section also
casts a duty on the police officer to produce all copies and plates so seized, as soon as
practicable, before a Magistrate. Section 64 (2) creates a legal right in the person having an
interest in any copies of a work or plates seized to make an application to the Magistrate for such
copies or plates being restored to him. The words as soon as practicable in Section 64 (1)
cannot exceed a period of fifteen days. Section 64 (2) empowers the Magistrate to make such
order on the application, as he may deem fit, after hearing the applicant and the complainant and
making such further inquiry as may be necessary. It is noticeable that the provisions of Section
64 could have empowered the police officer to make arrest without warrant but it does not do so.
This silence of the provisions of Section 64 seems to give only one sound and, that is, if the
police officer has been empowered to seize without warrant, all copies of the work, etc., he is
empowered to do what is empowered to do and is not empowered to do what he is not
empowered to do. It is interesting that the provisions of Section 64 have only been referred to by
the High Court of Delhi and by any other High Courts in the cases cited above. A reference to the
provisions of Section 64 leads to only one irresistible inference and, i.e., offences under Section
63 of the Act are non-cognizable and bailable for a police officer is not empowered to arrest
without warrant under Section 64. In this context, a recourse to expressio unius est exclusio
alterius would have yielded the same result, i.e., one power of the police officer is expressed and

Page 244 of 255


hence the other power is excluded and silence in this case can only mean no and cannot mean
yes by any stretch of imagination as to the power of a police officer. For a power to the police
officer which curtails the liberty of an individual cannot be read by the Court in a statutory
provision if not explicitly conferred on him by the legislature for no person can be deprived of
his life and personal liberty except according to the procedure established by reasonable, fair,
non-arbitrary and just law.

After dealing with the power of the police officer to seize the infringing copies without warrant,
the Act creates a third type of copyright offence under Section 65 which provides as under:

Any person who knowingly makes, or has in his possession, any plate for the purpose of
making infringing copies of any work in which copyright subsists shall be punishable
with imprisonment which may extend to two years and shall also be liable to fine.

The offence stipulated under Section 65 is an ordinary offence. The offence under this Section is
clearly non-cognizable and bailable by virtue of the provisions of Part II of First Schedule of the
Code.

The fourth copyright offence is created by Section 65A of the Act which provides as under:

Section 65A Protection of technological measures (1) Any person who circumvents an
effective technological measure applied for the purpose of protecting any of the rights
conferred by this Act, with the intention of infringing such rights, shall be punishable
with imprisonment which may extend to two years and shall also be liable to fine.
(2) Nothing in sub-section (1) shall prevent any person from,-
(a) doing anything referred to therein for a purpose not expressly prohibited by this
Act:
Provided that any person facilitating circumvention by another person of a
technological measure for such a purpose shall maintain a complete record of
such other person including his name, address and all relevant particulars
necessary to identify him and the purpose for which he has been facilitated; or
(b) doing anything necessary to conduct encryption research using a lawfully
obtained encrypted copy; or
(c) conducting any lawful investigation; or
(d) doing anything necessary for the purpose of testing the security of a computer
system or a computer network with the authorization of its owner; or
(e) operator; or
(f) doing anything necessary to circumvent technological measures intended for
identification or surveillance of a user; or
(g) taking measures necessary in the interest of national security.

The fifth copyright offence is created by Section 65B of the Act which provides as under:

Section 65B Protection of Rights Managements Information - Any person, who


knowingly,-

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(i) removes or alters any rights management information without Management
authority, or
(ii) distributes, imports for distribution, broadcasts or communicates to the public,
without authority, copies of any work, or performance knowing that electronic
rights management information has been removed or altered without authority,
shall be punishable with imprisonment which may extend to two years and shall also
be liable to fine:
Provided that if the rights management information has been tampered with in any
work, the owner of copyright in such work may also avail of civil remedies provided
under Chapter XII against the persons indulging in such acts.

The offence stipulated under Sections 65A and 65B are ordinary, non-cognizable and bailable
offences by virtue of the provisions of Part II of First Schedule of the Code.

Section 66 of the Act empowers the Court to get the infringing material restored to the owner of
the copyright. It provides as under:

The court trying and offence under this Act may, whether the alleged offender is
convicted or not, order that all copies of the work or all plates in the possession of the
alleged offender, which appear to it to be infringing copies, or plates for the purpose of
making infringing copies, be delivered up to the owner of the copyright or may make
such order as it may deem fit regarding the disposal of such copies or plates.
Section 66 of the Act is couched in a very clear language and empowers the Court to get all
copies of the work or all plates in the possession of the alleged offender, which appear to it to be
infringing copies, or plates for the purpose of making infringing copies, be delivered up to the
owner of the copyright, irrespective of the fact whether the accused is convicted or not.

We are not analyzing the provisions of Sections 67 and 68 for they do not deal with copyright
infringement.

The sixth copyright offence is created by Section 68A of the Act which provides as under:

Any person who publishes a sound recording or a video film in contravention of the
provisions of Section 52A shall be punishable with imprisonment which may extend to
three years and shall also be liable to fine.
The offence under Section 68A is strict liability offence for it requires that only the act of
publishing is sufficient to constitute the offence. This Section does not incorporate any word
denoting mens rea. Provisions of this Section are required to be read with the provisions of
Section 52A which provides as under:

(1) No person shall publish a sound recording in respect of any work unless
the following particulars are displayed on the sound recording and on nay container
thereof, namely:
(a) The name and address of the person who has made the sound recording;
(b) The name and address of the owner of the copyright is such work; and

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(c) The year of its first publication
(2) No person shall publish a video film in respect of any work unless the following
particulars are displayed in the video film, when exhibited, and on the video cassette
or other container thereof, namely:
(a) If such work is cinematograph film required to be certified for exhibition under
the provisions of the Cinematograph Act, 1952 (37 of 1952), a copy of the
certificate granted by the Board of Film Certification under Section 5-A of that
Act in respect of such work.
(b) The name and address of the person who has made the video film and a
declaration by him that he has obtained the necessary licence or consent from the
owner of the copyright in such work for making such video film, and
(c) The name and address of the owner of the copyright in such work.

Provisions of Sections 68A and 52A were interpreted by the Supreme Court of India in State of
A.P. v. Venkataramana0. In this case an Inspector of Police in a raid seized cassettes of various
cinematograph films from the video library belonging to the respondent and laid the charge-sheet
for an offence under Section 52A read with Section 63 of the Copyright Act, 1957. The Trial
Court convicted the respondent under Section 63 of the Act for minimum sentence of six months
and also imposed a fine of Rs. 3,000. On appeal, the Sessions Judge confirmed the same. In
Criminal Revision the High Court of Andhra Pradesh acquitted the respondent of the offence.
Appeals by way of special leave were made to the Supreme Court. The question of law
formulated by the Supreme Courts was: whether the respondent has committed infringement of a
copyright or deemed infringement thereof? The answer of the Court is as under:
Section 68A provides for penalty for contravention of Section 52A it reads that any
person who publishes a sound recording or a video film in contravention of the provisions
of Section 52A, shall be punishable . . .
A reading of these provisions does indicate that infringement of a copyright or deemed
infringement of a copyright or publication of a work without the permission of the owner
are offences under the Act. The question is: whether identification of the owner of the
copyright is a pre-condition for violation of the provisions of Section 63 or 68A, as the
case may be? The finding of the High Court and ably sought to be supported by Shri
Prakash Reddy is that unless the owner is identified and he comes and gives evidence that
he had copyright of the video film which was sought to be in violation of Section 52A or
Section 51 of the Act, there is no offence made out by the prosecution and that, therefore,
the conviction and sentence of the respondent is not valid in law. He contends that
Section 4 expressly excludes publication of the work to be published. The identification
of the owner being an essential element to prove the offence of infringement of copyright,
the prosecution has failed to establish the same. In construction of the penal statute strict
construction should be adopted and in that perspective to benefit of doubt given by the
High Court is well justified and does not warrant interference.
It is true that in the interpretation of penal provisions, strict constructions is required to be
adopted and if any real doubt arises, necessarily the reasonable benefit of doubt would be

0 [1996]4 Supp SCR 812. Division Bench.


Page 247 of 255
extended to the accused. In this case, the question arises: whether such a doubt has
arisen? The object of amending the Copyright Act by Amendment Act 65 of 1994, as note
above, was to prevent piracy which became a global problem due to rapid advances in
technology. The legislature intended to prevent piracy and punish the pirates protecting
copyrights. The law, therefore, came to be amended introducing Section 52A. Thereafter,
the piracy of cinematograph films and of sound recording etc. could be satisfactorily
prevented. Moreover the object of the pirate is to make quick money and avoid payment
of legitimate taxes and royalties. The uncertified films are being exhibited in a large
scale. Mushrooming growth of video parlors has sprung up all over the country exhibiting
such films recorded on video tapes by charging admission fee from the visitors.
Therefore, apart from increasing the penalty of punishment under law it also provides the
declaration on the offence of infringement and video films to display certain information
on the recorded video film:, and containers thereof. Section 52A thus has incorporated
specifications of the prints in Sub-section (2) thereof. The construction of Sections 52A,
51, 63 and 68A should be approached from this perspective. It would be further profitable
to read the relevant provisions of the Cinematograph Act, 1952 in this behalf. . .
....

It is true that there is no specific charge under Section52A. The charge was under Section
51 read with Section 63 of the Act. In view of the above finding and in view of the
findings of the courts below that the respondent was exhibiting the cinematograph films
in his Video City for hire or for sale of the cassettes to the public which do not contain the
particulars envisaged under Section 52A of the Act, the infringement falls under Section
51(2)(ii) or Section 52A of the Act. The former is punishable under Section 63 and the
latter is punishable under Section 68A of the Act. In view of the above findings of the
courts below, the offence would fall under Section 68A of the Act. It would, therefore, be
unnecessary for the prosecution to track on and trace out the owner of the copyright to
come and adduce evidence of infringement of copyright. The absence thereof does not
constitute lack of essential element of infringement of copyright. If the particulars on
video films etc. as mandated under Section 52A do not find place, it would be
infringement of copyright.
In our view, on the facts in this case, the offence would fall under Section 68A of the Act.
Accordingly, the conviction of the respondent is altered to one under Section 68A. There
would be no prejudice to the respondent.0
The Court held that it would be unnecessary for the prosecution to track on and trace out the
owner of the copyright to come and adduce evidence of infringement of copyright. The absence
thereof does not constitute lack of essential element of infringement of copyright. The Court did
not give any reason for the proposition that it would be unnecessary for the prosecution for the
reason is evident in the language of Section 68A and the reason is that the offence under Section
68A read with Section 52A is a strict liability offence.

Section 69 of the Act makes provisions regarding corporate criminal liability. Section 70 makes
provisions regarding the jurisdiction of the court and provides, No court inferior to that of a

0 Id., 819.
Page 248 of 255
Metropolitan Magistrate or Judicial Magistrate of the first class shall try any offence under this
Act. Section 71 prescribes the limitation period for appeal as under:

Any person aggrieved by an order made under sub section (2) of Section 64 or Section 66
may, within thirty days of the date of such order, appeal to the court to which appeals
from the court making he order ordinarily lie, and such appellate court may direct that
execution of the order be stayed pending disposal of the appeal.
The Code of Criminal Procedure, 1973 does not define compoundable offence. 0 Section 320 of
the Code provides the list of offences punishable under the Indian Penal Code which may be
compounded.0

In Shanu Films v. State of Bihar 0 it was submitted that at the intervention of well-wishers
and friends, good sense had prevailed and the parties had entered into a compromise and a joint
compromise petition was filed. Without going in details the court observed that
Sections 333 and 420 of the Indian Penal Code and the provision of the Copyrights Act
were compoundable under the provision of Section 320 Cr.P.C. but the offence under
Section 409 of the I.P.C. is not. Further, it was observed as under:

Section 482 of the Cr.P.C. saves the inherent power of the Court to make such orders as
may be necessary to give effect to any order under this Code or to prevent abuse of the
process of any court or otherwise to secure the ends of justice. The expression abusing
the process of the court is generally applied to a proceeding which is wanting in bona
fides and is frivolous, vexatious or oppressive and the High Court is under an imperative
obligation to interfere in order to prevent the harassment of a citizen by an illegal
prosecution. Broadly speaking, the High Court will interfere where the facts float on the
surface and there is not even a scintilla of suspicion of criminal liability against the
accused. To allow the proceedings to continue in such a case would be allowing a force to
be enacted to the harassment of the accused.
In Madhavrao Jiwajirao Scindia v. Sambhajirao Chandrejirao Angre0 it was
held that while exercising inherent power of quashing under Section 482, it is for the
0 In Murray v. The Queen-Empress(1893)ILR21Cal103,112(Division Bench) the Calcutta High Court observed as
under:The compounding of an offence signifies that the person against whom the offence has been committed has
received some gratification, not necessarily of a pecuniary character, to act as an inducement for his desiring to
abstain from a prosecution, and the law provides that if the offence be compoundable, a composition shall have
the effect of an acquittal.

0 The Law Commission of India in its Report Number 237 (December 2011) recommended that
the offences which affect the security of the State or have a serious impact on the society at large
ought not to be permitted to be compounded. So also, crimes of grave nature should not be the
subject matter of compounding.

0 2007CriLJ 617(Single Judge).


Page 249 of 255
High Court to take into consideration any special features which appear in a particular
case to consider whether it is expedient and in the interest of justice to permit a
prosecution to continue. Where in the opinion of the court, chances of an ultimate
conviction are bleak and, therefore, no useful purpose is likely to be served by allowing a
criminal prosecution to continue, the court may, while taking into consideration the
special facts of a case, also quash the proceedings.0
In Gurmit Singh v. State of Punjab 0 after the matter between the parties has been
compromised a prayer was made under Section 482 Cr.P.C. for quashing of FIR under
Sections 51, 52A, 63, 68, 68A of Copyright Act and Section 420 of IPC. The court referred the
cases of B.S. Joshi v. State of Haryana0 , Kulwinder Singh v. State of Punjab0,
Nikhil Merchant v. Central Bureau of Investigation0, Madan Mohan Abot v.
State of Punjab0. Keeping in view the above settled legal position and taking into account the
fact that both the parties have desired to live in peace and harmony and carry on with their lives
without any ill will or rancour by resolving their differences and entering into the aforesaid
compromise, it is evident that it is a fit case where there is no legal impediment in the way of the
Court to exercise its inherent powers under Section 482 Cr.P.C., for quashing of the FIR in the
interest of justice.

In S. K. Sahani v. State0 the respondent no.2 has settled all their disputes with the petitioner.
The learned APP submitted that the owner of the copyright material has to be treated as a
defendant in civil as well as in criminal prosecution under Section 68A of the Copyright Act and
referred the case of Supreme Court in Gian Singh v. State of Punjab0. Keeping in view the
number of judgments of the Apex Court and various High Courts whereby offence under Section

0 1988CriLJ853.

0 Supra 41, 619.

0 MANU/PH/3245/2010(Single Judge).

0 (2003)4 SCC 675.

0 2007(3) RCR 1052.

0 J.T. 2008(9) S.C. 192.

0 2008(4) SCC 582.

0 MANU/DE/4170/2011(Single Judge).

0 (2012)10SCC303.
Page 250 of 255
320 of IPC has been compounded. The matter has been compromised inter se parties, the court
quashed the FIR.

In Sanjay Kumar Behera v. State NCT of Delhi 0 the learned Counsel appearing for the
State argued that Section 63 of the Copyright Act is a non-compoundable offence and pointed
out that a charge sheet in this matter was filed and the matter has been pending trial. The parties
relied upon decisions of Sanjay Singh v. State (NCT) of Delhi 0; Mukesh Bansal v.
State0and Rishiraj v. State0. The court quashed the proceedings pending in the Trial Court
with costs.

In Naveen Vajpai v. State of Rajasthan 0 police filed charge-sheet against the petitioner
for offences under Sections 37, 51, and 63 of the Act. Both the parties had submitted an
application for compromise, but the learned trial court rejected the application filed by both the
parties. The Court observed as under:

[T]his Court can exercise its inherent powers to quash the proceedings in respect of non-
compoundable offence on the ground that the parties have settled the dispute among
themselves but, at the same time, it is clear that as has been held by Honble Apex Court
in the above judgments, said principle cannot be applied universally in all cases
irrespective of nature, seriousness and attended circumstances of the case. The powers
under Section 482 Cr.P.C can be invoked if only such quashing will meet the ends of
justice.
The Court has accepted the compromise filed by the parties and observed as under:

[T]he dispute arises out of commercial transaction. This Court feels that the parties have
come forward to quash the proceedings by arriving at an amicable settlement and this
Court feels that continuation of the proceedings would serve no useful purpose and it
would be futile exercise.0

0 MANU/DE/0077/2012(Single Judge).

0 2008(1) JCC 650.

0 2009(2) JCC 898.

0 2009(1) JCC 265.

0 S.B. Cr.MP No.479/2012High Court of Judicature for Rajasthan at Jodhpur (Single Judge). Available at:
http://courtnic.nic.in/jodh/judfile.asp?ID=CRLMP&nID=479&yID=2012&doj=4/27/2012.Last visited on 01-12-
2013.

0 Id.,37.
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In Ajay Chadha v. State0 the second respondent had initiated proceedings by lodging a
complaint for offences allegedly committed under Sections 63 and 66 of the Act. The second
respondent had also instituted a civil suit for recovery of money under certain transactions
between the petitioner and the respondent. The same had resulted in a compromise and
substantial sums of money were paid by the petitioner in favor of the respondent herein. It was
also agreed that all matters would be settled between them. However, on the petitioner and the
respondent approaching the court below seeking compounding of the offences alleged, the court
below has rejected the application, on the footing that the Act does not provide for compounding
of any offences and that unless there was a specific provision, it is not open for the parties to
seek compounding of the offence.

While referring decision of Gian Singh v. State of Punjab0case the court observed that the
present legal position, namely, that even when the offences are expressly declared to be non-
compoundable, it is possible for the High Court in exercise of its power under Section 482 of the
Code of Criminal Procedure, 1973, to quash certain proceedings to give a quietus to the matter
depending on the nature and gravity of the crime. The court observed as under:

[S]ince the matter is purely personal between the parties and does not involve a
serious offence and even the alleged infringement having been sorted out between the
parties and given the fact that the offences, at best, would attract punishment of not more
than 3 years, it is a fit case where matters ought to be given a quietus when the parties
seek such settlement between them to be recorded. Therefore, the prosecution being
rendered a futile exercise in the de facto complainant no longer interested in prosecuting
the case.
In view of the above discussion, it may be concluded that the offences under the Copyright Act
are:

1. Ordinary liability offences under Sections 63, 63B, 65, 65A and 65B.

2. Strict liability offences under Section 68A read with Section 52A.

3. Offences under Sections 65, 65A and 65B are clearly bailable and non-cognizable offences
by virtue of the provisions of Cr. P. C.

4. The High Courts have treated the copyright offences as compoundable offences but only by
invoking their inherent power in the light of the Supreme Court decision.

5. Two High Courts have held that the copyright offences are cognizable and non-bailable and
two High Courts have held that the copyright offences are non-cognizable and bailable.

0 MANU/KA/0297/2013(Single Judge).

0 Supra 50.
Page 252 of 255
The real problematic area of copyright law relating to offences is: whether the offences are
cognizable and non-bailable.

Part II
Conclusions

It may be concluded that none of the five IP statutes have made provisions classifying the
offences as: bailable or non-bailable and compoundable or non-compoundable. Whenever the
question of compounding of offence has arisen before the Courts, the Courts have allowed
compounding. The classification of an offence as strict liability and ordinary liability is quite
easy as the classification is based on a principle and not on some mathematical formula as may
be the case with the classification of offence as cognizable and non-cognizable. It has been noted
that even in case of ordinary offences the statutes have made a departure from ordinary criminal
procedure by requiring the accused to prove his innocence. As to the classification into
cognizable and non-cognizable only two statutes, i.e., The Trade Marks Act, 1999 and the
Geographical Indications of Goods (Registration and Protection) Act, 1999 have clearly
identified the cognizable and non-cognizable offences. The statutory silences, as noted above,
breed uncertainty. Uncertainty breeds disputes. Disputes breed litigations. Litigations breed
costs. Costs are burdens. Burdens are not benefits. Therefore, it is suggested that the Parliament
may either amend these statutes and clarify the law or legislate a separate Intellectual Property
Offences Act.

It is submitted that the study in this paper is of preliminary in nature. It is expected that more
detailed and indepth study will be taken in this area.

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