[S.60 Copyright Act] Inquiry Into 'Groundless Legal Proceedings' Can't Conclusively Determine Question Of Copyright Infringement: Bombay High Court

The Bombay High Court has recently held that an inquiry under Section 60 of the Copyright Act by the trial court, cannot partake the character of determination as to whether there is indeed no infringement of copyright since the same would tend to preempt and prejudge an action for infringement of copyright, which the owner may institute.

Section 60 of the Copyright Act allows a person who has received threats of legal action for copyright infringement or has been wrongly accused of infringement in advertisements to take legal action. The recipient of the threats can file a lawsuit seeking a court declaration of who rightfully owns the copyright. They can also seek a court injunction to stop further threats, as well as monetary damages.

A single bench of Justice N.J Jamadar while remitting the matter back to the trial court for reconsideration, held that while an inquiry can be embarked upon under Section 60, in the present case, the inquiry had transgressed the remit of determination under the enacting part of Section 60 of the Act, as it ventures deep into the arena of infringement of the copyright or otherwise, in substance.

Facts

The original plaintiff, Sapna Bhog, argued that she was a self-published author whose romance novels, including a best-seller known as 'The Bond Of Brothers (2021)' have been available on Amazon Kindle. It was argued that in 2022, the defendant, Manya Vejju/ MV Kasi, also an author, wrote a social media post claiming copyright infringement of her series “The Varma Brothers" by Bhog in her 2021 novel and also filed an FIR to that effect. 

Bhog eventually filed a suit under Section 60 of the Act in the civil court seeking a declaration that the threat of copyright infringement was groundless and also to restrain the defendant from pursuing the FIR.

The District Judge held that the FIR amounted to a groundless threat, which justified Bhog's decision to file a Suit under Section 60 of the Act. The court relied on the 2012 judgement passed by the Bombay HC in 'Dhiraj Dewani v/s Sonal Info Systems.' There the judge had returned a finding that the suit under Section 60 of the Act, would be maintainable, despite the Defendants having initiated criminal action against the Plaintiff.

The defendant approached the High Court after the Trial Court passed an order in Bhog's favour. 

Arguments

The defendant, represented by Advocate Hiren Kamod, argued that an FIR does not amount to a groundless threat within the meaning of Section 60, but constitutes an 'action' under the proviso of the same Section.

Kamod argued that the District Judge wrongly placed reliance on the case of Dhiraj Dewani which was declared to be per incuriam, and thus, bereft of any precedential authority, by another Single Judge of the Bombay High Court in the case of 'Sanjay Soya Pvt. Ltd. v/s Narayani Trading Company.'

Bhog's counsel, advocate Amit A. Patil instructed by Parinam Law, argued that the FIR cannot be termed as a bonafide action under proviso of Section 60. It was submitted that the word 'action' under the proviso to Section 60, must be an action in which there could be effective and complete adjudication of disputes, which is only possible before the Court.

Hence, the mere lodging of an FIR by itself cannot defeat the statutory right of a person threatened with groundless action to seek relief under Section 60 of the Act, it was argued.

Court's Findings

The court held that the object of Section 60 is not to restrain a person claiming copyright, from instituting a proceeding for infringement of the copyright. On the other hand, Section 60 warrants that such a proceeding must be capable of affording resolution of the disputes between the parties on the aspect of infringement of copyright, effectively and completely.

It was held that the manifestation of threat can be in varied forms, hence, the threat of criminal prosecution, either by way of notice or lodging a complaint or report with the police, falls within the ambit of the threat envisaged by Section 60. Therefore, the reliance on Dhiraj Dewani (supra) by the Learned District Judge, appears to be of decisive significance, the court held.

The court reasoned that indisputably, the infringement of copyright gives rise to both civil and criminal liability. So an FIR, which eventually leads to a trial on the question of infringement of copyright, could constitute an 'action' under the proviso to Section 60.

The court said it would be hazardous to lay down an abstract proposition that an FIR does not amount to a threat of groundless action or that once an FIR is lodged, a suit invoking Section 60 of the act would become infructuous.

“It would be hazardous to lay down an abstract proposition that FIR does not amount to threat of groundless action or that once FIR is lodged, main part of Section 60 ceases to operate eo instante. In my view, the proper question to be posed is, whether the FIR satisfies the description of an “action” ?,” the court held.

It was observed that while an FIR alleging copyright infringement can be a 'groundless threat' or a 'bonafide action' under Section 60 of the Copyright Act, its proviso states that such an action wouldn't apply if the person making the threats initiates the 'action' with due diligence.

Justice Jamadar accordingly set aside the order of the District Judge who restrained the petitioner/defendant from publishing or making any statements alleging copyright infringement of his work by novelist Sapna Bhog and ordered fresh adjudication of the original plaintiff Bhog's interim application.

The court concluded that the District Judge's views “transgresses the remit of determination under the enacting part of Section 60 of the Act, as it ventures deep into the arena of infringement of the copyright or otherwise, in substance.”

Therefore, it found that it was necessary for the Judge to re-adjudicate if the suit fell under the ambit of “bonafide action” under the proviso to Section 60. The court, however, restrained Kasi from making any defamatory statement till the application was re-adjudicated.

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