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REMEDIES

AGAINST
INFRINGEMENT
OF COPYRIGHT
SUBMITTED BY
SRUTI RAVINDRANATHAN
1957223
INTRODUCTION
Ubi jus ibi remediem (where there is right, there is a
remedy). The copyright act has not only conferred
the copyright but laid down effective system for
protecting copyright by various remedies, which
maybe classified in following categories:
 Civil remedies
 Criminal remedies
 Administrative remedies
In Tata Oil Co Ltd v Hansa Chemical, (1986 (2) ARBLR
303 Delhi, ILR 1979 Delhi 236 )the Delhi High Court
held that remedies available to holder of copyright
are independent of each other entitling the
aggrieved party to sue for any or all relief available
to him under law.
CIVIL REMEDIES
The civil remedies for infringement of
copyright are of two kinds:
preventive civil remedies, and
compensatory remedies
Preventive civil remedies
These remedies are used prior in time to the
occurring of the actual act of infringement
or before the damage ensues. These are,
for this reason, also the most popular
among the remedies.
CIVIL REMEDIES
(SECTIONS 56-62)
1. ANTON PILLAR ORDER
It is a kind of preventive measure. In appropriate
cases, the court may, on application by the plaintiff,
pass an ex parte order requiring the defendant to
permit the plaintiff, accompanied by solicitor or
attorney to enter the premises and make an
inspection of relevant documents and articles, take
copies thereof and remove them for safe custody.
Court before passing Anton Pillar Order,
should ensure that:
 Plaintiff makes full disclosure of all details and facts
within knowledge and that his conduct is
equitable.
 There is an urgency of situation and delay might
give the defendant an opportunity to destroy the
offending material.
 Further the court should not make an Anton pillar
order which is likely to have safe incriminating
impact on defendant.
 Anton Piller order takes its name from a decision of
the English Court of Appeal in Anton Piller K.G. v.
Manufacturing Processes Ltd., [1976] Ch. 55 (C.A.).
The appellant, Anton Piller, was a German
manufacturer of motors and electric generators
used in the computing industry. The respondent
was the appellant's agent in the United Kingdom.
As agents the respondents had received
confidential information surrounding the
appellant's business
The appellants found out that the respondents had been
in secret communication with other German companies
called Ferrostaal and Lechmotoren with a view to giving
those companies detailed plans and drawings of the
appellant's products so that they could be copied. The
appellants were about to launch a new product and
feared that details of it might get into the hands of
competitors if the respondents were forewarned that the
appellants were aware of the respondents' breaches of
confidence. Anton Piller commenced ex
parte proceedings seeking an injunction to restrain
copyright infringement as well as a court order to permit
entry to the respondent's premises to search and remove
all confidential information owned by the appellants. The
injunction was granted but the order for inspection and
removal was refused. The appellants appealed the denial
of the latter order. In the Court of Appeal the order was
granted. From this initial order has grown the
jurisprudence on Anton Piller orders, commonly known as
civil search warrants.
2. INJUNCTION
The plaintiff may seek the relief by way of restraining
defendant from infringing his copyright through
temporary, permanent or interlocutory injunction in
a civil suit at various stages of trial. The provisions
explained in order XXX1X, civil procedure code are
guiding principles.
3. INTERLOCUTORY INJUNCTION
For obtaining an interlocutory injunction the plaintiff
has to establish-
 A prima facie case;
 Balance of convenience in his favor
 That refusal to grant interlocutory injunction would
cause irreparable injury to the plaintiff.
In Microsoft corporation v Yogesh Papat,(118 (2005)
DLT 580, 2005 (30) PTC 245 Del)the Delhi high court
granted injunction against defendant restraining him
to down load software produced by plaintiff on the
computers of their customers without any permission
from appellant.
4. MAREVA INJUNCTION
This form of interlocutory injunction is issued to
restrain the defendant from disposing of assets which
may be required to satisfy plaintiff’s claim or
removing them from jurisdiction of court. In CBS v
lambart,([1982] 3 WLR 746, [1982] 3 All ER 237 )the
Mareva Injunction was granted
where the principal assets, however, were cars and
the order including a provision requiring the
defendant to disclose their whereabouts. The
prevention of disposal is not of much use if the
plaintiff cannot locate the assets when it comes to
seek to enforce any final judgment obtained.
Therefore, such injunctions are usually sought ex
parte.
5. John Doe Order
This kind of order is issued against unknown
persons who have or may have committed
breach of copyright and or trademark and
whose identities cannot be ascertained by
plaintiff. This is a kind of preventive remedy and
acts as deterrent alleged violation. The name
‘John Doe’ is used against a fictitious or
unidentified person in USA and U.K. In India the
name ‘Ashok Kumar’ has been used.
It is a cease and desist order given under Order
30 Rule 1 of the code of civil procedure, where
the plaintiff have made a prima facie case
establishing the likelihood of violation of their
copyright work, which will affect their financial
objectives leading to massive loss.
In India the passing of John Doe order started in famous
Taj Television v Rajan Mandal, [IA NO. 5628/2002 in CS
(OS) 1072/2002] during the course of the 2002 FIFA
World Cup held in Korea and Japan (“2002 Football
WC”). Taj Television Ltd. (“Taj”) owned the sports
channel ‘Ten Sports’ and was the owner of the
broadcasting rights. The Court granted Taj an ex-parte
injunction against both named and unnamed cable
operators for unauthorized transmissions as its
broadcasting rights under section 37(3) were being
infringed. Although a large number of cable operators
had taken licenses, several prominent cable operators
had not signed up with Taj or its authorized operators
and broadcasted the tournament without any
approvals, thereby costing the television industry in
terms of millions of rupees.

Protecting of books before release, preventing of


movie piracy have been achieved through passing of
John Doe.
Compensatory civil remedies
Compensatory civil remedies against the
infringement of copyright can be divided
into three parts:
Damages for concession;
Delivery up of infringing copies; and
Account of profits.
Damages as a compensatory remedy: The
purpose of an award of damages is to
restore the plaintiff to his position before the
infringement. Such damages are therefore
compensatory.
Nominal damages are always awarded where a legal
right has been infringed irrespective of the actual
damage. Generally, the damages are for an amount
that the defendant would have paid had he got the
licence from the copyright owner. Some more factors
will also taken into consideration to assess the
damages, e.g., diminution of the sales of copyright
owner’s work, or the loss of profit which he might
otherwise have made. The fact that the pirated work
may have injured the reputation of the copyright
owner is also a fact that may be taken into
consideration in assessing the damages.
Delivery up: damages for conversion: Damages for
conversion as defined by Lord Atkin in Laneashire and
Yorkshire Railway v. Mac Nicoll, are damages for
dealing with goods in a manner inconsistent with the
rights of the true owner, provided that it is also
established that there an intention on the part of the
defendant, in so doing, to deny the owner’s right, or to
assert a right which is inconsistent with owner’s right.
In India, the Copyright Act, 1957 provides that
all infringing copies of any work in which
copyright subsists and all plates used or
intended to be used for production of such
copies shall be deemed to be the property of
the owner of the copyright. It then entitles him
to take proceedings for the recovery of
possession of the infringing copies and plates or
in respect of the conversion thereof.
In a claim for damages for conversion it is a
defence if the defendant proves that at the
time of conversion of infringing copies he was
not aware and had no reasonable grounds for
believing that copyright subsisted in the work or
that he had reasonable grounds for believing
that such copies do not infringe the copyright in
the work.
Account of Profits: As a corollary to the
injunction, equity may, in appropriate cases,
require a defendant to account to a plaintiff for
profits made from wrong doing such as the
infringement of copyright. Thus, the plaintiff is
entitled to require the defendant to account for
the profits made by him by his infringement of
former’s copyright. This is not a notional
computation as with damages, but an
investigation of actual accounts. The account is
of net profits, i.e., the sale price of infringing
article as deducted by the manufacturing and
delivery cost. In Mohan Lal Gupta v. The Board
of School Education, Haryana, the defendant
was ordered to pay 20% of the profits to the
plaintiff as the matter copied was less than one
– tenth of the book.
JURISDICTION OF COURT
Every suit or civil proceeding in respect of
infringement of copyright in any work or the
infringement of any other rights viz, special right to
broadcasting organization or performance shall be
instituted in the District Court having jurisdiction.
PLACE OF SUIT
The suit for infringement can be instituted at the
place where cause of action has arisen or where the
plaintiff voluntarily resides or comes on buisness
PERIOD OF LIMITATION
The civil suit can be filled within three years from
the date of infringement.
WHO CAN SUE
Following persons can file suit for infringement of
copyright:
 Owner or in case of joint ownership any co-
owner
 Assignee of copyright
 The legatee
 In case of anonymous or pseudonymous
work, the publisher
 licensee: provided the owner of copyright is
made party, unless exempted from court
CRIMINAL PROCEEDINGS- (SECTIONS 62-70)
The owner of copyright can take criminal proceedings
against infringer. The criminal remedy is distinct and
independent of other remedies and can be availed
simultaneously to stop further infringement and punish
the infringer. The pendency of a civil suit does not justify
the stay of criminal proceedings in which the same
question is involved. In addition, a criminal complaint
cannot be dismissed merely on the ground that the
dispute is civil in character.
Criminal remedies are more effective than civil
remedies because the former can be disposed of
quickly. In addition, criminal proceedings directly strike
at the honour and social status of an infringer, as a
consequence of which sometimes he comes for a
settlement out of court to save his prestige. Knowledge
or mens rea is an essential ingredient of the offence.
Section 63 to 70 of the Act deal with
offences relating to copyright. Section 63
makes it an offence for any person
knowingly to infringe:
the copyright in a work; or
any other right conferred by the Act
(except the resale share right in original
copies as provided by section 53A) or
knowingly to abet such infringement.
It is, however, clarified that the construction
of a building or other structure which
infringes or which, if completed would
infringe the copyright in same other work is
not an offence and therefore not
punishable.
The offence of an infringement of copyright is
punishable with imprisonment for a term which
shall not be less than six months but which may
extend to three years and with fine which shall
not be less than Rs. 50,000/- but which may
extend to Rs. 2 lakhs. The court has discretion to
reduce the minimum term of imprisonment and
the minimum fine for adequate and special
reasons where the infringement has not been
made for gain in the course of trade or business.
For the second and subsequent convictions, the
minimum term of imprisonment is enhanced to
one year and minimum fine to Rs.1 lakh which
may be relaxed for adequate and special
reasons to be mentioned in the judgment
where the infringement was not made for gain
in the course of trade or business. There is,
however, no change in the maximum
punishment
The offence under section 63 of the Copyright
Act, 1957 is a non – bailable offence. The
provisions of section 438 of the Criminal
Procedures Code, can, thereof, be applied in
respect of offence punishable under section 63
of the Act.
Knowing use of infringing copy of computer
programme
A new Section 63B which has been inserted by
the Copyright (Second Amendment) Act, 1994
makes knowing use of infringing copy of
computer programme an offence, under which
the offender is punishable with imprisonment for
a term which shall not be less than seven days
but which may extend to three years and with
fine which shall not be less than Rs. 50,000/- but
which may extend to Rs. 2 lakhs.
However, where the computer programme has not been
used for gain or in the course of trade or business, the court for
adequate and special reasons to be mentioned in the
judgment, not impose any sentence of imprisonment and
may impose a fine which may extend to Rs. 50,000/-
Seizures of infringing copies by police
Prior to Copyright Amendment Act, 1984, seizure of infringing
copies by police was possible only after a magistrate had
taken cognizance of an offence relating to infringement
under Section 63, Moreover, such seizures could only be of
infringing copies and did not extend to plates used for making
infringing copies.
The Copyright Amendment Act, 1984 had widened the
powers of the police. After the amendment, Section 64
provides that where any police officer not below the rank of
sub-inspector of police is satisfied that an infringement or an
abetment of infringement of copyright in any work of has
been or is likely to be committed, he may seize without any
warrant all copies of the work and all plates used for the
purpose of making infringing copies of the work, wherever
found. The copies so seized must be produced before a
magistrate as soon as practicable.
In Girish Gandhi v. Union of India, the
constitutional validity of section 64 was
challenged on the ground that since no
procedure was laid down in the section, the
power granted to police officer was arbitrary
and hence violative of the constitutional right.
The court while rejected this ground held that
Section 63 clearly mentioned that police officer
was to seize the material if he has satisfied. The
word “satisfaction” would mean that police
officer would not act until and unless he had
got some type of information on the basis of
which he was satisfied. His satisfaction should be
objective. It could not be imagined that only
because Section 64 empowered the police
officer to seize the material to his satisfaction,
that he would act mala fide or in an arbitrary
manner. If he did so, there
were ample remedies available in the
appropriate courts and the aggrieved person
was always free to safeguard his interest in that
respect by restoring to the legal remedies. The
power given to the police officer was not at all
arbitrary.
Possession of plates for making infringing copies
Section 65 provides that any person who
knowingly makes, or has in his possession, any
plate for the purpose of making infringing
copies of any work in which copyright subsists
shall be punishable with imprisonment which
may extend to two years and shall also be liable
to fine.
Protection of technological measures.–
Section 65 A provides that any person who circumvents an effective
technological measures applied for the purpose of protecting any of
the rights conferred by this Act, with the intention of infringing such
rights, shall be punishable with imprisonment which may extend to two
years and shall also be liable to fine. However, this provision shall not
prevent any person from,--
(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 such 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 obtained encrypted copy; or
(c) conducting any lawful investigation; or
(d) doing anything necessary for the purpose of testing the security of
a computer 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.]
Section 65 B - Protection of Rights Management
Information.-- Any person, who knowingly, --
(i) removes or alters any rights management
information without authority, or
(ii) distributes, imports for distribution, broadcasts
or communicates to the public, without
authority, copies of any work, or performance
knowing that electronic rights management
information has been removed or altered
without authority, shall be punishable with
imprisonment which may extend to two years
and shall also be liable to fine:
Provided that if the rights management
information has been tampered with in any
work, the owner of copyright in such work may
also avail of civil remedies provided under
Chapter XII against the persons indulging in
such acts.]
Delivery of infringing copies to the owner of
copyright
In a criminal proceeding, the court may
order that all infringing copies of the work or
all plates for the purpose of making such
copies which are in the possession of
alleged offender be delivered up to the
owner of the copyright. The court may
make this order irrespective of the fact
whether the alleged offender is convicted
or not.
Punishment for contravention of section 52A
Section 52A makes it mandatory to give certain
information on the sound recordings or video films,
regarding the name and address of the person who
makes such sound recording or the video film; and
the name and address of the owner of the copyright
in such works, etc. section 68A provides that any
person who publishes a sound recording or a video
film in contravention of the provision 52A shall be
punishable with imprisonment which may extend to
three years and shall also be liable to fine.
In State of Andhra Pradesh v. Nagoti
Venkararamane, the Supreme Court examined the
question whether the identification of the owner of
the copyright was a precondition for the conviction
of an offence under the Copyright Act, 1957. The
court observed that the objective of introducing
Section 52A was to prevent piracy of
cinematograph film and sound records and protect
the interest of the owner of copyright and the public.
The Act mandated the punishment of
accused in case of violation of the
provisions. It would, therefore, be
unnecessary for the prosecution to track on
and trace out the owner of the copyright to
come and adduce evidence of
infringement of copyright. The absence
thereof did not constitute lack of essential
element of infringement of copyright. If the
particulars on video films, etc. as mandated
under Section 52-A did not find place, it
would be infringement of copyright.
ADMINISTRATIVE REMEDY

In order to prevent importation of infringing


copies in India, the Copyright Act, 1957 makes
available an effective and quick administrative
remedy to the owner of copyright. Section 53(1)
of the Act empowers the Registrars of
copyrights to make an order prohibiting the
importation into India of copies of a
copyrighted work made outside India which, if
made in India, would infringe copyright in the
work, on the application of the owners of
copyright in such work, or his duly authorized
agent, after making such inquiry as he deems
fit. The issue of importation into India of the
infringing copies of the work protected by
copyright came before Supreme Court in
Gramophone Company of India Ltd. v. Birendra
Bahadur Pandey and Others.
CASE FACTS:
Gramophone Company of India Limited is the owner of copyright in
the recordings of performing artists to whom it pays royalties. The
company learnt of the arrival of a consignment of pirated copies of
these recordings at Calcutta. The same were being transported from
Singapore to Nepal through India. Action was initiated against the
consignee for violation of Gramophone India’s copyright.
CASE HISTORY:
Gramophone India sought action from the Registrar of Copyrights to
curb the circulation/import of the pirated recordings. When the
Registrar failed to take necessary action, the company filed a writ
petition, seeking a writ to compel the Registrar to pass an appropriate
order to prevent the release of the pirated works from the custody of
the Custom authorities. The petition was heard by a single-judge
bench at the Calcutta High Court which issued an order in favor of
Gramophone India and gave the Registrar eight weeks to act.

An appeal was preferred by the consignee against the decision of the


single judge bench on the ground that the consignment was not an
importation as it had not been mixed with local goods. A division
bench of the Calcutta High Court heard the appeal and ruled in favor
of the consignee, dismissing the petition of Gramophone India.
Gramophone India filed a special leave petition in the Supreme Court
under Article 136 of the Constitution.
ISSUE
Whether the mere presence of goods in transit
on Indian Territory amounts to their
importation?
Whether such goods in transit, which if made in
India would infringe copyright, can be allowed
on Indian Territory?

RULE OF LAW
Goods in transit, once on Indian Territory, are
considered to have been imported, irrespective
of whether they have been sold, and if such
imported goods are found to be in violation of
Indian copyright laws, they can not be allowed
to be imported/circulated on Indian Territory.
ANALYSIS:
The contention of the consignee that the word
‘import’ implies the incorporation and mixing of
the goods imported with the mass of the
property in the local area and the mere
presence of the pirated consignment in Indian
Territory does not amount to import and that
such goods would not be subject to the
provisions of the Copyright Act and Customs
Act was held invalid by the Supreme court,
which held that ‘import’ includes importation for
transit across the country. Consequently, the
infringing goods were deemed to have been
imported and in violation of provisions of the
Copyright Act and their circulation/import were
banned under the relevant provisions of the
Customs Act.
An important question raised in this case is to what
extent countries parties to international conventions
are bound by such provisions. Nepal, the destination
of the pirated consignment, and India are parties to
several international conventions for IP protection
and have also signed bi-lateral treaties to facilitate
trade. Subject to certain exceptions, either country
can refuse to allow transit of goods in order to
protect industrial, literary and artistic works. This
implies that the State of transit may enforce a
copyright or trade-mark if the goods in transit are in
violation of the same. India, in this case, would be
entitled to seize the pirated consignment heading
towards Nepal and seek remedy for infringement of
copyright It has been settled that such provisions
shall be binding only as long as they are not in
conflict with municipal laws. It is made clear that,
while dealing with the issue of enforcement of
copyright of works, even when the infringing goods
are neither of Indian origin nor intended for the
Indian market, they are subject to Indian laws and
are in violation of copyright.
REMEDIES FOR INFRINGEMENT OF
NEIGHBOURING RIGHTS
All the above discussed remedies are also
available against the infringement of
broadcast reproduction rights and
performers’ rights in India. Section 39A of
the Copyright Act, 1957 provides that
Sections 53, 55, 64, 65 and 66, etc. shall
apply mutatis mutandis in relation to
broadcast reproduction rights and
performers’ rights.
CONCLUSION
An ideal regime for copyright protection would
balance the rights of all stakeholders. On one hand,
India faces major economic losses due to rampant
piracy, especially online; on the other hand, the
peculiar socio-economic conditions of the country
make it imperative to overlook IPRs to an extent for
the greater common good. In these circumstances,
perhaps the stress should be on effective
implementation of the existing remedies rather than
introducing new remedies over and above the
existing provisions, so that the genuine exceptions to
IPRs are not whittled down. With the paradigm shift in
the legal regime governing the subject in India, it
remains to be seen how such a balance continues
to exist.
THANK YOU