Copyright registration is not mandatory to claim reliefs under the Copyright act, the Bombay High Court recently ruled, holding that an earlier decision of a co-ordinate bench in the case of Dhiraj Dharamdas Dewani v. Sonal Info Systems Pvt. Ltd. & Ors. was per incuriam (Sanjay Soya Pvt. Ltd. v. Narayani Trading Company).
The judgment was delivered by Justice GS Patel in a plea by a company, Sanjay Soya Pvt. Ltd. (SSPL), which had approached the Court against Narayan Trading Company (NTC) with a plea seeking reliefs for copyright infringement in relation to the artistic work of SSPL in the label of its product.
SSPL claimed that NTC entirely lifted and illicitly copied their registered label mark.
SSPL claimed that the two marks were visually and conceptually identical, and deceptively like SSPL’s mark. It was used in relation to identical or similar goods so that NTC could trade and encash upon the goodwill of SSPL.
It was contended that artistic work in the label is protected by Copyright Act and that they were prior users of the registered label mark holding copyright in the artistic work.
They sought interim injunction for both trademark and copyright infringement, passing off and for the appointment of a Court Receiver to seize and seal NTC’s products under the offending or rival label mark and artistic work.
NTC denied that SSPL had any copyright in artistic work. NTC maintained that the label mark is a registered trademark and therefore cannot be an artistic work.
This necessarily implies that trademark registration and copyright protection are distinct and disjunctive. A person may have one or the other but cannot have both, it was argued.
Further, the judgment of the co-ordinate bench in the case of Dhiraj Dewani was also adverted to by NTC wherein it was held that registration under the Copyright Act is mandatory before a plaintiff can claim relief, civil or criminal, under the Copyright Act.
Justice Patel however disagreed with the judgement noting that there were at least four previous decisions contrary to what was held in the Dhiraj Dewani judgment.
“There is a large body of decisions of other Courts that hold that registration of copyright is not mandatory,” the Court said.
The Court also noted that Dewani equated registration under Trademarks Act with registration under Copyright Act. This was incorrect as the two, according to him, were entirely distinct.
“Registration under the Trademarks Act confers specific distinct rights unavailable to an unregistered proprietor. Important amongst these is the right to sue for infringement. This is only available to a registered proprietor,” the Court observed.
The real point of disagreement with Dhiraj Dewani was regarding the nature of right itself. The Court observed that copyright is a recognition of originality, granting rights of commercialisation and exclusivity to the author of a work, bringing the original expression or realisation of an idea.
Copyright and trademark, though they operate in different spheres, at times overlap as in the present case, the Court opined.
An artistic work, the Court explained, may receive both trademark registration as a label and copyright protection as an artistic work. One requires registration to sustain a suit for infringement while the other does not.
Justice Patel also disagreed with the view held in the judgment that suing in the court with jurisdiction where the plaintiff resides, or works is dependent on registration of copyright.
He opined that “the owner of a copyright has a panoply of jurisdictional choices, including one that is available only to him.”
Having held that the judgment is per incuriam, the Court then proceeded to decide the case on facts of the present case.
The test of deception or its likelihood is that of the common person, the Court said.
“We often speak of the impression on a person of imperfect recollection and average intelligence — and whether or not this is meant to refer to judges, I do not know and will not venture to answer,” the Court said on a lighter note.
In this case, from the images submitted, it would be hard to tell the two label marks apart even for a most diligent individual.
“In this case, I would suggest from the images rendered at the start of this judgment, that even a most punctilious individual would be hard put to tell the two apart; and the test is not of the view of such a person. Looking at these two packets on my desk, all I can say is “which is whose? I cannot tell.” That must surely be enough,” the Court concluded.
Justice Patel also observed that the label mark of SSPL was prior in time to NTC.
It, therefore, ruled in favour of SSPL.
Justice Patel was also informed that the judgment of Dhiraj Dewani was still being cited as good law in the district judiciary.
In view of this, he requested the Prothonotary & Senior Master and the Registrar (Judicial-I) of the High Court to forthwith circulate a copy of the present judgment to all Principal District Judges with an accompanying request to circulate it to all judges under their supervision for future reference.