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.


Does the Designs Act provide for a counterclaim to cancel a registered design?

JSaiDeepakpicThere is a reference to a ‘defence’ of invalidity of a design in Clauses (3) and (4) of Section 22 of the Designs Act, 2000. Does that refer to a counter-claim for the cancellation of a design, filed in response to a suit for infringement of the design?

Section 22(3) of the Designs Act states that the grounds for cancellation of a design enumerated in Section 19 of the Act may be raised as defences in a suit for design infringement. In my opinion, Section 22(3) provides only for a ‘defence’ of invalidity, but not a ‘counter-claim’ seeking the invalidation of the registered design.

Section22(3)(4)_DesignsActUnlike Section 64 of the Patents Act, 1970 which speaks of both a counterclaim to a suit and a standalone petition before the Intellectual Property Appellate Board to revoke a patent, Section 19 of the Designs Act restricts itself to a petition for cancellation of the design before the Controller of Designs and does not provide for a counterclaim. The framework of the Designs Act in a way, is actually similar to that of the Trademarks Act, 1999, wherein there is no provision for the rectification of a trademark by a court. Therefore, although it is possible for the defendant in a suit for design infringement to raise the defence of invalidity of the design as part of his written statement, it is not in the nature of a counter-claim. At best, such a defence could have the effect of preventing the grant of an interim or permanent injunction if the court comes to the conclusion that the validity of the design is under serious threat. However, the court does not have the power to revoke or cancel the registered design.

The option provided for under Section 22(3) of the Act is akin to Section 107 of the Patents Act which allows a defendant to raise the defence of patent invalidity by relying on grounds listed in Section 64 of the Patents Act. Even in a patent infringement suit, only defences under Section 107 are raised and no counterclaim under Section 64 is instituted, and the High Court cannot invalidate or revoke the patent.

Legal Research AdvertisementThe difference between a “defence” and a “counterclaim” in the context of patents was explained by the Allahabad High Court in Fabcon Corporation v. Industrial Engineering Corporation (AIR 1987 All 338). In this case, the plaintiff claimed that since a defence of invalidity of the patent under Section 107(1) was taken by the defendant, such a defence must be deemed as a counterclaim under Section 64 of the Act. This would mean that the suit for infringement had to be transferred along with the deemed counterclaim to the High Court.

The High Court disagreed with the plaintiff and took a view, which I fully agree with and have always believed in, that a defence as envisaged under Section 107(1) is not the same as filing a counterclaim of revocation under Section 64 of the Act.

To me, the mechanism under the Designs Act is a curious mix of options provided in the Patents Act and the Trademarks Act. It envisages transfer of the suit to a High Court when an invalidity defence is raised, which is similar to the proviso to Section 104 of the Patents Act, with the exception being that the proviso in the Patents Act mentions the suit, “along with the counter-claim”. The absence of any mention of a counter-claim seeking cancellation of the design is similar to the mechanism in the Trademarks Act. And yet, unlike Section 124 of the Trademarks Act , there is no provision for stay of the suit for design infringement during the pendency of the cancellation petition.

What complicates this straightforward conclusion that the Designs Act does not provide for a counter-claim is Section 23, which makes Sections 106 (suit for groundless threats of infringement) and 113 (issuance of certificate of validity of a patent) of the Patents Act applicable to the Designs Act with incidental changes. Extracted below is Section 113 of the Patents Act:

(1) If in any proceedings before the Appellate Board or a High Court for the revocation of a patent under section 64 and section 104, as the case may be, the validity of any claim of a specification is contested and that claim is found by the Appellate Board or the High Court to be valid, the Appellate Board or the High Court may certify that the validity of that claim was contested in those proceedings and was upheld.

If this provision is to be applied with incidental changes to the Designs Act, how would it read? One possible reading could be as follows:

“(1) If in any proceedings before the Controller or the High Court for the cancellation of a design under section 19(1) and section 19(2), as the case may be, the validity of any registered design is contested and that design is found by the Controller or the High Court to be valid, the Controller or the High Court may certify that the validity of that design was contested in those proceedings and was upheld.”

Another possible reading could be as follows:

(1) If in any proceedings before the Controller or the High Court for the cancellation of a design under section 19(1) and section 22(3), as the case may be, the validity of any registered design is contested and that design is found by the Controller or the High Court to be valid, the Controller or the High Court may certify that the validity of that design was contested in those proceedings and was upheld.

The second possibility gives the impression that Section 22(3) provides for a counterclaim to revoke the design. However, it could again be argued that when a defence of design invalidity is raised, a court has the power to declare and uphold the validity of the design, but does not have the power to invalidate the design since the Designs Act does not provide for a counterclaim.

(J. Sai Deepak, an engineer-turned-litigator, is a Senior Associate in the litigation team of Saikrishna & Associates. He is @jsaideepak on Twitter and the founder of “The Demanding Mistress” blawg. All opinions expressed here are academic and personal.)


What’s a generic photo-editing app? Why Photoshop, of course!

“Don’t photoshop your photos so much”. As a photographer, I was obviously offended by my friend’s comment, but as a lawyer, I was amused. Photoshop is only one of Adobe’s photo-editing apps. Adobe also supplies the more advanced Lightroom. Photos can also be edited using Google’s Picasa and Apple’s Aperture. I had edited the photo in question — just a little bit of course — using Instagram. The term “photoshop” however, has almost become synonymous with the act of editing a photo. Has Photoshop become a generic mark?


Generic marks are used to identify a single product and a whole class of similar products. It is very difficult to get such generic marks, words, or symbols, such as “toy trains”, “cars”, and “milk”, registered.

Certain marks however, start out as a distinctive mark (registered or not) but in due course, end up becoming a generic term. The distinctiveness of the mark is lost, eroded, or diluted when other traders or users use the same or similar mark in relation to the same or similar goods or even totally different goods. This is often referred to as “genericide”. (See, Pamela S. Karlan at 390.)

A famous example of genericide is what happened to the term “thermos”. This term was first used to refer to the brand of containers made by the King-Seeley Thermos Company (See, Zoe Argento at 333). Soon however, the Ninth Circuit in United States of America held that the term had entered the public domain and that the manufacturer’s competitors were free to use the term to describe their products (See, King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963) at 578).

Genericide in relation to trademarks also happened to the following terms:

(a) “escalator”, originally a trademark of the Ottis Elevator Company;

(b) “aspirin”, originally a trademark of Bayer AG;

(c) “yo-yo”, originally a trademark of Duncan Yo-Yo Company and;

(d) “Walkman”, originally a trademark of Sony.

In India, terms like “Bisleri”, “Cadbury”, and “Xerox” are few examples of terms that are often used as generic terms.

Intellectual-Property-LawThere are two likely explanations for why a mark becomes generic. A product may become so dominant in its market that consumers start to associate the product’s name with the entire category. Secondly, the mark itself may be a useful shorthand for a product that would otherwise take a lot of words to describe (See, Karlan at 391)

A company therefore, has to continuously market its products and marks in such a way that the mark does not become generic. It also has to be consistently vigilant in relation to any form of infringement of their mark. Sometimes however, even after such marketing and vigilance, the mark may end up becoming generic. The Austrian Supreme Court had ruled against Sony stating that “Walkman” is defined as a noun in the Concise Oxford English Dictionary. Adobe needs to make sure that “Photoshop” does not enter generic language.

(Samar Jha is part of the faculty on


Are we really “buying” Ebooks?

Being an avid reader, I was excited when Amazon launched the Kindle and the Amazon bookstore in India. I started ‘buying’ a number of books from their bookstore, the most recent being the latest Dan Brown offering. The popularity of the book was obvious from the fact that a number of my friends asked me if they could borrow the book from me­—now that I had a copy.


Image above is from Jorghex’s collection in Wikimedia Commons here and has been published under a Creative Commons Attribution-ShareAlike 3.0 Unreported License.

Then came the conundrum. Could I lend the e-book to my friends? I could lend my Kindle itself, but could my friends download the e-book on their Kindles, as long as I gave permission? I felt I should be allowed to do that as ‘buying’ in the traditional sense would mean that I had the right to lend, and re-sell, to others.

To get an answer to my question, I visited the ‘help’ section on the Amazon website. This is the current policy—only certain books that are bought can be lent. Also, books can be lent only by US customers, and that too only for 14 days. As far as I can tell, Indian customers don’t have the right to lend books currently (or at least all the books I have bought can’t be lent). This means that I do not have the option to sell my e-book to a second hand bookstore or even lend to a friend who wants a copy (well I could, but that could amount to illegal activity).

So, in essence, when we ‘buy’ these e-books, we are not really buying these items, we are just given a license to use the contents in a certain manner. This got me thinking. If we are only being given a license to use this e-book, then why does the website display the message “Buy Now” when advertising and not “License Now”? Or “Buy the License to Read the Contents of this Book Now?” Not as catchy, and perhaps misleading to the consumer.

The Consumer Protection Act, 1986 (“COPRA”) is the main legislation in India that seeks to protect the interests of consumers. Interestingly, under the COPRA it is an offence for any person to use unfair means to entice and dupe customers who are generally not very well informed about both the product that they are buying, as well as the rights they have vis-à-vis that product.

In fact, the COPRA specifically allows consumers to file a complaint against any person who indulges in an ‘Unfair Trade Practice’. The term has a very long definition, but a few things caught my eye. Under the COPRA, the following acts are ‘Unfair Trade Practices’:

the practice of making any statement, whether orally or in writing or by visible representation which,

(i)  falsely represents that the goods are of a particular standard, quality, quantity, grade, composition, style or model; ….. or

(vi)  makes a false or misleading representation concern­ing the need for, or the usefulness of, any goods or services.

Additionally, misleading advertisements have also been interpreted by Indian Courts as an unfair trade practice, for example:

Society of Catalysts v. Star Plus T.V., IV (2008) CPJ 1 (NC): Here, a TV channel and mobile operator conducted a contest in which answers had to be sent by SMS. The advertisements claimed that there was no charge for participating in the contest. However, the SMS rates for sending answers were higher than usual SMS rates. So, the cost of participation was in fact built into the high SMS rates. The TV channel collected a large amount of funds, but distributed prizes for only part of the funds collected. This was held to be an unfair trade practice.

Cox & Kings (I)Pvt. Ltd. v. Joseph A. Fernandes, (2006) CPJ 129 (NC): In this case a cruise was advertised for 2 nights 3 days, however, the consumer effectively got only 1 night and 2 days. The advertisement was clearly deceptive and another example of an unfair trade practice.

Courts have however rarely taken up similar misrepresentations in the digital arena, and there is no case law to suggest how courts would view applications of these provisions in the digital paradigm. When a consumer goes to an online shopping site, they will never see these sites display a message such as ‘license music’ or ‘music license just a click away’. Rather, they always use the term ‘buy’ music or ‘buy’ e-books. In fact, a customer will likely never read the word ‘license’ until they take the time to go through the fine print in a ‘web policy’ or the ‘terms and conditions’ page.

Although not yet tested in the courts, looking at the purpose of the Consumer Protection Act, and the way courts have interpreted and enforced its provisions, there is a possibility that the practice of using the word ‘buy’ in online advertisements for shopping websites could be construed as an unfair trade practice under the COPRA. Especially in newer markets like India, online websites must be careful while selling products to consumers to ensure that there are no deceptive or misleading advertisements that induce a customer to believe that they are actually buying the product in the sense they are used to, as opposed to just a license to view or listen to the material!

(Deepa Mookerjee is a member of the faculty at