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

"Copyright Act gives a range of rights and privileges to the first owner of copyright without requiring prior registration," observed a Single Bench of Justice GS Patel.

The Judge emphasized that Section 51 of the Copyright Act, which speaks of infringement of copyright, does not restrict itself to works that have been registered with the Registrar of Copyright.

It observed,

"This Section does not, per se, demand prior registration. It does not say so anywhere; and this has to be read with Section 45(1), which says that the owner of copyright may apply for registration. Importantly, copyright infringement lies in the unlicensed use of original works, in which the author has a spectrum of exclusive rights."

The provision was also compared to Section 27 of the Trade Marks Act which creates a conspicuous bar on institution of any proceeding in regard to infringement of an unregistered trade mark.

The Court held,

"Copyright and trade mark operate in different spheres, though in some cases — as in the present one — these may overlap or intersect. An artistic work may receive both trade mark registration as a label and copyright protection as an artistic work. One requires registration to sustain a suit for infringement. The other does not. At its essence, copyright is a recognition of originality, granting rights of commercialisation and exclusivity in that commercialisation to the author of a work, a person who, by sweat of his brow, has brought into being the original expression or realisation of an idea. The emphasise is on originality, labour and skill in expression and realisation."

In holding thus, Justice Patel also declared as per incuriam two Single Bench decisions of the High Bombay Court in Dhiraj Dharamdas Dewani v. Sonal Info Systems Pvt Ltd & Ors., 2012 (3) Mh LJ 888, and Gulfam Exporters & Ors. v. Sayed Hamid & Ors. (unreported).

The above two cases had held that registration under the Copyright Act is mandatory before a plaintiff can claim relief, civil or criminal, under the Copyright Act.

In his order, Justice Patel observed that the above decisions were passed in ignorance of four binding precedents, all to the contrary.

The Bench noted that the decision in Dhiraj Dewani (supra) is entirely per incuriam.

"It incorrectly notes that there was no decision of the Bombay High Court directly on this point. There were, in fact, four previous decisions, all to the contrary, each binding on the Dhiraj Dewani court," the order stated.

The Bench firstly referred to the decision of Justice (Retd) SH Kapadia in Burroughs Wellcome (India) Ltd v. Uni-Sole Pvt Ltd & Anr., 1997(3) Mh L J 914, where after discussing the essence of copyright, the Single Judge had held that there is no provision under the Act that deprives an author of his rights on account of nonregistration of the copyright.

Similarly, in the decision of Justice (Retd) SJ Vazifdar in Asian Paints (I) Ltd v. M/s Jaikishan Paints & Allied Products, 2002(4) Mh L J 536, it was held that Registration under the Copyright Act is optional and not compulsory.

The Single Judge had ruled,

"Registration is not necessary to claim a copyright. Registration under the Copyright Act merely raises a prima facie presumption in respect of the particulars entered in the Register of Copyright. The presumption is however not conclusive. Copyright subsists as soon as the work is created and given a material form even if it is not registered."

The decisions in International Association of Lions Club v. National Association of Indian Lions & Ors., 2006(4) Mh L J 527 and in Anand Patwardhan v. Director-General of Doordarshan & Ors., Suit No. 2259 of 2004, were also to the same effect.

Thus holding that registration is not a pre-requisite to seek protection under the Copyright Act, Justice Patel observed,

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

He added,

"There is one other decision of another learned Single Judge of this Court in Gulfam Exporters And Ors v Sayed Hamid And Ors under Section 63 of the Copyright Act 1957, which says in paragraphs 6 and 8 that registration is required.

On the question of copyright registration, therefore, Gulfam Exporters joins Dhiraj Dewani in the class of judgments rendered per incuriam on the question of compulsory registration under the Copyright Act."

Background

The observations have come in a copyright infringement suit filed by a company engaged in the business of production and sale of refined soyabean oil, Sanjay Soya Pvt. Ltd.

It was the Plaintiff's case that the Defendant-company, Narayani Trading Company was counterfeiting and was using the rival trade dress and label for similar soyabean edible oil products.

Findings

In his order, Justice Patel noted that the key features, integers or elements in Sanjay Soya's label all find place in Narayani Trading's label with only minor variations.

"These variations are too irrelevant to warrant consideration. From a look at these products, it would be possible to tell one from the other. That is indeed the only test when it comes to trade mark infringement, passing off or copyright infringement," he held.

The Bench rejected Narayani Trading's contention that the Plaintiff could not assert copyright on the package label since the same was unregistered. It held,

"Section 51, which speaks of infringement of copyright, does not restrict itself to works that have been registered with the Registrar of Copyright."

The Bench also refused to apply the precedent set in Dhiraj Dewani, holding the same to be per incuriam. In fact, it further rejected the pleading that a SLP in Dhiraj Dewani was dismissed by the Supreme Court.

Justice Patel said, "That is so, but the order of dismissal left the question of law open. In any case, an in limine dismissal, it is well settled, does not and cannot amount to a binding pronouncement on law."

Instead, the bench referred to the Supreme Court's decision in Engineering Analysis Centre of Excellence Pvt Ltd v Commissioner of Income Tax & Anr., LL 2021 SC 124, where while delineating the rights of an author of a work, of the owner of copyright, of the concept of copyright, and when and how it can be used, claimed and protected against infringement, the Supreme Court did not return a finding that prior registration is mandatory before such rights and entitlements are claimed.

It added that International treaties and obligations to which India is a party also militate against the acceptance of the Dhiraj Dewani view that copyright registration is mandatory.

In this context it referred to the Berne Convention of 1886 which is based on a principle that protection must not be conditional upon compliance with any formality.

Similarly, the Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) provides for the principles of national treatment, automatic protection and independence of protection.

The Court noted that the Dhiraj Dewani decision goes on to say that, without registration, an owner of a copyright may bring suit "in the regular Court" — meaning any of the courts covered by Section 20 of the CPC.

Finding this analysis to be "plainly incorrect", Justice Patel opined,

"Suing in the court with jurisdiction where the plaintiff copyright holder resides or works is not dependent on registration at all. The owner of a copyright has a panoply of jurisdictional choices, including one that is available only to him (and not to an ordinary plaintiff in a regular civil suit)."

Other findings

Another argument made by the defendant was that the plaintiff-company a commercial entity, could never itself be the 'artist' and therefore acquired no copyright. It was emphasized that Section 17 of the Copyright Act says that the author of a work is the first owner of copyright. Section 2(d), in relation to an artistic work, defines an author to mean the artist.

Rejecting this submission, the Court held,

"The argument overlooks provisos (a), (b) and (c) in the context of artistic works. This is not a matter to which Narayani Trading can ever attest as a matter of its knowledge, i.e., that the artistic work was not done by a person in the employment of, or engaged by, SK Oil. There is no requirement that the person who actually sketched or drew the artwork must be identified"

The Defendant-company also attempted to draw a distinction between the label and the artistic work. It was argued that the label mark is a registered trade mark and therefore cannot be an artistic work.

The Court however opined,

"This is wholly incorrect. The artistic work is the label, and the label is the artistic work. This is true of almost every type of commercial art and commercial graphic design, from labels on wine bottles to the packaging of soap. The label has registration under the Trade Marks Act. The original artistic work, an integral and inseverable part of the label, receives copyright protection."

The decision was accordingly rendered in favour of the plaintiff with direction to the Defendant, Narayani Trading, to pay costs of Rs.4,00,230/- in favour of the former.

Case Title: Sanjay Soya Pvt. Ltd. v. Narayani Trading Company

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