Madras High Court
Case BriefsHigh Courts

   

Madras High Court: In an application filed by Viacom 18 praying for restraining several cable and internet service providers involved in illegal activities and unauthorised retransmitting, recording, streaming, audio-visual clips and full sports event of FIFA World Cup, 2022, M.Sundar, J. has granted interim injunction in favour of Viacom18 and restrained several cable and internet service providers from broadcasting the FIFA World Cup.

Viacom claimed that Federation Internationale De Football Association (FIFA) has granted it licence and various media rights including exclusive television rights, radio rights, mobile transmission rights and broadband transmission rights for the territories of Bangladesh, Bhutan, India, Maldives, Nepal, Pakistan and Sri Lanka. Further, it also has exploitation rights including distribution, broadcast, streaming of the series within the defined territories. Thus, such activities by unauthorised cable providers can cause heavy loss, damage and prejudice to Viacom 18.

The Court examined the aspects of prima facie case, balance of convenience and irreparable injury, that are necessary parameters for grant of injunction, and said that regarding the prima facie case, there is no difficulty in accepting prima facie that Viacom 18 is the owner of the copyright in the sporting event. In terms of balance of convenience, if interim order is not granted now, it would result in alleged piracy being completed in all and every aspect of the matter. Thereafter, it will lead to an irreversible situation and therefore, irreparable injury incapable of compensation parameter has also been satisfied.

Thus, the Court granted interim injunction (till 16-12-2022) restraining the respondents or any other person or entity from infringing copyright in the aforesaid sporting event, in any manner to prevent copying, transmission, communication, displaying, releasing, showing, hosting, streaming, uploading, downloading, exhibiting, playing and exhibition of the sporting event. Further, it directed the respondent to block the websites or web pages if it becomes necessary.

[Viacom18 Media Private Limited v. Bharath Sanchar Nigam Limited, Original Application. No. 734 of 2022, decided on 18-11-2022]


*Apoorva Goel, Editorial Assistant has reported this brief.

Case BriefsHigh Courts

   

Delhi High Court: In a suit filed for injunction by the Plaintiff restraining the Defendant from selling, offering for sale, advertising or promoting any product under the trademark ‘APPLEPLANT’ or any trademark similar to Plaintiff’s trademark ‘APPLESTREE’, which may cause confusion and deception in the market, leading to passing off Defendant’s goods as those of the Plaintiff, including products in similar packaging, get-up, trade dress as well as infringement of copyright in the artistic work comprised in Plaintiff’s label, Jyoti Singh, J., restrained the defendants as the plaintiff has made out a prima facie case for grant of injunction as well as balance of convenience also lies in favour of the Plaintiff who has been using the trademark since the year 2018, i.e., prior in point in time to the Defendant who has dishonestly chosen to adopt a deceptively similar trademark in 2019 in respect of identical goods, with a view to pass off his goods as that of the Plaintiff.

Submission

Counsel for plaintiff contended that the impugned trademarks NUAPPLEPLANT /, are identical/deceptively similar to Plaintiff’s trademark APPLESTREE and Defendant has also slavishly copied the packaging/get-up/trade dress. The rival products are identical i.e. Abrasive Papers, Abrasive Sand, Abrasive Rolls, Abrasive Paper/Paste etc. and the trade channels being identical and the class of consumers being same, there is every likelihood that consumers will be confused into believing that the products of the Defendant emanate from the Plaintiff, amounting to passing off and violation of Plaintiff’s common law rights.

The conflicting marks are as follows:

Plaintiff’s label

Defendant’s label

Issue 1: Whether Plaintiff can make a claim of passing off against the Defendant in view of the latter being a registered proprietor of the impugned trademark?

Placing reliance on S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, N.R. Dongre v. Whirlpool Corporation, 1995 SCC OnLine Del 310, Century Traders v. Roshan Lal Duggar & Co., 1977 SCC OnLine Del 50, the Court noted that the Plaintiff would have to prima facie establish that use of the trademark APPLESTREE was anterior to the use of the impugned marks by the Defendant.

The Court further noted that the invoices filed by the Plaintiff do reflect sales of the products in question under the trademark APPLESTREE with effect from 01-01-2018 and there cannot be a scintilla of doubt that this is prior to the year of user of the Defendant, i.e., 2019 and thus, it can be prima facie held that Plaintiff is the prior user of the trademark APPLESTREE with respect to Abrasive Papers etc.

Issue 2: Whether the Plaintiff is able to prima facie establish her claim of passing off against the Defendant?

As per Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, the necessary ingredients required to be established for passing off are (a) misrepresentation by a trader in the course of trade to prospective customers; and (b) deliberate and calculated intent to encash upon and cause damage to the reputation and goodwill of the other trader.

Placing reliance on Kirorimal Kashiram Makreting & Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill, 2010 SCC OnLine Del 2933 and Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills, 2009 SCC OnLine Del 1690, the Court noted that a perusal of the rival marks shows that APPLE is a prominent part of the trademark of the Plaintiff and copying the prominent part, especially when the competing products are identical, would lead to deceptive similarity. Defendant has copied the essential part of Plaintiff’s trademarks and has merely added the suffix PLANT as well as a prefix NU thereto.

Further placing reliance on Greaves Cotton Limited v. Mr. Mohammad Rafi & Ors., 2011 SCC OnLine Del 2596 and K.R. Chinna Krishna Chettiar v. Shri Ambal and Co., Madras and Another, (1969) 2 SCC 131, the Court noted that the impugned mark NUAPPLEPLANT is deceptively similar to Plaintiff’s mark APPLESTREE when compared and seen visually.

Issue 3: Do the marks also have semantic similarity?

The Court observed that not only there is a visual similarity in the competing marks but the two are also similar in idea i.e. semantic similarity.

In semantics, there are broadly three sense relations:‘Hyponyms’, ‘Synonyms’ and ‘Antonyms’. Placing reliance on Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 and Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164, the Court stated that the words in the English language system are so related that they form a complete lexical system and a grouping, i.e., genus and species. As an illustration, under this concept, purple, pink, white, brown, violet etc. would fall under the genus ‘colours’ and similarly, knives, spoons, forks would have a semantic relationship with the genus ‘cutlery’.

Thus, the Court opined that the words PLANT and TREE are a classic example of synonymy where reading one would bring to the mind of a purchaser the other, which he may have seen as a part of the trademark on an earlier occasion but is unable to decipher the difference on account of imperfect recollection. This confusion will be enhanced where the two trademarks are used for identical products and class of purchasers and trade channels are identical. A purchaser with average intelligence and imperfect recollection would go by the overall and first impression of the trademark and the similarity in idea is likely to cause confusion.

Decision

The Court concluded that a comparative study of the packaging/label/outer carton of the Plaintiff’s product with that of the Defendant’s product would show that the background of both is a dark pink color, the color combination is pink and white, both have image of an apple on the label and in my view, the similarities outweigh the trivial dissimilarities.

Thus, the Court held that the adoption of the impugned trademark by the Defendant is dishonest and viewing the two trademarks, it is clear that an attempt has been made by the Defendant to pass off his goods under the impugned trademark by coming as close as possible to the Plaintiff’s packaging/label in terms of colour combination, background colour, graphics, etc.

[Vinita Gupta v. Amit Arora, 2022 SCC OnLine Del 3249, decided on 28-09-2022]


Advocates who appeared in this case:

Mr. N. Mahabir, Mr. Abhishek Saini and Mr. P.C. Arya, Advocates, for the Plaintiff;

Mr. Umesh Mishra, Mr. Junaid Alam and Mr. Nishant Mahtta, Advocates, for the Defendant.


*Arunima Bose, Editorial Assistant has put this report together.

Delhi High Court
Case BriefsHigh Courts

   

Delhi High Court: In a suit filed by Lieutenant Governor (LG) of Delhi (‘plaintiff’) seeking relief of permanent injunction and damages against the defendants on account of defamatory statements made on behalf of Aam Aadmi Party and its members (‘defendants’), Amit Bansal, J., restrained the defendants from posting any defamatory or factually incorrect tweets, re-tweets, hashtags, videos of press conferences/interviews, comments, captions and taglines against the plaintiff and/or his daughter in any manner.

It is the case of the plaintiff that the defendants no. 1 to 6 have launched a barrage of personal attacks against the plaintiff, making unsubstantiated and baseless allegations that the plaintiff has indulged in corruption and money laundering to the tune of Rs. 1,400,00,00,000/- (rupees one thousand four hundred crores) at the time of demonetization in November, 2016, while the plaintiff was the Chairman of the Khadi and Village Industries Commission (KVIC).

A legal notice dated 05-09-2022 was issued on behalf of the plaintiff to the defendants 1 to 6 calling upon the defendants 1 to 6 to refrain from making defamatory statements against the plaintiff, to which no reply has been received so far.

There are basically three allegations made which have to be adjudicated on the touchstone of element of truth. The three allegations are

  1. Acts of corruption during demonetization;

  2. Contracts assigned to plaintiffs’ daughter;

  3. Cash Payments made to weavers in Bihar.

The Court noted that all the allegations are unsubstantiated and have been made in a reckless manner without regard to the truth, in order to cause injury to the reputation of the plaintiff, the Court would be justified in granting an interim injunction. After suffering the brunt of such defamatory content, it is difficult to contemplate a complete restitution through damages and such cases demand immediate injunctive relief.

It was further noted that the plaintiff, being a Constitutional Authority, cannot meet the personal attacks being made by the defendants against him by taking resort to social media platforms and therefore, the only remedy available for the plaintiff to protect his reputation and prevent erosion of the same would be to approach the court of law and seek injunctive relief.

The Court opined that the damage caused to the reputation of an individual is immediate and far-reaching on the internet. Balance of convenience is in favor of the plaintiff and against the defendants. Grave and irreparable harm and injury would be caused to the reputation of the plaintiff if the aforesaid defamatory content continues to exist on the internet and the social media platforms of the defendants and defendants are permitted to continue making defamatory statements of this nature against the plaintiff.

Thus, the Court restrained the defendants and directed the defendants to delete/remove all the defamatory or factually incorrect tweets, re-tweets, hashtags, videos of press conferences/interviews, comments, captions and taglines against the plaintiff and/or his daughter published on the social media platforms, failing which, defendant 7 and 8 are directed to take down such defamatory content available.

[Vinai Kumar Saxena v. Aam Aadmi Party, 2022 SCC OnLine Del 3093, decided on 27-09-2022]


Advocates who appeared in this case:

Mr. Maninder Singh, Senior Advocate with Mr. Mahesh Jethmalani, Ms. Bani Dikshit, Mr.Ravi Sharma, Mr. Uddhav Khanna, Mr. Ishaan Karki, Mr.Raghav Tewari, Mr. Ashita Chawla, Mr. Navneet R., Mr. Prabhas Bajaj, Mr. Kishan Kumar, Mr. Wed Khalo and Ms. Anjani Kumar RG, Advocates, for the Plaintiff;

Mr. Rajeev Nayar, Senior Advocate with Mr. Anupam Srivastava, Mr.Vasuh Misra, Mr. Rishikesh Kumar, Mohd. Irsad, Mr. Rakesh Kumar Sinha and Mr. Rajneesh Bhaskar, Advocates, for the Defendants 1 & Defendant 6;

Mr. Sandeep Sethi, Senior Advocate with Mr. Karn Bhardwaj, Mr. Udit Malik, Mr. Rishikesh Kumar, Mohd. Irsad and Mr. Rajneesh Bhaskar, Advocates, for the Defendants 2 and 3;

Mr. Arun Bhardwaj, Senior Advocate with Mr. Manish Sharma, Mr. Ninad Dogra, Mohd. Irsad and Mr. Rajneesh Bhaskar, Advocates, for the Defendant 4.

Delhi High Court
Case BriefsHigh Courts

   

Delhi High Court: In a case filed by producers’ (‘plaintiff') of the film ‘Brahmastra Part One: Shiva' seeking permanent injunction and damages, for infringement of copyrights of the plaintiff, Jyoti Singh J., granted ex parte ad-interim relief restraining the rogue websites (‘defendants 1 to 18') and others acting for and/or on their behalf, from hosting, streaming, retransmitting, exhibiting, making available for viewing and downloading, providing access to and/or communicating to the public, displaying, uploading, modifying, publishing, updating and/or sharing on their websites through the internet or any other platform.

The present suit was filed against Defendants , which are primarily and substantially engaged in communicating to the public, hosting, streaming, etc. the copyright protected work and are vehicles of infringement, whose whole business model is designed to provide members of the public access to copyright contents, unauthorizedly.

Defendants 1 to 18, i.e. the rogue websites are set out as under:

  1. 7movierulz.tc (Defendant No.1)

  2. vegamovies.wtf (Defendant No.2)

  3. extramovies.pics (Defendant No.3)

  4. 9xmovies.yoga (Defendant No.4)

  5. 1tamilmv.pics (Defendant No.5)

  6. Cinevood.vip (Defendant No.6)

  7. full4movies.store (Defendant No.7)

  8. hdmovie2.click (Defendant No.8)

  9. yomovies.skin (Defendant No.9)

  10. Prmovies.wiki (Defendant No.10)

  11. Movierulzhd.lol (Defendant No.11)

  12. Torrentcue.co (Defendant No.12)

  13. Tamilblasters.cloud (Defendant No.13)

  14. Tamilblasters.unblockit.ist (Defendant No.14)

  15. 7starhd.agency (Defendant No.15)

  16. Uwatchfree.be (Defendant No.16)

  17. Mkvmoviespoint.art (Defendant No.17)

  18. Ssrmovies.kim (Defendant No.18)

It is the case of the Plaintiff that theatrical release of a film is the most important stage as the commercial value of a film depends on the popularity and success it achieves in this period. However, rogue websites in order to make illegal gains make infringing copies and make them available for viewing, downloading and communication to the public, almost simultaneously with the theatrical release of the film.

Placing reliance on Department of Electronics and Information Technology v. Star India Private Limited, 2016 SCC OnLine Del 4160 and UTV Software Communication Ltd. v. 1337X.To, 2019 SCC OnLine Del 8002, the Court noted that if the rogue websites communicate the film in any manner, on any platform, simultaneously with the theatrical release of the film on 09-09-2022 or in its close proximity thereafter, it would severely impact the interest of the Plaintiff monetarily and will also erode the value of the film.

Thus, the Court held that the plaintiff made out a prima facie case for grant of ex parte ad-interim relief as well as the balance of convenience lies in favour of the plaintiff and it is likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.

[Star India Private Limited v. 7MOVIERULZ.TC, 2022 SCC OnLine Del 2744, decided on 02-09-2022]


Advocates who appeared in this case :

Mr. Sidharth Chopra, Mr. Yatinder Garg, Ms. Vriti Jindal and Mr. Akshay Maloo, Advocates, for the plaintiff.


*Arunima Bose, Editorial Assistant has put this report together.

Delhi High Court
Case BriefsHigh Courts

Delhi High Court: Mini Pushkarna, J. granted ad interim injunction against Pawan Khera and others (‘defendants’) who allegedly organized a Press Conference dated 23-07-2022 from New Delhi wherein various wild and defamatory allegations were made against Smriti Zubin Irani (‘plaintiff’) without any substance, pertaining to a statutory license in respect of food and beverages operations at a restaurant, named, Silly Souls Cafe and Bar, located in Goa.

Smriti Irani (‘plaintiff’) is a highly respected citizen of the country and a Minister in the Union Cabinet of India, currently administrating the Ministry of Women and Child Development and Ministry of Minority Affairs. It was alleged that the defendant 1, 2 and 3 organized a Press Conference on 23-07-2022 from New Delhi. During the course of the Press Conference, various wild and defamatory allegations were made against the plaintiff without any substance, pertaining to a statutory license in respect of food and beverages operations at a restaurant, named, Silly Souls Cafe and Bar, located in Goa.

Various false and defamatory contents of the utterances of the defendant 1, 2, 3 in the Press Conference were used and continued to be used by the defendant 1, 2, 3 and various other individuals and entities, directly and indirectly disseminating such and similar misrepresentation on various social media websites . Aggrieved by this, an application was filed under Order XXXIX Rules 1 & 2 read with Section 151 Civil Procedure Code (‘CPC’) by the plaintiff seeking an ad-interim injunction.

The Court noted after perusing various documents filed before the Court by the plaintiff and also the excerpts from the Press Conference carried out by the defendant Nos. 1, 2, 3, that slanderous and libelous allegations have been made against the plaintiff without verifying the actual facts. Great injury has been caused to the reputation of the plaintiff and her family in view of the various tweets and re-tweets which have followed the Press Conference carried out by the defendant Nos. 1, 2 & 3.

Placing reliance on Ram Jethmalani v. Subramaniam Swamy, 2006 SCC OnLine Del 14, the Court observed that considering the documents on record it is clear that there was no license ever issued in favour of the plaintiff or her daughter. The plaintiff or her daughter are not the owners of the restaurant, infact they never applied for a license. Neither the restaurant nor the land on which the restaurant exists is owned by the plaintiff or her daughter, even the show cause notice issued by the Government of Goa is not in the name of the plaintiff or her daughter as also stands affirmed in the affidavit by the plaintiff.

The Court held the plaintiff has been able to make out a prima facie case. Balance of convenience also lies in favour of the plaintiff and against the defendants. Thus, if the defamatory allegations and contents linked to it, is allowed to remain on the internet and social media platforms, then the extent of damage to the plaintiff could be of immense magnitude and injurious to the reputation of the plaintiff and her family.

The Court thus passed an ad-interim injunction directing defendant 1, 2 & 3 to delete and remove the allegations, video of impugned Press Conference dated 23-07-2022 and the contents linked to the same published against the plaintiff from all the social media platforms, namely, YouTube, Facebook, Instagram and Twitter.

The Court further directed the defendant 4 to 6 to remove the allegations, videos, posts, tweets, re-tweets, captions, taglines along with the morphed pictures of the plaintiff and her daughter along with the underlined material with such defamatory content or anything similar thereto including recirculation on their respective platforms. In case of failure to comply with the directions within 24 hours of pronouncement of the order, defendant 4 to 6 are directed to take down the tweets and other materials on the URLs as well as other tweets which may appear in the plaint thereof.

[Smriti Zubin Irani v. Pawan Khera, 2022 SCC OnLine Del 2310, decided on 29-07-2022]


Advocates who appeared in this case :

For Plaintiff: Mr. Rajiv Nayar, Mr. N.K. Kaul, Ms. Pinky Anand, Sr. Advocates with Mr. Kirat Singh Nagra, Mr. Kartik Yadav, Mr. Pranav Vyas, Mr. Manhar S. Saini, Mr. Hardik Jain, Ms. Sumedha Chadha, Mr. Saurabh Seth, Mr. Dhruv Sharma, Mr. Anil Soni, Advocates

For Defendant: Counsel for D-1, 2 3 (appearance not given). Mr. Dayan Krishnan, Sr. Advocate with Mr. Saransh Jain, Mr. Ankit Agarwal, Ms. Shloka N., Mr. Shaurya Rai, Mr. Sanjeevi, Mr. Sukrit, Advocates for D-6/Twitter, Inc


*Arunima Bose, Editorial Assistant has reported this brief.

Delhi High Court
Case BriefsHigh Courts

Delhi High Court: Asha Menon, J. denied relief sought by ‘TV Today Network’ ‘plaintiff ‘on allegations of copyright infringement, defamation and commercial disparagement. The allegations are against a Digital News Platform, namely, ‘Newslaundry’ (‘defendant’) for publishing various videos and articles containing false, malicious, defamatory and derogatory information on their website as well as on various social-media platforms. The Court found most of the issues were question of fact to be triable by the Trial Court and the principles on which the injunction must be granted namely prima facie case, irreparable loss and injury and balance of convenience tilts in favour of defendants.

Facts

The plaintiff is a Company incorporated under the Companies Act, 1956 and operates prominent television channels, namely, “AajTak”, “AajTak HD”, “India Today Television” and “Good News TV” and is part of the prestigious “INDIA TODAY GROUP” which was established in 1975. Its business interests are in broadcasting, publishing, e-commerce, etc., through its constituent companies, like Living Media India Limited.

The application was filed by the plaintiff under Order XXXIX Rules 1 & 2 Civil Procedure Code (‘CPC’) filed by the plaintiff along with the suit for mandatory and permanent injunction as also for damages. The allegations alleged are that the defendants 1 to 9 have, by their various programmes on their social-media platforms and through their Digital News Platform, namely, “Newslaundry”, from its website, having domain name www.newslaundry.com, had tarnished its reputation accompanied with the infringement of the copyrighted content of the plaintiff. According to the plaintiff, the defendants have ridiculed and defamed the plaintiff company, its news channels, its employees and Management, and have published various videos and articles containing false, malicious, defamatory and derogatory information on their website as well as on various social-media platforms.

Commercial Dispute or Not?

On the primary question raised before the Court whether the present suit is a commercial suit or not, as the allegations are not only pertaining to copyright infringement but also of defamation, the Court noted that relief in respect of copyright violations can be sought only before the commercial court in view of the clause (xvii) of Section 2(1)(c) Commercial Courts Act, 2015. If the other reliefs claimed by the plaintiff arise|| out of such intellectual property rights, clearly the commercial court would have the jurisdiction to try the suit. Arising out of’, on a plain reading, would cover situations such as in the present case, where the reliefs are so closely intertwined, where disparagement is alleged by the very use and portrayal of the copyrighted content of the plaintiff by the defendants 1 to 9. Thus, it is concluded that the dispute at hand is a ‘commercial dispute’ and the commercial court has jurisdiction to try the suit.

Copyright Infringement

The allegation is premised on the work of the plaintiff being covered as a “cinematographic film” involving visual and sound recording accompanying such visual recording, the Court noted that the present case would more appropriately be covered under “broadcasting rights”. Broadcast reproduction right, though limited for 25 years under Section 37(2) Copyright Act, 1957, prohibits the re-broadcast or reproduction of such programmes without license under Section 37(3) Copyright Act, 1957 during the subsistence of these special rights called broadcast reproduction rights. However, Section 39 exempts certain acts as not infringing the broadcast reproduction rights. In view of the language used, it would be akin to Section 52 Copyright Act, 1957, which also provides that certain acts would not be infringement of copyright. Both sections prescribe that use which amounts to “fair dealing” would not amount to infringement of either broadcast reproduction rights or copyright.

The Court further noted that the original creator being the first broadcaster (TV Today Network Limited, in the present case) would be vested with reproduction rights and no one else can reproduce it without license. The exception would be Section 39 Copyright Act, 1957 read with Section 52 Copyright Act, 1957. A T.V. news programme would, of necessity, relate to current events and current affairs. Criticism or review of such programmes would be both on content and the reporting of such current events and current affairs. Reporting would, obviously, entail the coverage of current events and current affairs in a particular manner and style, in keeping with the philosophy of the T.V. channel or social-media channel.

Thus, the Court held that whether to comment on the act of reporting itself would be covered under ‘criticism’|| or ‘review’ under Sections 52 and 39 of the Copyright Act, 1957 and would be protected against allegations of infringement is a question of fact to be decided by the Trial Court.

Fair Dealing

On the issue of whether there has been ‘fair dealing’ or not to determine infringement of copyright and broadcast rights, the judgment laid down in Super Cassettes Industries Limited v. Chintamani Rao, 2011 SCC OnLine Del 4712 is of importance. It held

The purpose – ostensibly or obliquely, should not be to ride piggy back on the work of another. The focus of attention, and interest of the producer/author of the work and the viewer/listener should not be the work of another, but the work created by the person who may, bona fide be using the work of another for the specific purpose of criticism or review of that work, or of any other work.

The Court however held that it is evident that when work that is subject to copyright or broadcast rights, is used, and a plea of infringement of those rights is raised in a suit, the defence of -fair dealing|| by use of excerpts is a plausible defense to such a plea which is a question of fact and has to be decided by the Trial Court.

Commercial Disparagement

Placing reliance on Reckitt Benckiser India Private Limited v. Hindustan Unilever Limited 2021 SCC OnLine Del 4896, in the context of comparative advertisements, the Court noted that Commercial Disparagement would occur when one player in the field derides a rival and belittles or discredits or detracts from the reputation of such a rival in respect of its products, services or business. While claiming to be the best, any statement about a competitor’s goods, which could be untrue or misleading and is made to influence or tend to influence the public, would amount to disparagement.

The Supreme Court held that ‘commercial speech’|| is a part of the freedom of speech and expression guaranteed under Article 19(1) (a) of the Constitution as competitive advertisements are permissible as held in Tata Press Limited v. Mahanagar Telephone Nigam Limited, (1995) 5 SCC 139.

Thus, the Court held that the programmes of the defendants 1 to 9 must not be showing the plaintiff’s programmers in poor light, asking viewers to stop watching the plaintiff’s channels while claiming their own to be the best. This, of course, will again be a question of fact as to whether commercial disparagement has occurred or not.

Three Cardinal Principles

When a court is to consider the grant or refusal of interim injunction, the court would have to consider three cardinal requirements, namely, prima facie case, irreparable loss and injury and balance of convenience, to be entitled to the injunctions as prayed for.

The Court concluded by stating that based on the facts presented before the Court it cannot be denied that a prima facie case|| is disclosed but the other two requirements of –balance of convenience and –irreparable loss and injury will need to be established before such injunction can be granted. Since defenses raised like fair dealing is based on facts, has to be decided during the trial. Furthermore, the extent of infringement or fair use for fair comment and criticism would also be a matter of trial as each video would have to be considered to determine whether the excerpts are significant to be outright copying or constitute fair use without infringement.

Decision

Thus, the Court held that the Trial Court would be in a better position to consider whether there has been misrepresentation of facts.

[TV Today Network v. News Laundry Media Private Limited, 2022 SCC OnLine Del 2233, decided on 29-07-2022]


Advocates who appeared in this case :

For TV Today Network: Mr. Hrishikesh Baruah, Mr. Pranav Jain, Ms. Radhika Gupta, Ms. Sowmya Shikhar and Mr. Kumar Kshitij, Advocates

For News Laundry Media Private Limited: Mr. Saurabh Kirpal, Senior Advocate with Mr. Nipun Katyal, Ms. Tahima Gaur and Mr. Nikhil Arora, Advocates for D-1 to D-9 Ms. Mamta Jha, Mr. Rohan Ahuja, Ms. Shruttima Ehersa, Ms. Riya Gupta and Mr. Vatsalya Vishal, Advocates for D-10/Google LLC Mr. Deepak Gogia and Mr. Aadhar Nautiyal, Advocates for D-12/ Twitter Inc.


*Arunima Bose, Editorial Assistant has reported this brief.

Case BriefsCOVID 19High Courts

Bombay High Court: The Division Bench of Nitin Jamdar and C.V Bhadang, JJ., upheld the order of the District Court refusing to pass injunction against the use of the name “Covishield” by Serum Institute of India for its COVID-19 vaccine.

What is the subject matter of the instant appeal?

Instant appeal is with regard to the trademark ‘Covishield’.

Factual Matrix

Appellant and Respondent applied for registering the above-stated trademark and their application have been pending.

In the present suit, Cutis Biotech sought an interim injunction to restrain Serum Institute from using the trademark ‘Covishield’ and maintain the accounts regarding the sale.

The above stated interim application was rejected by the District Judge/Commercial Court, therefore, Cutis Biotech filed an appeal before this Court under Section 13 of the Commercial Court Act, 2015.

On 29th April, 2020 Cutis Biotech had filed an application for the registration of trademark ‘COVISHIELD’ under Class-5 and the same is pending and in June, 2020 the Serum Institute applied for the registration of trademark ‘Covishield’.

While rejecting the interim application, District Court held that:

The District Court considered the law on the subject and the tests required for grant of injunction in case of passing off. The District Court held that Cutis Biotech had earned no goodwill in a short time. There was no dishonest deception by Serum Institute for passing off or to divert the business of Cutis Biotech.

Analysis, Law and Decision

Bench noted that neither Cutis Biotech nor Serum Institute have a registration for the trademark ‘Covishield’, but as per Section 27(1) of the Trade Marks Act, 1999 it is mandated that no person shall be entitled to institute any proceeding to prevent or recover damages for the infringement of an unregistered trademark. Though sub-section 2 of the above provision, reserves the right to take action against any person for passing off his goods or services as the goods and services of the applicant and preserves the remedies to prevent passing off actions.

Hence in the instant case, Cutis Biotech has based its case on the action of passing off.

Ingredients to grant an injunction 

While granting an injunction in the case of passing off, both ingredients of injunction i.e. prima facie case and balance of convenience should exist in favour of the applicant.

Court must be satisfied that there are serious questions to be tried at the suit, irreparable damage will be caused to the applicant and hardship would be more to the applicant, and therefore an interim injunction is necessary.

Bench remarked that,

“foundation of passing off action is the existence of goodwill. Further as to who conceived and adopted the mark earlier is also relevant.”

 High Court found no prima facie case to be established by Cutis Biotech with respect to the prior user.

On evaluating the evidence on record, Court found that Serum Institute had coined the word ‘Covishield’ and took substantial steps towards its development and manufacture. Thus, the evidence demonstrates the prior adoption of the mark by Serum Institute. Hence, no perversity was found with the finding that Cutis Biotech cannot claim to be a prior user of ‘Covishield’.

Likelihood of deception and Whether the products of Cutis Biotech and Serum Institute are in the common field

To establish the above-stated point, actual confusion is not required to be established and a likelihood of confusion is enough to establish the ingredients of passing off.

In the present matter, a common-sense approach will have to be adopted to find out whether Serum Institute’s conduct was calculated to pass off its goods as that of the Cutis Biotech’s or at least create confusion in the mind of the customers leading to the Serum Institute benefiting at the expense of the Cutis Biotech.

Bench expressed that the vaccine ‘Covishield’ produced by Serum Institute is not available across the counter and is being administered through Government agencies. The buyer of the product ‘Covishield’ of Serum Institute is the Government of India. The administration of the vaccine is through an injection. The sale of disinfectant or hand sanitiser, though it may relate to the same field, that, health care products, cannot be said to cause confusion in the mind of average consumers.

Court remarked that, it would be too farfetched to hold that there will be confusion in the average consumers’ minds between the use of a trademark in a Government administered vaccine at designated places and over the counter sanitizer products.

Adding to the decision, Bench held that Cutis’s contention that people may buy its products of thinking they are protected against coronavirus because of the use of mark ‘Covishield’ is self-destructive and against the concept of passing off.

Cutis Biotech through its submissions could not establish a case of passing off action, whereas the High Court observed that Serum Institute claimed the ingredients of passing off action, yet it had not moved any cause for restraining Cutis Biotech for passing off action.

Regarding maintaining accounts, a direction to maintain accounts is not a routine order and cannot be issued when there is no prima facie case made out by Cutis Biotech.

Balance of Convenience

Vaccine ‘Covishield’ of Serum Institute had started being administrated from 16 January 2021. The Government of India rolled out an extensive vaccine administration programme and identified almost 300 million people for the vaccine in the first round, and the first order for 11 million doses for the ‘Covishield’ vaccine was placed. The second dose would be administered after the stipulated weeks. On 1 March 2021, a vaccination drive for those above the age of sixty and the age of forty-five years with comorbidities was launched. ‘Covishield’ vaccine of Serum Institute was supplied through the States and Union Territories.

Serum Institute has also placed on record that it has spent Rs 28 crore on the development, research and is expected to spend a further Rs 20 crore. With these facts, the balance of convenience is not in favour of Cutis Biotech.

A temporary injunction directing Serum Institute to discontinue the use of mark ‘Covishield’ for its vaccine will cause confusion and disruption in the Vaccine administration programme of the State.

 Hence, grant of an injunction would have large scale ramification traversing beyond the parties to the suit.

Scope of an Appeal

High Court observed that appellate court doesn’t generally interfere if the conclusion arrived at by the trial court is reasonably possible.

A total deference to the discretion by the trial court is not expected from the appellate court if the order is arbitrary or perverse.

 Bench held that, in the present case, discretion used by District Judge in refusing to grant an injunction was not arbitrary or perverse.[Cutis Biotech v. Serum Institute of India (P) Ltd., 2021 SCC OnLine Bom 616, decided on 20-04-2021]


Advocates before the Court:

Mr Abhinav Chandrachud and Mr Aditya Soni with Chetan Alai, Shriniwas Bade and Mr Swaraj Jadhav i/b. White & Brief Advocates & Solicitors for the Appellant.

Dr Birendra Saraf, Senior Advocate with Mr Rohan Savant, Mr Hitesh Jain, Ms Pooja Tidke, Ms Monisha Mane Bhangale and Ms Warisha Parkar i/b. Parinam Law Associates for the Respondent.

Case BriefsHigh Courts

Meghalaya High Court: H. S. Thangkhiew, J., dismissed a petition which was filed aggrieved by the order of the Trial Court by way of this application under Order 6 of Meghalaya (Jurisdiction over District Council Courts) Order, 2014.

The appellant claimed that he was running a hostel in a building belonging to his mother-in-law (respondent) and due to a family dispute, had instituted a Title Suit for declaration and permanent injunction before the District Council Court and to declare him as the owner of the hostel under the name and style of ‘The North East Girls & Boys Hostel’, and that the respondent (defendant), had no right to interfere with the supervision and management of the hostel together with a prayer for a permanent injunction to restrain the respondent from interfering with the management of the hostel. The Trial Court in 2019 had granted ex parte ad-interim injunction in favour of the appellant which, however, on an application under Order 39 Rule 4 CPC filed by the respondent, after hearing the parties, vacated the ad-interim injunction.

Counsel for the appellant, Mr H.R. Nath contended that the lower Court had erred in holding that the appellant was seeking a declaration of title over the hostel building when in fact the declaration was sought only over the hostel business and not the building which was undisputedly the property of the respondent. Counsel for the respondent, Mr S. Kumar submitted that the respondent was the absolute owner in possession of the building in question and that in fact, the hostel was being run and managed by the daughter of the respondent and the appellant herein who happened to be the son-in-law, was only working as a manager. He submitted that the appellant by concealing facts had falsely projected himself as the owner of the hostel and obtained the ad-interim injunction.

The Court had to examine the legality of the order under challenge within the bounds governing the consideration of grant of injunction and whether the lower Court had exercised its discretionary powers in a justifiable manner. The Court observed that it was an admitted fact that firstly, the respondent was the absolute owner of the building and that secondly, though the appellant claims to be a lessee or tenant of the said premises, no rental or lease agreement nor rent receipt had been produced to substantiate his claim.

High Court dismissed the petition observing that the balance of convenience in view of the facts and circumstances of the case, especially on the factum of possession, will squarely lie in favour of the respondent, and as rightly held by the learned lower Court, the greater inconvenience would be caused to the respondent if the ad-interim injunction was made absolute. The court concluded that grant of injunction cannot be claimed by a party as a matter of right nor can it be denied by the Court arbitrarily; however the discretion to be exercised by the Court is guided by the principles discussed above and depends on the facts and circumstances of each case.[Jasper Lee Pakyntein v. Sumarmai Hynniewta, 2021 SCC OnLine Megh 53, decided on 04-03-2021]


Suchita Shukla, Editorial Assistant has reported this brief.

Himachal Pradesh High Court
Case BriefsHigh Courts

Himachal Pradesh High Court: Vivek Singh Thakur, J. rejected bail and dismissed the petition.

The facts of the case are that, the petitioner, a driver by profession resident of Haryana was apprehended for alleged possession of 1 Kilogram 008 Grams of opium and was arrested under Section 18 of Narcotic Drugs and Psychotropic Substances Act, 1985 at Police Station Dharampur, District Solan, H.P. and was in judicial custody. The petitioner earlier preferred for regular bail before the Special Judge-III, Solan, which was rejected. Hence, the instant bail petition was filed.

The petitioner was represented by counsel Vivek Sharma and the respondent was represented by counsel R.P. Singh, Raju Ram Rahi and Gaurav Sharma.

It was submitted that petitioner is driver by profession and is in habit of consumption of opium. It was further stated that he has been booked for possession of poppy straw in 2017 but was acquitted of the charges later and has also been found in possession of 15 bottles of country liquor in the same year and was fined Rs 1500. It was further stated that the explanation with respect to source of contraband was also found false.

The Court based on the facts and submissions, observed that the reverse onus is on the petitioner under the NDPS Act, and the balance of convenience is not in his favour.

In the light of given facts and arguments the bail is rejected and petition dismissed. [Ashish v. State of Himachal Pradesh, 2020 SCC OnLine HP 692 , decided on 15-06-2020]

Case BriefsHigh Courts

Calcutta High Court: A Division Bench of I.P. Mukerji and Md. Nizamuddin, JJ., allowed an appeal filed against the order of the Single Judge whereby he had rejected the appellant-plaintiff’s application for grant of interim injunction restraining the respondent-defendant from using the subject trademark.

The appellant and the respondent were in the business of manufacturing TMT bars. The appellant was the registered proprietor of the word mark “Shyam” and label marks featuring this word prominently. The appellant filed a suit for infringement of the said trademark and passing off against the respondent. The interlocutory application filed by the appellant for grant of interim injunction till the disposal of the suit was rejected by the Single Judge as noted above. Aggrieved thereby, the appellant approached the High Court.

Two main contentions advanced on behalf of the respondent were: Firstly, that the registration of the mark “Shyam”, which is the name of a God, was invalid. And secondly, it was contended that the appellant filed the suit after a considerable delay and, therefore, the defence of acquiescence was available to the respondent.

Regarding the first contention, the High Court, relying on Lal Babu Priyadarshi v. Amritpal Singh, (2015) 16 SCC 795, held that it could not be said as an infallible principle of law that registration of the word “Shyam” was invalid and it should be cancelled. The respondent has to prove, by leading cogent evidence, before the Board, that indeed the name ‘Shyam’ refers to God only, is not distinctive of the appellant, is generic and common. Hence, its registration was invalid. Since, at the instant stage, the respondent was not able to establish this even prima facie, the Court rejected the first contention.

Coming to the second contention, the Court noted that the appellant was aware of the use of their trademark by the respondent since at least December 2015. Yet, the appellant took their own time in filing the suit and applying for an injunction, i.e., in 2019. However, the Court was of the view that the appellant could not be accused of acquiescing to the use of their trademark by the respondent, though it could be said that they took no action to restrain the respondent from using it. Reliance was placed on Power Control Appliances v. Sumeet Machines (P) Ltd., (1994) 2 SCC 448, wherein the Supreme Court has said that acquiescence would only arise out of the positive acts and not merely by silence or inaction. It has gone to the extent of saying that acquiescence was “one facet of delay”.

In such view of the matter of the Court, considering the prima facie case and balance of convenience, ordered that the respondent would be injuncted from using the trademark in question till the disposal of the infringement suit filed by the appellant, which effect from 1-5-2020, by which date, the respondent was permitted to clear the existing stock. [Shyam Steel Industries Ltd., v. Shyam Sel & Power Ltd., 2019 SCC OnLine Cal 5177, decided on 24-12-2019]

Uttarakhand High Court
Case BriefsHigh Courts

Uttaranchal High Court: A writ petition was entertained by Manoj K. Tiwari, J. where the petitioner was aggrieved by the order passed by the Appellate Court, where it set aside the status quo passed by the learned trial court. 

The Court observed the appellate jurisdiction over the original jurisdiction of the Courts and noted that, grant of temporary injunction was discretionary and appellate court should not interfere with such discretion of court of first instance except where discretion had been shown to exercised arbitrarily or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions, as held by the Supreme Court in Esha Ekta Appartments CHS Ltd. v. Municipal Corporation of Mumbai, (2012)4 SCC 689. It was also observed that the appellate courts when called upon to consider the correctness of an order of injunction passed by the trial courts which had reversed the order of lower courts, the Supreme Court had held that, “In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. 

‘An appeal against exercise of discretion was said to be an appeal on principle. Appellate court doesn’t reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion had been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court took a different view may not justify interference with the trial court’s exercise of discretion.’

Hence, the Court stated that scope of interference by the appellate court with the court that passed the order of temporary injunction was limited and in any case, two views were available then the view taken by the court of the first instance had to be maintained. 

But Court while examining the instant petition noticed that the appellate court had not assigned any reason for disturbing the discretionary order passed by the trial court. It was also observed that in Maharwal Khejwaji Trust v. Baldev Dass, (2004) 8 SCC 488, the Supreme Court had held that “unless and until a case of irreparable loss or damage is made out by a party to the suit, the court should not permit a change of the said status quo, which may lead to loss or damage being caused to the party who may ultimately succeed and may further lead to multiplicity of proceedings.” 

It was observed by the Court that trial court had considered three major points while passing the order was balance of convenience, prima facie case and irreparable loss to the parties, it indicated that the trial court was justified in directing the parties to maintain status quo in order to maintain and preserve property. 

Thus, the petition was allowed and the order of the appellate court was set aside. [Ashok Kumar v. Pramil Kumar, 2019 SCC OnLine Utt 855, decided on 02-09-2019] 

Case BriefsHigh Courts

Rajasthan High Court: Sabina, J. dismissed the appeal on the ground that party will suffer an irreparable loss if the application was allowed. 

An appeal was made challenging the order which was made on an application under Order 39 Rule 1 and  2 read with Section 151 of Code of Civil Procedure, 1908. 

 Rohit Khandelwal, counsel for the appellant submits that that the property-in-question was owned by Shobhagmal Jain which the appellant agreed to purchase. Earnest money was paid to the original owner. Thereafter, the original owner executed Power of Attorney in favor of his son. Son of the owner executed a sale deed in favor of the respondent. Appellant filed a suit for cancellation of the sale deed and for specific performance of an agreement to sell executed in his favor. It was further submitted that the original owner was ready to pay the sale consideration to the subsequent purchaser as his son wrongly sold the property-in-question. Thus an application for a temporary injunction was made.

High Court was required to see whether the plaintiff has a prima-facie case and balance of convenience in his favor and in case, the Temporary Injunction was not granted in favor of the plaintiff, he would suffer an irreparable loss. The court thus, after discussing the relevant question held that respondent can be said to be a bonafide purchaser for consideration. Hence, in case Temporary Injunction is granted in favor of the appellant, the respondent would suffer an irreparable loss as he would not be able to enjoy the property purchased by him in the manner he liked. Moreover, the principle of Lis Pendens would apply. Thus, no interference was made by the court. [Rakesh Makwana v. Vishant Infra Projects Llp, 2019 SCC OnLine Raj 903, decided on 09-04-2019]

Uttarakhand High Court
Case BriefsHigh Courts

Uttaranchal High Court: Lok Pal Singh, J. allowed a writ petition under Articles 226 and 227 of the Constitution for quashing the order passed by Civil Judge (Senior Division) while granting an ex-parte injunction in the favour of respondents and the order passed by IV Additional Sessions Judge while rejecting the appeal filed by the petitioners.

Respondents herein had filed a suit seeking a permanent/prohibitory injunction against the petitioners herein (defendants in suit) praying that they be restrained by decree of perpetual injunction from interfering in the daily affairs of respondents’ society. The trial court vide an ex-parte order granted a temporary injunction in the favour of the respondents and restrained the petitioners from entering, interfering or destroying the property in dispute. Aggrieved thereby, the petitioners herein preferred an appeal which was dismissed by the appellate court. Hence, the instant petition.

Rakesh Thapliyal, counsel for the petitioners submitted that the lower court had not recorded the reasons and directly came to the conclusion that, “in case ex-parte injunction is not granted, then the purpose of the plaintiff would frustrate” and thus passed the ex-parte injunction order. In support of his contention, he placed reliance upon the judgment in the case of Ramrameshwari Devi v. Nirmala Devi, (2011) 8 SCC 249, where it was held, “….the court should grant interim injunction or stay order only after hearing the defendants or the respondents..” On the other hand, V.K. Kohli, Senior Advocate appearing on behalf of the respondents contended that the property belonged to the institute and same should be protected.

The Court after perusing the impugned order observed, “the courts below have failed to exercise their jurisdiction within the parameters of law and the orders impugned in the present writ petition suffer from the aforesaid error.” It further observed that “The trial court granted ex-parte interim injunction without any discussion, finding and the reason, and the appellate court has also done the same.” For this, the Court also placed reliance on the case of the Supreme Court in State of Uttaranchal v. Sunil Kumar Vaish, (2011) 8 SCC 670, where it was held, “Judicial decisions must in principle be reasoned and the quality of a judicial decision depends principally on the quality of its reasoning.”

Thus, the Court set aside the impugned order holding the same to be unsustainable in the eyes of law and ordered the trial court to decide the interim injunction application within two months, after giving an opportunity of hearing to the parties.[Balwant Singh Chauhan v. Mahavidyalaya Sabha Jwalapur Haridwar, 2019 SCC OnLine Utt 360, decided on 14-05-2019]

Case BriefsHigh Courts

Bombay High Court: In a very important case relating to rights of an owner of the copyright in sound recordings, S.J. Kathawalla, J. issued a permanent injunction against Wynk Music restraining it from infringing the copyright if Tips Industries held by it in over 25,000 songs. The Court was faced with determining the issue of easy/ready access to music /sound recording vis-a-vis the restrictions which can be put on the same by the bonafide owners of copyright in the said music/sound recording.

Facts

Tips Industries — owner of copyright in over 25,000 sound recordings (“Repertoire”) — licensed its Repertoire to Wynk Music, owner and operator of Wynk — an over the top service available on the internet through which, the subscribers, upon payment of a subscription fee, can listen to numerous sound recordings and audio-visual recordings including Tips’ Repertoire. The Repertoire was licensed to Wynk by the copyright society — Phonographic Performance Ltd. (“PPL”). However, the said license expired on 31-8-2016.

The negotiations which ensued thereafter for extending the license failed, and Tips requested Wynk to deactivate its Repertoire from their platform — which request according to Tips, was not complied with by Wynk. Thereafter, Tips issued a cease and desist notice to Wynk on 17-11-2017. In reply, Wynk invoked Section 31-D of the Copyright Act, 1957, claiming that they are a broadcasting organisation entitled to a statutory license under the said section to communicate the work to the public by way of a broadcast of Tips’ musical work and sound recordings, Consequently, on 29-1-2018, Tips filed two suits against Wynk for infringement of copyright, disputing Wynk’s right to avail  statutory license provided for by Section 31-D and claiming permanent injunction, restraining them from — (a) communicating to the public Tips’ Repertoire; and (b) giving on commercial rental/sale, Tips’ Repertoire of songs by way of providing download services/features.

Discussion 

The High Court held a detailed discussion on several issues as framed before it. After considering various provisions of the Copyright Act and several case laws on the subject, the Court answered the issues as follows:

(a) It is evident that Wynk through its purchase feature and download feature, is enabling its customers to store physical files/electronic copies Tips’ Repertoire on their devices in abrogation of the exclusive rights granted to Tips under Section  14(1)(e)[copyright in respect of sound recording] of the Act.

(a-i) The defence provided in Section 52(1)(a)(i) is not available to Wynk at all. The defence of fair use may be available in a given case, to an individual user. The activities of Wynk can never be termed as ‘private’ or ‘personal use’ or ‘research’. Wynk is clearly selling and /or commercially renting sound recordings including, iner alia, Tips’ Repertoire for their own commercial benefit.

(a-ii) The provisions of Section 52(1)(b) are fairly straightforward. It is clear from the nature of Wynk’s activities that the offline storage, either permanent or temporary, of electronic copies of the sound recordings on the customer’s devices, is the primary selling point/unique object of Wynk’s business. The electronic storage of Tips’ sound recording on the platform of Wynk can neither be termed as ‘transient’ nor ‘incidental’. The sound recordings may be stored on the customers’ devices during the tenure of their subscription or as per their discretion, as the case may be. In such circumstances, the storage of the sound recordings cannot be said to be incidental or transient to services of Wynk.

(a-iii) Section 31-D contemplates communication to public by way of broadcast of sound recordings only, and not their commercial rental and/ or sale. Since the services (download/purchase feature) provided by Wynk are in the nature of commercial rental and/or sale of sound recordings, they do not fall within the purview of Section 31-D of the Act and Wynk is prohibited from exercising a statutory license apropos thereto.

(b) Provisions of Section 31-D read with Rules 29 to 31 of the Copyright Rules, 2013 coupled with the legislative history preceding the passage of Copyright Amendment Act, 2012 clearly support the submission that Section 31-D contemplates only television and radio broadcasting and to internet broadcasting. Moreover, prior determination of royalty rates is a necessary precondition for the exercise of rights in respect of a Statutory License under Section 31-D. Therefore, even assuming that ‘internet broadcasting’ was covered within the ambit of Section 31-D. Wynk could not have exercised Statutory License under the said section in the absence of pre-fixation of the rate of royalty by the Appellate Board.

(c) Rule 29 of the Copyright Rules, 2013 and its proviso which state that prior fixation of royalty rates is a necessary precondition to the exercise of Statutory License under Section 31-D was challenged as invalid by Wynk. However, the challenge was dismissed and the rule was held valid.

(d) Wynk relied on Government of India’s Office Memorandum dated 5-9-2016 which clarified: “… in view of the above, the words any broadcasting organization desirous of communicating to the public may not be restrictively interpreted to cover only radio and television broadcasting, as the definition of Broadcast read with communication to the public appears to include all kinds of broadcast including internet broadcasting. Thus, the provisions of Section 31-D of the Copyright Act, 1957 are not restricted to radio and television broadcasting only but cover internet broadcasting also.” It was held that the said Memorandum lacks a ‘statutory flavour’ and cannot prevail over an interpretation which is drawn under the Act and the Rules. The interpretation of Section 31-D in the said Memorandum is inconsistent with the interpretation drawn by this Court and this Court is not bound by the said Memorandum.

(e) High Court has no jurisdiction to grant a Compulsory License which is within the exclusive domain of the Copyright Board. Furthermore, permitting Wynk to deposit money whilst permitting it to use Tips’ Repertoire for its commercial activities would amount to a grant of a Compulsory License, for which the High Court, being a Civil Court doesn’t have the jurisdiction.

(f) Tips’ entire Repertoire is being widely exploited by Wynk without payment of any royalty. The balance of convenience was in favour of Tips. An injunction order restraining Wynk from using the Tips’ Repertoire would preclude them from using 25,000 songs out of 2.6 million songs. An injunction order against Wynk shall not bring its business to a standstill or cause irreparable injury.

Held

Insofar as the download and purchase feature of Wynk’s activities are concerned, the same amount to infringement of Tips’ rights provided under Section 14(1)(e)(ii) of the Copyright Act; insofar as the on-demand streaming services are concerned, the same amount to infringement of Tips’ rights provided in Section 14(1)(e)(iii) of the Copyright Act; and the provisions of Section 31-D of the Act are not applicable to internet broadcasting.

The Court considered its necessary to grant reliefs in favour of Tips industries in terms of the permanent injunction claimed by it as mentioned above. The present notice of motion were therefore allowed.[Tips Industries Ltd. v. Wynk Music Ltd., Notice of Motion (L) No. 197 of 2018 in Commericial Suit IP (L) No. 114 of 2018, decided on 23-04-2019]

Case BriefsHigh Courts

Calcutta High Court: A Single Judge Bench comprising of Ashis Kumar Chakraborty, J. allowed an application for arrest of marine vessel filed in an admiralty suit.

The plaintiff claimed to have a maritime claim against the defendant vessel for USD 234,286.24 on account of supply of bunkers and fuel to her at different ports in Durban, Istanbul, Singapore, Balboa, the port of Klaipeda and the port of Bhushan, South Korea. The defendant vessel MV PELAGOS was berthed at the Haldia Port, within the admiralty jurisdiction of the High Court. The plaintiff relied on Section 4(1)(n) of the Admiralty (Jurisdiction and Settlement of Maritime Claims) Act, 2017. It was stated that the plaintiff had filed an action in personam against the owner of the vessel in Greece. It was contended that filing of such action in personam against the owner of the defendant does not affect its right to file the present action in rem against the defendant vessel.

The High Court considered the submissions and the record. It was noted that the plaintiff claimed great urgency in moving the application as the vessel was likely to leave Haldia Port within the course of the day. The Court was of the view that the plaintiff had made out a prima facie case and the balance of convenience also lies in its favour for obtaining an ad-interim order for arrest of the defendant’s vessel. Accordingly, the order was made for arrest of the vessel MV PELAGOS lying within the Indian territorial waters at Haldia Port. However, it was directed, if the owner or parties in the defendant vessel deposit Rs 1,75,20,037 as a security with the Registrar, original side of the High Court, the order of arrest shall stand vacated. The application was made returnable on 31-8-2018. [Gram Marine PTE Ltd. v. Owners and Parties interested in the Vessel MV PELAGOS,2018 SCC OnLine Cal 5834, dated 30-08-2018]

Case BriefsHigh Courts

Calcutta High Court: A Single Judge Bench comprising of Ashis Kumar Chakraborty, decided an admiralty suit wherein it directed the arrest of defendant vessel on finding that prima facie case was made out in favour of the petitioner.

The suit was filed under Admiralty (Jurisdiction and Settlement of Maritime Claims) Act, 2017. The petitioner’s claim was that they had a maritime claim of over USD 4 mn against the defendant vessel, which was currently lying at the port of Budge Budge. The claim was put forth on account of losses caused as a result of deterioration of cargo; losses caused due to delay in delivery of cargo, and losses suffered due to a decrease in the price of cargo resulting from the delayed delivery. According to the petitioner, its claim constituted a maritime claim under Section 4 of Admiralty Act which was enforced on April 1, 2018.

On considering the facts of the case, the Court found that petitioner had made out a prima facie case and balance of convenience also favoured the petitioner for obtaining an ex-parte order of arrest of the defendant vessel, which was likely to leave the Kolkata Port. Accordingly, an ad interim order of a one day arrest was passed against the defendant’s vessel. However, it was clarified that if the owner or other interested party deposit the claim amount as stated by the petitioner; the order of arrest shall stand automatically vacated. The matter was directed to be further placed on 29-06-2018. The matter being brought before the Court on 29-06-2018, the ad interim arrest order was extended till 04-07-2018, as none appeared on behalf of the defendant to oppose the application. The matter was directed to be listed again on 04-07-2018. [JVL Agro Industries Ltd. v. MT Prime Sun, 2018 SCC OnLine Cal 4030, order dated 28-6-2018 and 2018 SCC OnLine Cal 4128, order dated 29-06-2018]