Copyright Holder's Suit Against Infringement Bars Alleged Infringer From Filing Suit U/S 60 Copyright Act: Karnataka High Court

The Karnataka High Court has said that a suit filed under Section 60 of the Copyright is not maintainable if a suit seeking action is filed by the copyright holder for infringement against the alleged offender.

Justice V Srishananda clarified that the proviso to Section 60 of the Copyright Act was meant to prevent an alleged infringer from filing a suit when the owner of the copyright had previously filed a suit under Section 55. In this case, the order of events favoured the defendants, as they had filed their suit after the plaintiff had filed its suit.

"Since a separate suit is filed by the defendants, after suit came to be filed by the plaintiff in O.S.No.617/2013 on 19.01.2013 at Bengaluru, the said suit filed by the plaintiff at Bengaluru would not be maintainable. In other words, right of the plaintiff to initiate action under Section 60 of the Copyright Act, 1957 would automatically terminate, in view of the positive action taken by the defendants in filing CS(OS) No.616/2013 on 02.04.2013 on the file of High Court of Delhi, whereby, proviso to Section 60 of the Copyright Act, 1957, comes into play."

The appeal was filed challenging an order passed by the trial court whereby its suit was rejected on allowing the application filed by M/s Indian Performing Rights Society Ltd.

The plaint was filed under Section 60 of the Copyright Act r/w Section 26 and Order VII Rule 1 of CPC seeking a declaration that the alleged infringement of copyrights, as threatened by the defendants, was baseless and aimed at extortion. They also sought a permanent injunction against further threats from the defendants.

The plaintiff claimed that the defendants, claiming to be a copyright society, were making aggressive demands and threats related to their copyrights. They demanded that various establishments, including the plaintiff's hotel, obtain licenses for playing pre-recorded music. The plaintiff, under protest, had obtained a license from the defendants to avoid harassment.

The defendants filed an application to reject the plaintiff's suit arguing that a suit they had filed against the plaintiff in the Delhi High Court for copyright infringement meant the suit in Bengaluru was barred.

The Trial Court accepted the defendant's application and rejected the plaintiff's suit. The plaintiff appealed this decision.

The main issue in this case was whether the suit filed by the defendants in the Delhi High Court would bar the continuation of the suit filed by the plaintiff in Bengaluru.

The plaintiff argued that the suit filed by the defendants was merely an empty threat aimed at extorting money and should not bar their suit in Bengaluru. They referred to a decision in Dhiraj Dharamdas Dewani vs. M/s Sonal Info Systems P. Ltd to support their argument.

In contrast, the defendants argued that their suit in Delhi was a positive action that should terminate the proceedings initiated by the plaintiff in Bengaluru. They relied on the decision in M/s Mac Charles (I) Ltd. vs. M/s Indian Performing Rights Society Ltd.

After having heard the parties, the Court emphasized the significance of the proviso to Section 60 which states that an action under Section 60 won't apply if the person making threats (the defendants herein) commences and prosecutes an action for infringement of the copyright claimed by them with due diligence.

“The proviso to Section 60 of the Copyright Act, 1957 would clearly indicate that the action contemplated under Section 60 shall not apply, if the person making such threats, with due diligence, commences and prosecutes an action for infringement of the copyright claimed by him.”

The court considered the plaintiff's claim that the defendants' actions were merely empty threats aimed at extorting money. However, it found that the plaintiff's suit was primarily a reaction to these alleged threats and not a response to a proactive legal action by the defendants. 

It was also confirmed that the defendants had taken a positive action by filing a suit in the Delhi High Court on April 2, 2013 and that the suit was related to copyright infringement claims against the plaintiff.

“In the case on hand, according to the plaintiff, alleged action of defendants is an empty threat. The defendants have shown that positive action has been initiated by filing a proper suit before the High Court of Delhi on 02.04.2013. In other words, since a separate suit is filed by defendants, after the suit came to be filed by the plaintiff on 19.01.2013 at Bengaluru, the said suit filed by the plaintiff at Bengaluru would not be maintainable.”

Referring to the Apex Court judgement in M/s Mac Charles (I) Ltd., vs. M/s Indian Performing Rights Society Ltd, the bench held,

“This Court is of the considered opinion that the grounds urged in the appeal memorandum are hardly sufficient to allow the plaintiff to continue with the suit in O.S.No.617/2013 at Bengaluru by setting aside the impugned Order, whereby, suit of the plaintiff came to be rejected under Order VII Rule 11(d) of CPC.”

The appellate court made it clear that it did not express any opinion on the merits of the case. It recognized that the parties were at liberty to argue the merits of the matter in the suit pending before the High Court of Delhi.

“It is always open for the plaintiff to have its defence filed before the High Court at Delhi and get the suit decided on the merits of the matter and scope of the present appeal would not permit to address the rival contentions with regard to merits of the matter.”

Accordingly, it dismissed the appeal.

Appearance: Advocate Satyanand B S for Appellant.

Senior Advocate Dhyan Chinnappa a/w Advocate Vikram Unni Rajagopal for R1 to R3.

Citation: 2023 LiveLaw (Kar) 385

Case Title: M/s Chancery Pavilion And M/s Indian Performing Rights Society Ltd & Others.

Case No: REGULAR FIRST APPEAL No.145/2015

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