Remedies against Copyright Infringement

The Copyright Act of India provides right-holders dual legal machinery for enfor
cing their
rights. The enforcement is possible through (1) the Copyright Board and (2) the
courts.
When there is a violation or an infringement of an intellectual property, it bec
omes the sole
right of the Intellectual property holder to obtain a remedy for the infringemen
t of
something that he has acquired with a lot of hard work and tremendous efforts. H
ence it is
necessary to grant remedies to the intellectual property holders. Legal remedies
include
imprisonment and/or monetary fines - depending upon the gravity of the crime. So
metimes
remedies also include seizure, forfeiture and destruction of infringing copies a
nd the plates
used for making such copies. The 1984 amendment has made copyright infringement
a
cognizable non-bailable offence. The 1994 Amendment has incorporated a special p
enal
provision for knowingly using infringing computer software. India has an excelle
nt
Copyright Law namely, the Copyright Act of 1957 amended in 1983, 1984, 1994 and
2012.
The remedies for copyright infringement are:
a) Civil
b) Criminal, and
c) Administrative
A. CIVIL REMEDIES:
The most importance civil remedy is the grant of interlocutory injunction since
most actions
start with an application for some interlocutory relief and in most cases the ma
tter never
goes beyond the interlocutory stage.
The other civil remedies include damages - actual and conversion; rendition of a
ccounts of
profits and delivery up.
This paper is confined to remedies available in common law jurisdictions and it
may well be
that in civil law countries, the emphasis or focus is somewhat different.
i) INTERLOCUTORY INJUCTIONS:
The object of the interlocutory injunction is to protect the plaintiff against i
njury by
violation of his right for which he could not be adequately compensated in damag
es
recoverable in the action if the uncertainty were resolved in his favour at the
trial. The need
for such protection has, however, to be weighed against the corresponding need o
f the
defendant to be protected against injury resulting from his having been prevente
d from
exercising his own legal rights for which he could not be adequately compensated
. The
court must weigh one need against another and determine where the balance of con
venience
lies.
The principles on which interlocutory injunctions should be granted were discuss
ed in detail
in many cases by Apex Court. It is believed that the classic requirements for th
e grant of
interim injunction, namely,
a) Prima facie case
b) Balance of Convenience; and
c) Irreparable injury
Assessing the relative strength of the parties' cases, however, should be done o
nly where it
is apparent upon the facts disclosed by evidence as to which there is no credibl
e dispute that
the strength of one party's cases is disproportionate to that of the other party
.
a) the grant of an interlocutory injunction was a matter of discretion and depen
ded on
all the facts of the case;
b) there were no fixed rules;
c) the court should rarely attempt to resolve complex issues of disputed fact or
law;
d) major factors the court should bear in mind were (i) the extent to which dama
ges
were likely to be an adequate remedy and the ability of the other party to pay (
ii) the
balance of convenience (iii) the maintenance of the status quo, and (iv) any cle
ar
view the court may reach as to the relative strength of the parties' case.
Thus, this case places emphasis on the merits and the effect may well be to obta
in a non-
binding view by a judge on the merits. This may lengthen the hearing of applicat
ion for
interlocutory Injunction as parties may lead evidence on the merits but it may h
ave the
overall effect of putting an early end to the main action.
ii) PECUNIARY REMEDIES:
Under the Copyright laws of some countries like the United Kingdom it is essenti
al for the
plaintiff to elect between damages and an account of profits. Under Indian law,
however,
there is a departure made and the plaintiff, under Sections 55 and 58 can seek r
ecovery of all
three remedies, namely
(a) Account of profits- The purpose of this remedy is to require one party to su
rrender the
profits made. It may also be available as an alternative action for money had an
d received
where one person has profited from a wrong at the expense of another (and the cl
aimant has
suffered no actual loss) or in exceptional cases where other normal remedies pro
vide
inadequate.
(b) Compensatory damages- The purpose of compensatory awards is to replace what
a
person has lost. Generally, the value is based on the fair market value. Thus, i
ts worth is
assessed at the time when it was destroyed or damaged. A person may also be awar
ded
compensatory damages for losses associated with the inability to use an item. Co
mpensatory
damages should only compensate a person for what s/he has lost. There are damage
s that
are meant to punish individuals who cause harm to others or their property, but
those fall
into a different category. Compensatory damages are used to restore the person w
ho was
wronged to the position where s/he was before the damaging incident occurred.
iii) ANTON PILLER ORDERS:
In addition to the extensive police powers under the Copyright Act mentioned
above, plaintiffs have other, equally intrusive powers at their disposal. In the
past decade it
has become common for copyright owners and owners-associations to employ civil
procedure to emulate the same kind of invasiveness. This is done via the mechani
sm of so-
called Anton Piller orders - orders obtained unilaterally ex-parte (in the absence o
f the
defendant) from civil courts which permit court-appointed officers, accompanied
by
representatives of the plaintiffs themselves, to search premises and seize evide
nce without
prior warning to the defendant. The Anton Piller Order derives its name from a C
ourt of
Appeal decision in Anton Piller AG vs Manufacturing Processes [1976] Ch55. An An
ton
Piller Order has the following elements:
a) An injunction restraining the defendant from dealing in the infringing goods
or
destroying, them;
b) An order that the plaintiffs solicitors be permitted to enter the premises of
the
defendants, search the same and take goods in their safe custody; and
c) An order that defendant be directed to disclose the names and addresses of su
ppliers
and customers and also to file an affidavit will a specified time giving this
information.
iv) JOHN DOE ORDERS
The names "John Doe" for males, "Jane Doe" or "Jane Roe" for females, or "Jonnie
Doe"
and "Janie Doe" for children, or just "Doe" non-gender-specifically are used as
placeholder for a party whose true identity is unknown or must be withheld in a
legal action,
case, or discussion. The term 'John Doe Injunction' (or John Doe Order)[10] is u
sed in the
UK to describe an injunction sought against someone whose identity is not known
at the
time it is issued.
In Indian courts, a "John Doe" order may be dubbed an "Ashok Kumar" order.
Courts have frequently issued John Doe orders orders to search and seize against
unnamed/unknown defendants - which virtually translates into untrammelled powers
in the
hands of the plaintiffs, aided by court-appointed local commissioners, to raid a
ny premises
they set their eyes on.
This trend has come to light in India with the first injunction order granted by
the Delhi
High Court to Reliance Big Entertainment for its movie Singham. According to the s
aid
order, a cease and desist notice was sent to websites including those which prov
ide file
sharing platforms. Since then, various John Doe orders have been passed by the C
ourt, for
instance the one in UTV Software Communications v Home Cable Network (for the mo
vie
Thank You). Taking a leaf from their book, the Bombay and Madras High Court have a
lso
issued such orders for the movie Gangs of Wasseypur (Viacom 18 Motion Pictures v
Sonali Cables) and the Tamil movie 3 (RK Productions v Bharat Sanchar Nigam). In
2011-
2012, the major production houses have all applied and successfully obtained suc
h John
Doe orders. For instance, Viacom 18 has, in the course of two years, obtained at
least seven
such orders from the High Court of Delhi. The John Doe orders seem to be the fas
hion of
the day, and to be a major win in the fight against piracy. While there has been
a hoopla
about this trend, and apparent dangers were perceived with the blocking of most
file sharing
websites in their entirety (and not merely the removal of the infringing materia
l), a
clarification order to the John Doe Order dated April 25, 2012 (passed by the Ma
dras High
Court in Creative Commercials v Bharat Sanchar Nigam) specified that the plainti
ffs should
name the "particular URL where the infringing movie is kept" to facilitate the r
emoval of
the infringing material. This most welcome clarification is just a step towards
limiting the
scope of protection of such orders. Let us hope that the trend of John Doe order
s is just the
beginning and not the end of such righteous curtailment against the pirates of t
he e-world.
v) MAREVA INJUNCTION:
Mareva Injunction is an order which temporarily freezes assets of a defendant th
us
preventing the defendant from frustrating the judgement by disposal of such asse
ts. A
Mareva injunction is a type of court order used in England and the United Kingdo
m. It is a
type of interlocutory relief designed to freeze the assets of a defendant, in ap
propriate
circumstances, pending determination of a plaintiff's claim. Mareva injunctions
are often
used to prevent a defendant from transferring assets out of the Court's jurisdic
tion as soon as
a claim is served, in order to frustrate enforcement of any ensuing judgment. Th
e injunction
is named after the 1975 UK case, Mareva Compania Naviera SA v International
Bulkcarriers SA 2 Lloyd's Rep 509 [1975]. A Mareva injunction can also be called
a
freezing injunction.
B. CRIMINAL REMEDIES:
Offence of infringement of copyright or other rights conferred by this Act
Any person who knowingly infringes or abets the infringement of (a) The copyrigh
t in a
work, or (b) Any other right concerned by this Act except the right conferred by
Section 53-
A shall be punishable with imprisonment for a term which shall not be less than
six months
but which may extended to three years and with fine which shall not be less than
fifty
thousand rupees but which may extend to two lakh rupees provided that where the
infringement has not been made for gain in the course of trade or business the c
ourt may, for
adequate and special reasons to be mentioned in the judgement, impose a sentence
of
imprisonment for a term of less than six months or a fine of less than fifty tho
usand rupees.
Explanation Construction of a building or other structure which infringes or whi
ch, if
completed, would infringe the copyright in some other work shall not be an offen
ce under
this section.
Section 63-A. Enhanced penalty on second and subsequent convictions
Whoever having already been convicted of an offence under Section 63 is again co
nvicted
of any such offence shall be punishable for the second and for every subsequent
offence,
with imprisonment for a term which shall not be less than one year but which may
extend to
three years and with fine which shall not be less than one lakh rupees but which
may extend
to two lakhs rupees.
Provided that where the infringement has not been made for again in the course o
f trade or
business the court may, for adequate and special reasons to be mentioned in the
judgement,
impose a sentence of imprisonment for a term of less than one year or a fine of
less than one
lakh rupees.
Provided further that for the purpose of this section, no cognizance shall be ta
ken of any
conviction made before the commencement of the Copyright (Amendment) Act, 1984 (
65
of 1984).]
Section 63-B. Knowing use of infringing copy of computer programme to be an offe
nce
Any person who knowingly makes use on a computer of an infringing copy of a comp
uter
programme shall be punishable with imprisonment for a term which shall not be le
ss than
seven days but which may extend to three years and with fine which shall not be
less than
fifty thousand rupees but which may extend to two lakh rupees.
Provided that where the computer programme has not been used for gain or in the
course of
trade or business, the court may, for adequate and special reasons to be mention
ed in the
judgement, not impose any sentence of imprisonment and may impose a fine which m
ay
extend to fifty thousand rupees.
65. Possession of plates for purpose of making infringing copies -
Any person who knowingly makes, or has in his possession, any plate for the purp
ose of
making infringing copies of any work in which copyright subsists shall be punish
able with
imprisonment which may extend to two years and shall also be liable to fine.
Protection of Technological Measures
Section 65A- Any person who circumvents an effective technological measure appli
ed for
the purpose of protecting any of the rights conferred by this Act, with the inte
ntion of
infringing such rights, shall be punishable with imprisonment which may extend t
o two
years and shall also be liable to fine.
Though some exceptions are also recognised by this section which is as follows:
a) doing anything referred to therein for a purpose not expressly prohibited by
this Act
provided that any person facilitating circumvention by another person of a
technological measure for such a purpose shall maintain a complete record of suc
h
other person including his name, address and all relevant particulars necessary
to
identify him and the purpose for which he has been facilitated; or
b) doing anything necessary to conduct encryption research using a lawfully obta
ined
encrypted copy; or
c) conducting any lawful investigation; or
d) doing anything necessary for the purpose of testing the security of a compute
r system
or a computer network with the authorisation of its owner; or
e) operator; or
f) doing anything necessary to circumvent technological measures intended for
identification or surveillance of a user; or
g) taking measures necessary in the interest of national security.
Rights Management Information
Section 65B- Any person, who knowingly removes or alters any rights management
information without authority, or distributes, imports for distribution, broadca
sts or
communicates to the public, without authority, copies of any work, or performanc
e knowing
that electronic rights management information has been removed or altered withou
t
authority, shall be punishable with imprisonment which may extend to two years a
nd shall
also be liable to fine provided that if the rights management information has be
en tampered
with in any work, the owner of copyright in such work may also avail of civil re
medies
provided under
Rights Management Information means-
a) the title or other information identifying the work or performance;
b) the name of the author or performer;
c) the name and address of the owner of rights;
d) terms and conditions regarding the use of the rights; and
e) Any number or code that represents the information referred to in sub-clauses
(a) to
(d), but does not include any device or procedure intended to identify the user.

C. ADMINISTRATIVE REMEDY:
Section 53
1. The owner of any right conferred by this Act in respect of any work or any
performance embodied in such work, or his duly authorised agent, may give notice
in
writing to the Commissioner of Customs, or to any other officer authorised in th
is
behalf by the Central Board of Excise and Customs,
a) that he is the owner of the said right, with proof thereof; and
b) that he requests the Commissioner for a period specified in the notice, which
shall
not exceed one year, to treat infringing copies of the work as prohibited goods,

and that infringing copies of the work are expected to arrive in India at a time
and
a place specified in the notice.
2. The Commissioner, after scrutiny of the evidence furnished by the owner of th
e right
and on being satisfied may, subject to the provisions of sub-section (3), treat
Omission of infringing copies of the work as prohibited goods that have been
imported into India, excluding goods in transit:
Provided that the owner of the work deposits such amount as the Commissioner may

require as security having regard to the likely expenses on demurrage, cost of s
torage
and compensation to the importer in case it is found that the works are not infr
inging
copies.
3. When any goods treated as prohibited under sub-section (2) have been detained
, the
Customs Officer detaining them shall inform the importer as well as the person w
ho
gave notice under sub-section (1) of the detention of such goods within forty-ei
ght
hours of their detention.
4. The Customs Officer shall release the goods, and they shall no longer be trea
ted as
prohibited goods, if the person who gave notice under sub-section (1) does not
produce any order from a court having jurisdiction as to the temporary or perman
ent
disposal of such goods within fourteen days from the date of their detention.
Powers to Police Officers to seize infringing copies of works
Section 64 of the Copyright Act dealing with police powers was amended in 1984 t
o give
plenary powers to police officers, of the rank of a sub-inspector and above, to
seize without
warrant all infringing copies of works if he is satisfied that an offence of infri
ngement
under section 63, has been, is being, or is likely to be, committed. Prior to amen
dment,
this power could only be exercised by a police officer when the matter had alrea
dy been
taken cognizance of by a Magistrate. Prima facie, this is a very sweeping power
since its
exercise is unsupervised by the judiciary and only depends on the satisfaction of
a police
officer. To put matters in perspective, under the Income Tax Act, dealing with t
he far more
sensitive issue of tax evasion, a search and seizure can only be conducted based
on
information already in the possession of the investigating authority.
In Girish Gandhi & Ors. v Union of India, a case before the Rajasthan High Court
, the
petitioner, who ran a video cassette rental business, challenged the constitutio
nal validity of
the wide powers granted to police officers under this section. Citing various in
stances of
violations of privacy that the abuse of the section could occasion, the petition
er contended:
"The provision of Section 64 itself gives arbitrary and naked powers without any
guidelines
to the police officer to seize any material from the shop and thus, drag the vid
eo owners to
the litigation. He has given instances in the petition that police officer usual
ly demands for
video cassettes to be given to them free of charge for viewing it at their homes
and in case,
on any reason either the video cassette is not available or it is not given free
of charge, there
is likelihood that police officer shall misuse his powers and try to seize the m
aterial for
prosecution under the various provisions of the Act."
Although the High Court dismissed the petition on the grounds that it did not di
sclose any
actual injury to the petitioner, it upheld the constitutionality of the section
by reading the
word "satisfaction" to mean that the "police officer will not act until and unle
ss he has got
some type of information on which information he is satisfied and his satisfacti
on shall be
objective."
Section 64 is also not arbitrary for the reason that guidelines and safeguards a
re provided
under Sections 51, 52 and 52A and Section 64(2) of the Copyright Act, coupled wi
th the
fact that it is expected of the police officer that he would not act arbitrarily
and his
satisfaction shall always based on some material or knowledge and he shall only
proceed
for action under Section 64 in a bona fide manner and not for making a roving in
quiry.
Procedure after filing of FIR in case of infringement under Copyright Act:
The investigation of a cognizable offence (as in the case of copyright infringem
ent ) begins
when a police officer in charge of a Police Station has reason to suspect the co
mmission of
the offence under the Copyright Act, after registering of FIR under Section 154
of CrPC. In
such cases it is possible has the suspicion may be based on any other informatio
n of the
police (Section 157(1)). When a reasonable suspicion of the commission of infrin
gement of
Copyright exists, the SHO must immediately send a report of the circumstances cr
eating the
suspicion to a Magistrate having power to take cognizance of such an offence on
a police
report (Section 157(1)). The SHO shall then proceed in person, or shall depute h
is sub-
ordinate officer (not lower the rank of Sub-Inspector) to proceed to the spot, t
o investigate
the facts and circumstances of the case, and to take measures for the discovery
and seizure.
It is suggested to go through class notes also.