DR.P.
SREE SUDHA
ASSOCIATE PROFESSOR
DSNLU
REMEDIES FOR INFIRNGMENT OF
COPYRIGHTS
CIVIL REMEDIES
The civil remedies for infringement of
copyright are of two kinds:
preventive civil remedies, and
compensatory remedies
Interlocutory injunction
Injunction is the most important remedy
against the copyright infringement.
Injunction means a judicial process by which
one who is threatening to invade the legal or
equitable rights of another is restrained from
commencing or continuing such act, or is
commanded to restore matters to the
position in which they stood previous to the
action.
In United States, a standard four part test was setup in a case
for granting an interlocutory injunction:
Whether the plaintiff will have an adequate remedy at law
or will be irreparably harmed if the injunction is not issued.
Whether the threatened injury to the plaintiff outweighs
the threatened harm the injunction might inflict on the
defendant.
Whether the plaintiff has at least as reasonable likelihood
of success on the merits; and
Whether the granting of an interlocutory injunction will
disserve the public interest.[Hubbard v Vosper, I All E.R.
(1972) at 1023 ]
Mareva injunction
the purpose of which is to restrain the
defendant from disposing of assets which
may be required to satisfy the plaintiff or
claim or removing them from the jurisdiction
of the court.
order XXXIX. Rules 1 and 2 of the Code
of Civil Procedure, 1908
In Macmillan and Company Ltd. v K and J
Cooper -book containing selection from
plaintiff’s book. It was held in this case that
there was a prime facie case for the issue of a
temporary injunction. The injunction, of
course holds good only during the pendency
of the proceeding before the trial court
It is settled law that in granting interlocutory
injunction, three factors are taken into consideration
First, the establishment of a prima facie case,
second, the balance of convenience in the
favour of plaintiff and
finally irreparable injury would be caused to
plaintiff if interlocutory injunction was not
granted.
Permanent injunction
If the plaintiff succeeds at trial in establishing
infringement of copyright,
he will normally be entitled to a permanent injunction
to restrain future infringements.
This injunction will operate only during the unexpired
term of copyright
For the entitlement of the final injunction plaintiff need
not prove actual damage
But at the same time the plaintiff must show that there
is a probability of damage, that this is not, simply trivial
When can permanent injunction be
refused?
i) there is no evidence that the defendant has done
or threatens to do anything which would interfere
with the enjoyment of any right, vested in the
plaintiff, or
(ii) invasion of the right, if any, of the plaintiff, is of a
theoretical nature, which would at the most give
the plaintiff at right to claim nominal damages, or
(iii) the injunction would inflict far more injury on
the defendant than the advantage which the
plaintiff could derive from it.
Anton Piller Orders
Anton Piller KG v Manufacturing Processes Ltd.,
[1976] FSR 129 – copy right of confidential
information – drawings of electrical equipment
– plaintiffs got an information that defendants
are going to manufacture identical products –
ex parte order to restrain – defendants
Lord Denning held - that to grant ex parte order
3 essential conditions should be fulfilled:
Omrod L.J.
First there must be a prima facie case
Second the damage potential or actual must
be very serious for the applicant
Thirdly there must be clear evidence that the
defendants have in their possession
incriminating documents or things, and that
there is a real possibility that they may
destroy such material before any application
inter parties can be made
CPC Provisions
Order XXVI, Rules 9 and 10 – appointment of
commission for local investigation
Provisio to ORDER xxxix Rule 3 of CPC
facilitates ex parte injunction
The object of appointment of such
commission, i.e., local investigation
“requisite or proper for the purpose of
elucidating any matter in dispute,” would be
defeated due to delay
Anton Piller Orders
In certain cases, the courts in United Kingdom
make orders ex parte on the application of the
plaintiff after a hearing in camera and
in the absence of defendant, permitting the plaintiff
and his solicitor to inspect the defendant’s premises
The order enables the plaintiff’s solicitor to take
possession of infringing copies and documents and
other relevant materials or require the defendant
to keep infringing stock, thus securing or
preserving the evidence
Conditions for making Anton Piller
Order :
The plaintiff must show that he was having an extremely
strong prima facie case.
The plaintiff must show that he has suffered, or is likely to
suffer very serious and irreparable damage if an order is not
made, and
There must be clear evidence that the defendant has in his
possession incriminating documents or things and that
there is a real possibility of its being destroyed by defendant
before and after the inter parties application is made.
European Court of Human Rights in Chappell v. United Kingdom1989 F.S.R 617
Microsoft Corporation v Dhiren Gopal –
2010 (42) PTC 1
Aftergetting ex parte decree orders the
computers are sealed, adopting of
blackmailing tactics by the plaintiff, and the
defendants, in order to restart their business
and lessen their losses start succumbing to
pressure
Delivery Up Orders:
Section 58 – the Court can direct the seized
infringing copies and plates, if any will be
delivered to the plaintiff.
section 59 – works of architecture
J.K.Rowling v City Publicaitons 171 (2010) DLT
791 – pirated copies of books bearing stickers of
“Harry Potter and the Deathly Hallows” fake book
– with same slogans, location and description in
the harry Potter series – Delhi HC permanent
Injunction
Soft Copies
Dessault Systems S.A v Sphinix Worldbiuz
Lim 2009 (41) PTC 759 – in digital copy right
case where pirated software or confidential
information – deseal the computers CPUs
and create backup copies of hard
discs/storage media on new hard disc
Compensatory civil remedies
Damages for concession;
Delivery up of infringing copies; and
Account of profits.
Additional Damages
Account of Profits
In Mohan Lal Gupta v. The Board of School Education,
Haryana,[1978 I.P.L.R 83] 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.
Civil remedies under TRIPS Agreement
Article 44 of the Agreement provides that the
judicial authorities in a Member State shall
have the authority to order a party to desist
from an infringement. Interalia to prevent the
entry into the channels of commerce in their
jurisdiction of imported goods that involve the
infringement of an intellectual property right,
immediately after customs clearance of such
goods. - Injunctions
Provisional Measures:
To prevent an infringement of any intellectual property right from
occurring, and in particular to prevent the entry into the channels of
commerce in their jurisdiction of goods, including imported goods
immediately after customs clearance.
To preserve relevant evidence in regard to the alleged infringement.
The applicant may be required to provide any reasonably available
evidence in order to satisfy the court with a ‘sufficient degree of
certainty’ that he is the right holder and his rights are being infringed
or that such infringement is imminent. The applicant may be
required to provide a security or equivalent assurance sufficient to
protect the defendant and to prevent abuse. [ Article 50]
Damages under TRIPs
The judicial authorities may also order recovery of
profits and/or payment of pre-established damages
even where the infringer did not knowingly,
or with reasonable grounds to know, engage in
infringing activity
The courts shall take into account the need for
proportionality between the seriousness of the
infringement and the remedies ordered as well as
the interests of the third parties while making any
such order
ADMINISTRATIVE REMEDY
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.
Section 53(2) of the Act empowers the
Registrar of copyrights :
(a) enter any ship, dock or premises where any such
copies as are referred to in Section 53(1) may be
found, and
(b) examine
Section 11 of the Customs Act. 1962 such copies will
cum under the head of prohibited imports
Under Section 110 of the Customs Act, 1962, if the
proper officer has reason to believe that any
goods are liable to confiscation under the Act, he
may seize such goods.
Customs Act:
Under Section 111 (d), any goods which are imported
or attempted to be imported or are brought within
the Indian customs waters for the purpose of being
imported, contrary to any prohibition imposed by
law shall be liable to confiscation. The pirated
copyright goods are covered under this provision
The remedy available under Section 53 of the Act is
quasi – judicial in nature as an appeal can be made to
the Copyright Board against the order of Registrar
under Section 72 of the Copyright Act.
Administrative remedies under Berne
Convention
Article 16(1) of the Convention provides that
infringing copies of a work is liable to seizure in
any country of the Union where the work enjoys
legal protection.
Article 16(2) provides that copies of a work which
is protected in the country where such protection
is claimed can be seized as infringing copies even
though they are being imported from a country
where the work is not protected or has ceased to
be protected , i.e., has fallen into public domain.
Berne Convention
The seizure shall take place in accordance
with the legislation of each country according
to Article 16(3).
The remedies, therefore, may be civil,
criminal or administrative. All sanctions for
infringers are left to national legislations
Administrative remedies under TRIPs
Agreement
Section 4 of the TRIPS Agreement which
provides for “Special Requirements Related to
Border Measures” and consists of Article 51 and
60,
recognizes the role of custom authorities to
curb infringement of copyright.
Thus, specific obligations have been imposed on
Members to institute and enforce border
measures to prevent infringement of copyright.
Article 51 of the TRIPs
obliges Member States to adopt procedures to enable a
right holder, who has valid grounds for suspecting that
the importation of pirated copyright goods
“Pirated copyrighted goods” mean ‘any good which are
copies made without the consent of the right holder or
person duly authorized by the right holder in the
country of production and which are made directly or
indirectly from an article where the making of that copy
would have constituted an infringement of a copyright
or a related right under the law of the country of
importation’.
TRIPS
Article 53 and 56 of the Agreement provide for
adequate security as indemnity to be furnished by the
right-holder to protect defendant, importer, consignee,
and the owner of goods when it notifies customs
authorities for taking action at the border to detain
infringing copies.
The principle of de minimis finds a place in the TRIPs
Agreement. The infringing goods in smaller quantity
meant for personal use of a traveller need not to be seized
or confiscated by the custom authorities
WCT, 1996 and WPPT, 1996
The WIPO Copyright Treaty, 1996 (WCT) provides
that Member States shall comply with Articles 1
to 21 and the Appendix of the Berne Convention
Further, WCT and WIPO performances and
Phonograms Treaty, 1996 (WPPT) oblige. State
Parties to provide effective enforcement
procedures in their national laws against any act
of infringement of rights as provided in those
treaties.
Recent Developments
the Copyright Act in the year 2012, the obligations
under the treaties like Digital Rights Management
and Anti-Circumvention Measures have been
added as remedies in the Indian law. However, the
fair use exception has been retained keeping in
mind the peculiar conditions prevailing in India.
Further, the new IPR policy introduced in May,
2016 seeks to take the remedies available even a
step further.
Intellectual Property Rights Policy
2016
An analysis of the new Intellectual Property Rights
Policy 2016 designed to strengthen India's IPR regime
"to foster creativity and innovation," indicates that it
might have put the interests of intellectual property
owners, or global capital above that of public
the Regional Comprehensive Economic Partnership
has garnered much attention worldwide. Given the
imminent negotiations over the free-trade agreement
between India and 15 other Asia-Pacific countries
CRIMINAL REMEDIES
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
Punishment:
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.
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
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.
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.
Paradigm Shift After Amendment
After the amendment, Section 64 provides that
where any police officer not below 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.
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 - Section 66, Copyright Act,
1957
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
- (1996) 6 S.C.C. 409
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
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
Criminal remedies under the TRIPs
Agreement
Article 61 of the TRIPS Agreement provides
for criminal remedies against the
infringement of copyright.
The provision obliges members to provide for
criminal procedures for penalties at least in
cases of wilful copyright piracy on
commercial scale.
Criminal remedies under the TRIPs
Agreement
Criminal remedy shall include imprisonment
and/or monetary fines sufficient to provide a
deterrent, consistently with the level of penalties
applied for crimes for a corresponding gravity.
In appropriate cases, criminal remedies shall also
include the seizure, forfeiture and destruction of
the infringing goods and of any materials and
implements the predominant use of which has
been in the commission of the offence.
REMEDIES FOR INFRINGEMENT OF
NEIGHBOURING RIGHTS
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.
Commercial Division and Commercial Appellate
Division of High Courts Act, 2015
JURISDI CTION (High Courts of Delhi, Bombay, Calcutta,
Madras and Himachal Pradesh)
All commercial disputes stipulated by an Act to lie in a
court not inferior to a District Court and filed or pending
on the original side of the High Court
a) Shall be heard by the Commercial Division;
b) Shall be heard irrespective of its pecuniary value;
Intellectual Property Right matters which are filed or
pending on the original side of the High Court, shall be
heard by the Commercial Division irrespective of the
pecuniary value.
IPR matters shall be heard by the
Commercial Divisions:
Patents Act, 1970;
Trade Marks Act, 1999;
Designs Act, 2000;
Copyright Act, 1957; and
Geographical Indications of Goods
(Registration and Protection) Act, 1999
Section 7 of the Act, has held that
All commercial disputes which fulfill the following criteria
shall be heard by the Commercial Division of the High
Court, irrespective of such matters being above the
specified value of Rs. 10,000,000/- (Rupees Ten Million
Only) (“Specified Value”) or not:
Is stipulated by an Act to be filed in a court not inferior
to a District Court; and
are filed or pending on the original side of the High
Court.
The Court did not go into the facts and has just dealt
with the question of law being deliberated.
Conclusion
Only in recent years it has received prominence, especially in the
academic and policy circles.
In India, no official estimate is available to indicate the extent of piracy
and associated economic loss. But perceptions are that the piracy is a
big problem.
The main reasons behind copyright piracy are poor enforcement and
lack of awareness on copyright matters.
The copyright laws of India are as good as those of many advanced
countries in Europe and America, where concern for copyright is at a
high level.
Punishments prescribed for violators are stringent and comparable to
those of many countries in the world
But laws alone can do little justice unless implemented properly. The
enforcement mechanism is weak in the country.
