Litigation Specialised

Where to file suit for copyright infringement? Supreme Court’s purposive interpretation amounts to re-writing the Copyright Act

vijayaraghavannarasimhamA plain reading of Section 62 of the Copyright Act, 1957 will reveal that Section 62(2) of the Copyright Act is an exception to the general rule vesting jurisdiction in a civil court in case of ‘infringement of copyright in any work’.

Under Section 62(1), such a suit has to be instituted before ‘the district court having jurisdiction’ in respect of the ‘infringement of copyright in any work’.

The general rule, seen in Section 20 of the Code of Civil Procedure, 1908 (“CPC”), is that a civil proceeding complaining of ‘infringement’ has to be instituted where the ‘cause of action’, that is, the ‘infringement’ arose, or where the defendants reside or carry on business.

S62CopyrightAct S20CPC

Section 62(2), however, has a non obstante clause vis-a-vis Section 20 of the CPC and any other law in force. Therefore, only Section 62 is invoked to determine whether such a suit is territorially tenable.

Section 62(2) thus makes an exception to Section 62(1). It means that a ‘district court within whose jurisdiction plaintiff resides or carries on business’ is also a place of permissible jurisdiction. This necessarily means that even if the ‘infringement of copyright in a work’ arose within the jurisdiction of Court A, the suit can be filed by the plaintiff in Court B, within whose jurisdiction he resides or carries on business.

Once the plaintiff proves that he was residing at the chosen venue or he was carrying on business there, he can surely sue at that location. The plaintiff need only show that he was ‘actually and voluntarily residing’ there or ‘carrying on business’ or personally working for gain. Once these ingredients are satisfied, the suit has to be held maintainable. In effect, the criteria under Section 20 of the CPC, that is, where the ‘cause of action’ arose or where the ‘defendant was residing’ or ‘carrying on business’ are rendered otiose.

The reasoning behind creating this exception was that an artist must have total control and dominance over his ‘copyright in a work’. The artist has the right to carry his right to sue wherever the artist resides or moves to reside or carries on business or moves to carry on business, irrespective of where the cause of action or infringement arises. It is a clear and lucid departure from the ordinary rule of territorial jurisdiction.

How Sanjay Dalia rewrote the Copyright Act, all in the name of “purpose”

Unfortunately, in one more exhibition of the ‘purposive interpretation’ rule, the Supreme Court has affirmed the decision of the Delhi High Court in Indian Performing Rights Society Ltd. v. Sanjay Dalia.

The plaintiff was carrying on business through a branch office in Delhi though their head office was in Mumbai. The alleged ‘infringement’ had taken place in Mumbai. The concurrent findings of the Delhi High Court declining to entertain the suit in Delhi was affirmed by the top court.

“In our opinion, the 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, as discussed above.”

‘Purposivism’ and ‘consequentialism’ cannot be used to tide over the ‘convenience or inconvenience’ of parties. When the Parliament has conferred on the plaintiff, the right to sue for infringement wherever he resides or carries on business, is the Supreme Court right in concluding that plaintiff could not do so in a case where the infringement arose in Mumbai and defendant carried on business in Mumbai and plaintiff also had its head office? This amounts to re-writing the legislation. Oh, for an Antonin Scalia dissent of the Obamacare and Obergeleff genre.

Vijayaraghavan Narasimhan is an advocate practicing at the Madras High Court.


Answers to Law Biriyani 1 – What was Meghnad Saha’s suggestion? Toho owned the copyright in whose roar?

PreethaMahadevan_LawBiriyani1WinnerThank you for your sending in your answers to the first Law Biriyani. Many of you got all six answers correct but Preetha Mahadevan, a “corporate lawyer, sudoku addict, and failed photobomber”, was the first person to do so, and she is the winner of discounts to the tune of Rs. 8000/- to purchase any course or set of courses on

These are the answers to the quiz questions that appeared in the Law Biriyani column yesterday.

A 1. The Planning Commission. According to Prime Minister Narendra Modi’s recent announcement, the Planning Commission shall soon be abolished.

A 2. The Tamil Nadu government has passed a law, to make it unlawful for recreational clubs to restrict the entry of persons on the grounds of them wearing a dhoti. An amendment made to the Tamil Nadu Entry into Public Places (Removal of Restriction on Dress) Act, which now provides for the removal of restrictions imposed by recreation clubs and many such organisations on wearing a dhoti, has been notified in the Gazette of the state government.

GodzillaA 3. Godzilla. A film (reboot of the Godzilla film franchise) going by the same name was released sometime in May 2014. A sequel is officially in the works featuring other Toho properties including Rodan, Mothra, and Ghidorah.

A 4. Prohibition, from latin word “prohibere” which means ‘keep in check’. Kerala recently announced a prohibition policy.

GoolamVahanvatiA 5. Goolam E. Vahanvati. His paternal great-grandfather had been a builder of wooden ships, hence the family name: ‘vahan’, in Gujarati, is a ship.


A 6. Joel Zimmerman is better known as Deadmau5.


He is trying to trademark his device that he calls mau5head. The company in question is Disney, who believe that due to the visual similarity with Mickey Mouse, granting Deadmau5 the trademark would damage its business in the U.S. and around the world.


Walnut Knowledge Solutions ( a Bangalore-based organisation founded by two lawyers, Raghav Chakravarthy and Sachin Ravi, is focused on quizzing and the use of knowledge-based tools for engagement, learning, and development.


WIPO won’t turn a blind eye to the needs of the Visually Impaired anymore…


June 19, 2013: Diplomats from 186 member countries of the World Intellectual Property Organisation (“WIPO”) have gathered at Marrakesh in Morocco to negotiate the text of the Treaty on Limitations and Exceptions for Visually Impaired Persons/Persons With Print Disabilities (“the Text”).

The purpose of such a treaty is to ease access to books for the blind, visually impaired, and other print-disabled persons. With ninety per cent of the 314 million blind and visually impaired persons residing in developing countries, the conference is seen as an important occasion to negotiate limitations and exceptions in domestic copyright laws that will allow special provisions for the visually impaired. For instance, the Text permits certain authorised entities to make available to the visually impaired (and other beneficiaries), a copy of a work in an accessible format, without the authorisation of the copyright holder. Further, the Text also provides for the negotiation of licenses with the copyright holders to exchange special formats across borders, or to produce their own materials to make the work accessible to the visually impaired.

The conference is expected to be the culmination of years of discussions on making more works under copyright available for the visually impaired in special formats and accessible versions. India has one of the largest populations of visually impaired persons and has been at the forefront of the discussions on disability rights within intellectual property law. Rahul Cherian, one of the founders of the Inclusive Planet Centre for Disability Law and Policy, had been involved in drafting the Text.

Groups such as the Motion Picture Association of America have vociferously opposed any such limitation or exception in the copyright laws. They have even lobbied for stricter protection for Digital Rights Management technology in the Text, as well as the removal of any references to “fair use” or “fair dealing”.

(Samar Jha is part of the faculty on


Direction to limit temporary injunctions in IP matters unwise

By Ajay J.N.

Two decisions of the Supreme Court, both by the same bench comprising Justices Markandey Katju and Asok Kumar Ganguly, recommended limiting the use of interim injunctions in intellectual property rights (“IPR”) matters.

Shree Vardhman Rice and General Mills v. Amar Singh Chawalwala, (2009) 10 SCC 257 pertained to an appeal against an order of the trial court on an interlocutory application for injunction for trademark infringement. The court, while declining to interfere, held:

3. Without going in to the merits of the controversy, we are of the opinion that the matters relating to trademarks, copyrights and patents should be finally decided very expeditiously by the Trial Court instead of merely granting or refusing to grant injunction. Experience shows that in the matters of trademarks, copyrights and patents, litigation is mainly fought between the parties about the temporary injunction and that goes on for years and years and the result is that the suit is hardly decided finally. This is not proper.

4. Proviso (a) to Order XVII Rule 1(2) C.P.C. states that when the hearing of the suit has commenced, it shall be continued from day-to-day until all the witnesses in attendance have been examined, unless the Court finds that, for the exceptional reasons to be recorded by it, the adjournment of the hearing beyond the following day is necessary. The Court should also observe Clauses (b) to (e) of the said proviso.

5. In our opinion, in matters relating to trademarks, copyright and patents the proviso to Order XVII Rule 1(2) C.P.C. should be strictly complied with by all the Courts, and the hearing of the suit in such matters should proceed on day to day basis and the final judgment should be given normally within four months from the date of the filing of the suit.

In Bajaj Auto Limited v. TVS Motor Company Limited, (2009) 9 SCC 797, the same bench, while quoting the decision in the Shree Vardhman Rice and General Mills Case, (supra) observed:

10. In the present case, although arguments were advanced at some length by the learned Counsel for both the parties, we are of the opinion that instead of deciding the case at the interlocutory stage, the suit itself should be disposed of finally at a very early date.

These decisions may seem innocuous, but may prove to be a panacea for defendants in intellectual property matters. In a recent case before the Karnataka High Court, the defendant’s sole contention before the High Court in appeal against the grant of interlocutory injunction was in terms of these Supreme Court decisions; the High Court was not too impressed and dismissed the appeal, but also directed the trial court to dispose of the matter in four months.

On closer examination, the decision in the Shree Vardhman Rice and General Mills Case does not state that temporary injunctions should not be granted in all matters but the implication is that the final disposal should be given importance and not the grant of temporary injunction. More recently, on September 27, 2010, in another matter involving interlocutory injunctions, the Supreme Court refused to entertain the matter and directed the high court to dispose the main matter within nine months. (See, Raymond Limited v. Raymond Pharmaceuticals Ltd., in SLP (Civil) No(s).26610/2010). From these decisions, the philosophy of the Supreme Court appears to be ‘let us not interfere in interlocutory applications in IPR matters’. Let us examine the implication of such an approach.

Temporary injunctions in IPR litigation – A sine-qua-non

If the courts adopt a strategy of not granting a temporary injunction, the impact of such a decision would be enormous and would change the entire nature of intellectual property litigation in India. Temporary injunctions are necessary to protect the plaintiff’s rights during the pendency of the suit, and the impact of non-grant of injunction is enormous. In actions pertaining to passing off or infringement in patents, trademarks, or designs matters, it is very important that the injunction be granted before the defendant can establish a considerable market presence during the pendency of the suit and render the very filing of the suit infructuous. Similarly, in the case of disparaging marks, the damage will be done by the time the suit is decreed. In the case of copyright or a breach of confidence concerning literature, music, cinema or even software, or in matters of piracy, the urgency is tremendous. Once the copyrighted matter is communicated to the public for a long duration, it becomes difficult to minimise the impact. Pirated materials are easily disposable, cannot be accounted for, and the damages cannot be calculated in terms of money.

Under Section 135 (2) of the Trade Marks Act, 1999, the Court has the discretion to grant ex-parte orders, which would in effect, be taken away by such a decision from the Supreme Court. The various injunctions which can be granted during the pendency of the trial include those for discovery of documents, preservation of infringing goods, documents or other evidence which are related to the subject-matter of the suit and restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect the plaintiff’s ability to recover damages, costs, or other pecuniary remedies which may finally be awarded. If there is a blanket ban on the grant of interim orders, the conduct of the trial becomes difficult, resulting in unfair prejudice to the plaintiff, and the very purpose of the enactment would be lost.

Very often, the grant or non-grant of temporary injunction results in the matter being settled. The defendant may not want to fight the litigation, and if the plaintiff does not get the injunction, he may want to close the matter immediately.

If an injunction is not granted, then the remedy lies in damages. However, India is yet to develop the concept of award of exemplary damages. The maximum award of damages under the Designs Act, 2000 is Rs.50,000/-. Section 55 of the Copyright Act, 1957, Section 108 of the Patents Act, 1970 and Section 135 of the Trademarks Act, 1999 do not specify the extent of damages which can be claimed, but rather, provide that this is subject to proof. How does one prove damages which cannot be calculated in terms of money? Can one quantify the loss that occurs to a person’s brand due to the fact that someone else has infringed his mark, broken into his market share and probably achieved considerable distinction and reputation in the market?

The decision would also go against the principles of the Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS”) as it mandates effective remedies to prevent IPR infringement. The absence of a temporary injunction would definitely mean lesser protection, and an effective remedy is lost to the person who seeks the relief.

Enforcement of the law would suffer. It would encourage parties to ‘take a chance’ and violate intellectual property rights and gamble at the trial. It would provide an incentive to the defendant to adopt dilatory tactics to delay the trial.

A speedy trial in IPR matters – is it a feasible approach?

The decision in Shree Vardhaman mandates that once the hearing of the matter commences, the suit should commence on a day-to-day basis, and that the final judgment should be delivered within 90 days of the filing of the suit.

Apart from the burden on our courts, these instructions are not mindful of a few factors.

Service to the defendant: Once a suit is filed, the suit summons need to be served on the defendant. If there were an ex-parte injunction in operation, in most cases, the defendant would come running to court. If there is no injunction rule in operation, the defendant will avoid summons for as long as possible. This can prolong matters for a few months, if not years.

Time for filing a written statement: Under the Civil Procedure Code (“the CPC”), the defendant has the right to have three months to file a written statement. Further, since the provision is merely directory and not mandatory, the defendant’s right to file a written statement is not lost even after 90 days. (See, Smt. Rani Kusum v. Smt. Kanchan Devi, AIR 2005 SC 3304). If there is no threat of an interlocutory injunction, the defendant can use every trick in the book (read CPC) to delay the inevitable. He can seek time for the inspection of documents, notice to admit documents, file interrogatories, take procedural objections, and file an application to reject the plaint.

Time for framing issues: After pleadings are complete, the court has to draft issues. Typically, the drafting of issues is something which is of the least priority to a court that is struggling with a huge pendency of matters. Even assuming that the court drafts issues within a week of completion of pleadings, both parties have the right to seek the amendment or the striking off of issues, for which interlocutory applications may be filed. No court can legitimately refuse to entertain any such application on the ground that the Supreme Court has stated that the trial should be complete in four months.

Interlocutory applications for discovery and inspection: After the court frames the issues and posts the matter for trial, the parties have to file a list of witnesses and documents. In order to establish their case or defence, the plaintiff or the defendant may require several documents from the opposite party. Obviously, the legitimate objections of the other party will have to be heard. In some cases, commissioners would have to be appointed to seize and take inventory of articles. In some cases, some governmental authority or expert will have to be examined and summons have to be issued to such persons.

Drafting of evidence and conducting trial: The drafting of evidence in contested trial matters and especially in IPR matters, is also quite complicated. If the defendant has denied each and every allegation, proof has to be adduced by documentation. Documents pertaining to the origin of a mark, its distinctiveness and ownership have to be examined. In copyright matters, the origin of copyright and proof of adaptation will have to be established. In patent matters, technical experts will have to be examined. If the defendant has raised questions regarding the validity of a design, copyright or patent, the plaintiff may be required to do considerable homework to dig up documents to prove and establish its case. These cannot be done over a period of a few weeks or months. In some matters, months will be required to prepare evidence and also to cross-examine witnesses. In these circumstances, it is necessary to give parties a fair opportunity to establish their case at trial. Enforcing a near impossible time-line would make it extremely difficult for parties (and to their counsel).

Delivering a judgment: Most judges in India are not specially equipped to handle IPR matters. To impose a strict timeline would only lower the quality of judgments delivered.

Appeals: Order 41 Rule 5 of the CPC says that the appellate court may stay proceedings. A stand may be taken that if there was no injunction granted in the first place, no additional harm will be caused if the execution of the decree is stayed for the duration of the appeal. In fact, even before the appeal is filed and immediately after the judgment is pronounced by the trial court, Order 41 Rule 5 (2) provides that the trial court may itself stay the operation of the decree. If injunctions should not be granted and the suits must be finally disposed of, then would that logic not apply to appellate courts as well?

Recently, Justice Krishna Iyer, while commenting on the Commercial Courts Bill, suggested that India was veering towards speedy justice only for the rich. Similarly, these judgments of the Supreme Court have sought to make a classification for the speedy disposal of all IPR matters. Instead of taking steps to improve judicial administration over all, this ad-hoc method of restricting the grant of temporary injunctions and seeking an early disposal of suits in specific matters is a dangerous precedent.

There have been several IPR cases where the Supreme Court has found a balance of convenience in favour of the defendant and therefore has not interfered and sought final disposal of matters by the trial court. These include cases where the defendants were established businesses, and the Supreme Court declined to make observations on the prima facie case. It was the subjective satisfaction of the court that made the court adopt such a measure. However, in light of the reasons suggested above, it would not be a good idea to adopt the same as a general rule.