{"id":245654,"date":"2021-03-16T14:00:29","date_gmt":"2021-03-16T08:30:29","guid":{"rendered":"https:\/\/www.scconline.com\/blog\/?p=245654"},"modified":"2021-03-26T12:02:00","modified_gmt":"2021-03-26T06:32:00","slug":"copyright","status":"publish","type":"post","link":"https:\/\/www.scconline.com\/blog\/post\/2021\/03\/16\/copyright\/","title":{"rendered":"Bom HC | Does Copyright Act requires mandatory registration to seek protection under the Act? Justice G.S. Patel explains"},"content":{"rendered":"

Bombay High Court: <\/strong>G.S. Patel, J., disposed of an interim application with respect to the suit for trade mark and copyright infringement, while holding that ‘Copyright registration is not mandatory under the Copyright Act, 1957.”<\/p>\n

Trade Mark in question is a label mark, not \u00a0a word or a device mark.<\/p>\n

Plaintiff claimed copyright in the artistic work comprised in the label.<\/p>\n

\"\"<\/p>\n

It has been stated that Narayani Trading\u2019s Label uses very nearly \u2013 or indistinguishably the same \u2013 principal background colour.<\/p>\n

Counsel Mr Burad for Narayani Trading submitted that the two labels are entirely distinct and no one will mistake one for another. Court rejected the same and elaborated that the key features, integers, or elements that have been described by the Bench in Sanjay Soya\u2019s Label all find place in Narayani\u2019s Trading Label with only minor variations.<\/p>\n

Factual Matrix<\/u><\/strong><\/span><\/p>\n

Sanjay Soya has been manufacturing and selling edible oils of various kinds, including soyabean oil, for many years. Narayani Trading is a sole proprietorship. Sanjay Soya claimed to have the necessary ISO certifications for quality and other certifications. Sanjay Soya stated that it is the successor-in-title of one SK Oil Industries, in May 2003 SK Oil adopted the label, mark and artistic work in relation to edible oil which has distinctive get up, layout and schematic arrangements.<\/p>\n

Recital (2) of the Deed of Assignment stated that SK Oil conceived, created, designed and developed a SOYA DROP label and that is the artwork that is the issue of concern in the present matter.<\/p>\n

Counsel Mr Khandekar for Sanjay Soya submitted that the label is an original artistic work within the meaning of Section 2(c) of the Copyright Act. Further, it was added that, Sanjay Soya has used the mark, with some variants, openly and continuously since adoption.<\/p>\n

In brief, Sanjay Soya\u2019s Argument:<\/strong><\/span><\/p>\n

Sanjay Soya claimed that Narayani Trading has entirely lifted and unauthorisedly and illicitly copied Sanjay Soya\u2019s registered label mark and the copyright-protected artistic work in the label. It says that Narayani Trading\u2019s label is a reproduction and an illicit copy of a substantial part of Sanjay Soya\u2019s original and distinctive artwork.<\/p>\n

Piggyback on Sanjay Soya\u2019s reputation?<\/strong><\/span><\/p>\n

Narayani Trading\u2019s adoption of the label mark is dishonest, not bona fide, with an ulterior motive and intended to trade upon and encash the goodwill, recognition and reputation of Sanjay Soya\u2019s business.<\/p>\n

The Court noted that earlier decision of the Court in Dhiraj Dharamdas Dewani v. Sonal Info Systems (P) Ltd., 2012 (3) Mh LJ 888 held that registration under the Copyright Act is mandatory before a plaintiff can claim relief. So also, the decision in Gulfam Exports v. Sayed Hamid, 2000 (20) PTC 496 Bom says that registration is required. Noting the settled law, the present Bench held that these two decisions are per incuriam on the question of compulsory registration under the Copyright Act.<\/p>\n

High Court observed that Copyright and Trade Mark operate in different spheres, though in some cases \u2013 as in the present one \u2013 these may overlap or intersect.<\/p>\n

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.<\/em>\u00a0<\/em><\/p>\n

Section 51 of the Copyright Act does not per se, demand prior registration. The said provision is to be read with Section 45(1) which states that the owner of copyright may apply for registration.<\/p>\n

Importantly, copyright infringement lies in the unlicensed use of original works, in which the author has a spectrum of exclusive rights.<\/p>\n

Essence of Copyright Protection<\/strong><\/span><\/p>\n

There is always the slight escape of the fair use doctrine, but the underlying principle is that no author may claim as his or her own the original authorship work of another. That is the essence of copyright protection.<\/p>\n

The Supreme Court decision in Engineering Analysis Centre of Excellence (P) Ltd. v. Commissioner of Income Tax, <\/em>Civil Appeal Nos 8733-8734 of 2018, authored by Rohinton Fali Nariman, J., explained the nature of copyright.<\/p>\n

Registered proprietor of a mark or the owner (not registrant) of copyright may have recourse to the jurisdictional venues in Section 134 or Section 62, in addition to those under CPC Section 20.<\/p>\n

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).<\/p>\n

Rationale behind allowing a trade mark registrant or a copyright owner additional jurisdictional choice is that the right claimed is in rem<\/em>, against the world at large. The infringement thus takes place where the proprietor of the trade mark or the owner of copyright resides or works. This is, therefore, no ground to hold that copyright registration is mandatory.<\/p>\n

There is no law or precedent that requires that a declaration that a decision is rendered per incuriam be made only by a hierarchically superior court.<\/em>\u00a0<\/em><\/p>\n

Bench while expressing its observations, stated that it is impossible to believe, given Sanjay Soya\u2019s prima facie established product popularity and reputation, that Narayani Trading was unaware of Sanjay Soya\u2019s market presence, also it Narayani Trading does not show that the artistic work and label was in use before Sanjay Soya or SK Oil began using it.<\/p>\n

Sanjay Soya v. Narayani Trading | Label Mark<\/strong>\u00a0<\/strong><\/span><\/p>\n

Bench held that knowing of Sanjay Soya\u2019 s presence in the market, of its label and of its artistic work, Narayani Trading illicitly and without bona fide intent adopted a label that is confusingly, deceptively and strikingly similar to that of Sanjay Soya; and in doing so, copied substantially, if not wholly, the artistic work comprised in Sanjay Soya\u2019s trade dress and packaging, and of which copyright Sanjay Soya through its predecessor-in-title is indeed the owner.<\/p>\n

Cause of Action in \u2018Passing Off\u2019 || Classic Trinity<\/strong><\/span><\/p>\n

\u00a0<\/strong>High Court expressed that in 1978\u201379, Diplock LJ set out five guidelines for \u2018passing off\u2019 actions in Erven Warnink v. Townend & Sons Ltd<\/em>.\u00a0 [1979] AC 731, 742 (HL), this is the famous \u2018Advocaat\u2019 case. Oliver LJ in Reckitt & Colman Products Ltd v. Borden Inc<\/em>., [1990] 1 All ER 873 distilled these into the three probanda in the tortious actions in passing off that we now know as the \u2018Classic Trinity\u2019<\/strong>:<\/p>\n