Case-summary-copyrights 7-16

John Wiley and Sons Inc. and Ors. vs. Prabhat Chander Kumar Jain   - Manmohan
Singh, J.
2010 (44) PTC 675 (Del)
 

• The plaintiffs (collectively) claim to be pioneers in their respective

fields of publishing academic, scientific and other educational
books which are circulated world wide. The plaintiffs claim to have
a repertoire of the books which are published by them and are
available globally at the prices settled by the plaintiffs. It is averred
in the plaint that the Indian market is quite significant for all the
plaintiffs’ publishers and keeping in mind the requirement of the
business, demand of the books and the economic viability of the
purchasers, the plaintiffs decided to expand their operations in
India by introducing Low Price Editions of their books so that the
same international level books which are otherwise quite costly
may be made available to Indian and other Asian students in a cost
effective manner at the rates befitting the Asian markets.
Facts
•     In this spirit, the plaintiff No. 1 (John Wiley & Sons Inc., USA)
authorized plaintiff No. 2 (Wiley India Pvt. Ltd.) to publish its
works in Wiley Student Edition for distribution only in the
territories of India, Bangladesh, Nepal, Pakistan, Sri Lanka,
Indonesia, Myanmar, Phillipines and Vietnam. The books which
are published are subject to territorial restrictions imposed by
the plaintiff No. 1 and should contain the following notice:
• ‘Wiley Student Edition Restricted for Sale only in Bangladesh,
Myanmar, India, Indonesia, Nepal, Pakistan, Philippines, Sri
Lanka and Vietnam. The book for sale only in the country to
which first consigned by Wiley India Pvt. Ltd and may not be re
exported….’
The plaintiffs claim in the suit:
• The grievance of the plaintiffs begins with the rampant problem of the
export of books which are reprint editions meant for the Indian and
neighbouring territories to the Western Countries which not only
causes copyright infringement but also leads to royalty losses of the
plaintiffs who are the owners of the respective copyrights.
• to have taken suitable action by way of complaints before the custom
officials and court actions filed earlier before this Court.
• The plaintiffs state that their attention was drawn to Defendant No. 3
Technischer Overseas Pvt. Ltd., a bookseller in Delhi trading under the
website “www.alibris.com” was offering online sale and delivery
worldwide of the Low Price Editions of the plaintiffs publications. As
per plaintiffs, the defendant No. 3 is owned and operated by defendant
Nos.1 and 2 herein who are the Directors of defendant No. 3 having
their address at P-18, Green Park Extension, New Delhi.
misrepresentation in the defendants own words as stated
in the plaint can be described as under:

• It is an international edition in paperback. The contents are

identical to the American Edition, word for word. The ISBN
differs from the American Edition and the book is in black
and white but the contents are completely same as the
American Edition at a great price. Other websites 
http://www.biblio.com and http://www.biblon.co.uk also
find mention of the plaintiff’ books by defendant No. 3 and
the defendants target customers by describing the reprint
editions as “Brand New International Edition in soft cover
and black and white. Content same as US Edition. Only
ISBN differs from US Edition. Why pay more for the same
book?”
The plaintiffs have also filed an application
• seeking temporary injunction against the defendants
which came up for hearing with the main suit on
17.09.2008 when this Court passed an ex parte order
to the following effect: The plaintiffs have made out a
prima facie case for the grant of ex-parte ad interim
injunction. The Defendants and their agents and
assigns and other sister concerns, till the disposal of
this application, are restrained from advertising,
offering for sale/exporting any publications of the
plaintiffs to the countries outside territories specified
on the books published by the plaintiffs.
Defendants Counter Arguments 

i) The nature of activities carried out by them i.e. export of the books does not
tantamount to infringement of copyright. As per the defendants, there is no
infringement of copyright in the act of export of the books.
ii) There is no act or overt act on their part which is actionable within the meaning
of the Copyright Act, 1957 as the books once purchased are legally purchased in
India and they leave the territory of India once they are exported. Thus, the
defendants contend that no act of infringement is done within the territory of
India and thereby the provisions of the Copyright Act are not attracted.
iii) There is no case made out as regards parallel imports where goods are brought
into the territory of India and if the same are found to be infringing, they can be
said to be infringement of the rights of the right holder. In contradistinction to
this, the case which the plaintiffs are building is of export of the articles from
India in which case there cannot be any infringement so far as the export of
books from India is concerned and at best, the same may be infringement of the
rights of the plaintiffs in the country where the said books are imported.
Defendants Counter Arguments 

iv) The plaint does not disclose any cause of action qua infringement and same is
liable to rejected under Order VII Rule 11 CPC as there is no case made out for
infringement of copyright.
v) The defendants rely upon the rule of ‘exhaustion of rights enshrined in the
copyright regime whereby the rights of the copyright holder are lost once the first
sale of the article is effected i.e. the owners control over the article and the rights
therein are exhausted on the first sale and he/she cannot control every
subsequent sale by enforcing rights over the same. The said doctrine of first sale,
according to the defendants operates in USA and is legally accepted. Thus, USA is
the place where the plaintiffs ought to have sued the defendants. As the plaintiffs
are conscious that their rights can be defeated in the USA because of first sale
doctrine, the plaintiffs have filed this suit in India where there is no act of
infringement.
vi) The plaintiffs have no privity of contract with the defendants and thus the
defendants are not bound by the conditions mentioned on the books. The
enforcement of such conditions on the books is untenable.
Defendants Counter Arguments 

vii) The injunctory relief sought by the plaintiffs against the

defendants raises the trade barriers and is an unfair trade practice
and an anti competitive one.
viii) The suit for injunction filed by the plaintiffs is not maintainable
in view of the provisions of the Specific Relief Act, 1963 as there is
no right which entitles the plaintiffs to an injunction and no
corresponding obligation upon the defendants thereon.
ix) The conduct of the plaintiffs is inequitable as the distributors of
the plaintiffs themselves are exporting the books to various
territories and are making illicit profits thereon. In these
circumstances, the plaintiffs are debarred from attributing the said
wrong to the defendants when they themselves are guilty of the
same one.
Mr. Mukul Rohatgi, Learned Senior counsel appearing on behalf of the
plaintiffs has made his submissions which can be crystallized in the
following manner:

a)Mr. Rohatgi submitted that the acts of the defendants of diverting the
Low Price Editions of the books which are meant for Indian and the
neighbouring territories to the territories outside the ones indicated
on the books amounts to infringement of copyright.
b) To support his arguments, Mr. Rohatgi relied upon Section 14 of the
Copyright Act which provides the meaning of copyright which
includes the right to issue copies of the work to the public and not
being copies already in circulation . As per Mr. Rohatgi, it is the
prerogative of the owner of the copyright to issue the copies of the
work to the public if the same are not in circulation already and the
defendants, by putting into circulation the copies of Low Price
Editions meant for specific territories, are violating the right of owner
of the copyright and thus causing infringement of the copyright.
Submissions by Plaintiff:
c) The learned senior counsel has also referred to Section 51 of the
Copyright Act to state that infringement is deemed to be done by
a person who does without licence or permission any acts which
are conferred on the owner of the work. Thus, as per the counsel
for the plaintiffs, a clear cut case of infringement is made out.
d) The next submission of Mr. Rohatgi, Learned Senior counsel
for the plaintiffs is that even the export of the goods is treated to
be infringement within the meaning of the Copyright Act if it
violates the rights of the owner. That being the situation, it
makes no difference if the books meant for sale in India and
neighbouring states are exported to other countries as that also
constitutes infringement of the copyright held the owner.
To buttress his submission, Learned Senior Counsel relied
upon the Judgment of a Division Bench of this Court in
•  Penguin Books Ltd. v. India Book Distributors and Ors., 26 (1984) DLT
316 (DB) wherein this Court has held that import of Britain published books from
USA without seeking licence from exclusive licencee amounts to infringement of
copyright. The reasoning which is relevant for the purposes of the present
discussion is in paragraph 10 of the judgment which can be read as under:
• Copyright law is a territorial concept and each nation has its own laws. In
America it may not be possible to place restrictions on the resale of books. But
sale within the United States obviously cannot abrogate the effect of the laws of
the particular place where they are imported. It appears to me that an importer
would be subject to the law of the particular country to which he happens to take
the books. The importer cannot disregard the laws of other countries. I would
decide against the freedom (“liberty” as the learned Judge phrased it) from
restriction claimed by India Distributors. The learned judge upheld this freedom.
In my respectful opinion he was wrong. American books cannot be sold into India
so as to defeat the rights of the exclusive licensee.
The learned senior counsel sought to
distinguish
• the decisions cited by the defendants which are
primarily the decisions made by Courts in USA.
• It is submitted by Mr. Rohatgi that if at all there is
any exhaustion of rights, the same would be
limited to the territories where the sales are
effected by the owner/authorized to be effected by
the owner which means the territories indicated on
the book and not beyond the same.
• Thus, the first sales doctrine has limited
applicability to the extent of territorial limitation.
He argued that:
• there is a consent decree which is passed against the
Defendant No. 2 on 4. 2.2008 by United States District
Court Southern District, New York whereby the Defendant
No. 2 has agreed to suffer a decree of permanent injunction
amongst others in the said proceeding.
•   The learned Counsel for the plaintiffs summed up his
submissions by stating that in view of the foregoing
submissions, there is a prima facie case in favour of the
plaintiffs as the defendants are illegitimately exporting the
Low Price Editions of the books to the territories outside the
ones indicated on the books and causing infringement of
copyright.
Plaintiffs side:
•       Further, the balance of convenience is in favour of the
plaintiffs as it is plaintiffs rights which are being violated by
reason of the defendants acts.
• It is also argued by him that similar rights have been
protected by this Court in various cases and parties have
suffered an injunction against them.
• The plaintiffs are likely to suffer irreparable damage if the
defendants are not restrained by way of appropriate
injunction orders by this Court.
• Thus, the present case warrants the grant and confirmation
of interim orders granted on 17.9.2008 by this Court.
Per Contra the submissions of Mr. Rahul Gupta, learned
Counsel for the defendants can be summarized in the
following manner:
a) Mr. Gupta firstly submitted that the present case of the plaintiffs does not fall under
any of the provisions of the Copyright Act. Section 51 of the Act was read by Mr.
Gupta to contend that there is no provision in the said Section and nor there is any
provision under Section 14 of the Act whereby the export of the books would
tantamount to infringement. Thus, learned Counsel submitted that no provision of
the Copyright Act, 1957 is attracted which can lead to infringement of copyright.
b) Mr. Gupta advanced the preceding argument by further contending that the analogy
of import cannot be equated with the export of the article. Mr. Gupta has supported
this argument by stating that so far as the import of the work is concerned, the
Legislature has specifically included the same within the meaning of infringement by
express inclusion of such import in Section 51 as well as Section 2(m) which talks
about infringing copies of an article.
c) Mr. Gupta submitted that by not including export of the work within the definition
of ‘infringing copy or in the provision for infringement, the same cannot be read into
it to make out a case of infringement when it is actually not so. Hence, the export of
the books does not amount to infringement within the meaning of the Act.
It was argued by Mr. Gupta that:
• the first sales doctrine is applicable to the present case and the
plaintiffs have exhausted all their rights to control the subsequent
sales of the books after effecting the first sale in India.
• It was argued that the first sale doctrine is applicable to the
Indian Act as well.
• He argued that there is no case of infringement of any copyright
in Indian jurisdiction and the sale of books in India is not in any
manner illegal as per the provision of Section 2(m) read with
Section 14(a)(ii) read with explanation read with Section
51 of the Copyright Act where the rights of the owner have been
limited to issuance of copies which are not already in circulation.
Learned Counsel for the defendants has relied upon the
following decisions in order to strengthen his submission:

• a) Bobbs Merrill Co. v. Straus decided on 1.6.1908 by the US Supreme Court 210
US 339 (1908); b) Quality King Distributors, Inc. v. L’ansa Research
International, Inc. decided on 9.3.1998 by the US Supreme Court.; c) MIPR 2009
(2) 175 titled Warner Bros Entertainment Inc. and Ors. v. Santosh V.G. decided
on 13.4.2009 by this Court.
•     stress has been laid to the decision of a learned Single Judge of this Court in
Warner Bros Entertainment Inc and Ors. v. Santosh V.G. which according to
learned Counsel for the defendants recognizes the said doctrine of first sales in
relation to the literary works. The relevant paragraphs relied upon by the
defendants are paragraphs 58 and 63 of the judgment.
•     Mr. Gupta also submitted that the foreign judgment/consent decree passed in
the US Court is not binding upon this Court and does not effect the case of the
defendants. Lastly, it was argued by the learned Counsel for the defendants that
this Court does not have territorial jurisdiction to try the present matter as there
is no cause of action which has occurred within the territorial jurisdiction of this
Court.
Judgment
a) The combined reasoning given under the two heads leads to the conclusion that the
defendants acts are prima facie infringing in nature. The defences put forth by the
defendants to defend their usage are not tenable. Rather, the first sales doctrine if it is
applied does not aid the case of the defendant. Thus, there is prima facie infringement
of copyright which warrants the grant of temporary injunction till the disposal of the
suit.
b) The parameters for the grant of injunction have been succinctly discussed in Dalpat
Kumar v. Prahlad Singh, AIR 1993 SC 276 which include prima facie case, balance of
convenience and irreparable injury.
c) The plaintiffs have been prima facie successful in establishing that they are the
owners of the copyright in the books and the same is being violated by the defendants
by putting into circulation the Low Price Editions of the books into territories for
which the books are not meant and violating the right of the owner under Section
14(a)(ii) and also causing the conditions of the licence to be violated and there by
causing the infringement of the copyright of the plaintiffs. The defendants have failed
to show any prima facie tenable defence in support of their acts.
Judgment
d) The balance of the convenience will lie in favour of the
plaintiffs as the plaintiffs will be more inconvenienced if the
ex parte injunction granted on 17.9.2008 is not confirmed
and the defendants are not restrained from carrying out the
infringing acts as against the defendant, who will be less
inconvenienced. This is also more so when the defendants
have already given an undertaking before US court to not
indulge in infringing acts in future. The plaintiffs will suffer
irreparable loss if the defendants are allowed to start
carrying out their acts at this stage. The defendants will not
suffer any such loss at this stage as is obvious by weighing
the comparative hardship.
Judgment
• To sum up, the plaintiffs have made out a case for the grant of
temporary injunction by satisfying the three essentials elements
for the grant of injunction… Consequently, the defendants and
their agents, assigns and sister concerns, till the disposal of the
suit, are restrained from advertising, offering for sale/exporting
any publications of the plaintiffs to the countries outside the
territories specified on the books published by the plaintiffs.
•      It is made clear that any observation made herein shall be
treated as tentative in nature and shall not constitute any
expression of final opinion on the issues involved and shall have
no bearing on the final merit of case and submissions of the
parties in the suit.
8.Singham Case - I.A. No. 11242/2011 in CS(OS) No.
1724/2011

• In this case the Plaintiffs sought an injunction to prevent

piracy and loss of revenue, apprehending copies of movie
‘Singham’ being made and sold/distributed in the form of
DVDs/CDs in the market and/or shown on TV by cable
operators.
• In this case, the Hon’ble Delhi High Court, after establishing
the basic ingredients of the case, that is, imminent danger
and balance of convenience, passed John Doe order
restraining all Defendants and other unknown persons
constituting part of the same class from distributing,
displaying, duplicating, uploading, downloading or
exhibiting the movie in any manner.
Ban On Exhibition
• Eventually, several Indian ISPs were ordered to block access
to a number of file sharing websites.
• In recent times, there have been a few instances when the
movies have been banned from being showcased due to the
content being hurtful to the sensibilities of certain class of
people.
• In such circumstances, the owner of the copyright suffers
from several losses, including financial losses.
• The most recent example of such a circumstance is the case
of the movie “Padmavat” wherein several states banned the
release of the movie as it hurt the sensibilities of certain
classes of people.
9. Star India Pvt. Ltd. v. Piyush Agarwal
MIPR 2013 (1) 201; 2013 (54) PTC 222 (Del).

• The plaintiff Star India Pvt. Ltd. (STAR), filed three cases
against Piyush Agarwal (Cricbuzz), Idea Cellular (Idea) and
OnMobile Global Ltd. (Onmobile).
• The Board of Cricket Control (BCCI) supported the plaintiff,
claiming paramount rights over all information emanating
from a cricketing event by virtue of organising and promoting
the sport of cricket in India.
• The plaintiff has sought an interim injunction against the
defendants alleging that the latter has violated the 'mobile
rights' and 'mobile activation rights' which was assigned by
BCCI to the plaintiff in bouquet of rights exclusively assigned
to STAR.
Facts
• STAR and BCCI contend that the dissemination by the defendant of
match information through live score cards, match updates and score
alerts via SMS and MVAS, constitutes the tort of 'unfair competition' and
'commercial misappropriation/unjust commercial enrichment'.
• The plaintiff had spent a sum of Rs. 3581 Crores to successfully bid for
the Media Rights Agreement from BCCI dated 10.08.2012.
• The plaintiff sought remedy under common law, de hors the Copyright
Act, 1957.
• Despite, the case is important from the 'broadcasting' point of view. The
defendants' argument centred on four points, viz., (i) the plaintiff cannot
seek any remedy under common law because section 16 of the Copyright
Act, 1957 precludes the plaintiff from claiming a copyright or any other
similar right, other than those which are provided in accordance or under
the Act
Facts
(ii) they only publish the match information after it has come into
public domain and-that the information arising from the match
is purely factual in nature and acquires the position of news;
(iii) their actions do not amount to free riding on the efforts of the
plaintiff because they neither copy the actual content of the
broadcast nor provide access to audio or visual footage of the
broadcast and
(iv) they are exonerated under article 19(1) (a) of the Constitution
whereby they have the freedom to carry on trade by
dissemination of information to the public and such rights can
only be subject to the reasonable restrictions under article 19(2)
and not by common law.
BCCI
• On the other hand, BCCI the non-contesting defendant, has contended that
as the organiser of cricket in India, it has the exclusive rights in relation to
the content generated during a cricketing event, including the right to
commercially exploit all content arising from such event.
• BCCI as a not-for-profit organization does not get any funding from the
Government but its main source of funding comes from monetizing the
content arising from cricket matches, such as sponsorships and commercial
advertisements.
• Out of the revenue generated by BCCI, 85% is ploughed back into promoting
the game of cricket in India, whereas the defendants do not contribute their
revenue or a part thereof for the purpose of promoting the game of cricket in
India and hence the defendants are eating away into the mobile and internet
rights, without sharing the profit gained by them; thereby indulging in unfair
competition and unjust commercial enrichment.
plaintiff and BCCI had relied primarily upon

• Pittsburgh case, INS case, National

Exhibition case, Marksman case
• They contend that these precedents have a large
persuasive value due to the similarity in the
factual matrix, specifically with respect to play-
by-play updates being analogous to the ball-by-
ball updates provided by defendants.
The defendants, however, contended that
• reliance must not be placed on Marksman, because
the decision in NBA-1 upon which the Madras High
Court relied in Marksman, had been reversed by
the United States Court of Appeals in NBA-2 case
• The Plaintiffs have further contended that they do
not intend to prevent the information arising from
cricket matches from entering the public domain
but to ensure that the defendants share their
revenue with the plaintiff by obtaining a license for
such dissemination
Issues
i. Whether BCCI has the right to monetize the information
arising from a cricket match organised by it?
ii. Whether the defendants are free-riding on the efforts of
the plaintiff/BCCI?
iii. Whether the score alert/match updates are already in
public domain?
iv. Whether the defendants have a freedom under article
19(l)(a) to disseminate contemporaneous match
information?
v. Whether the public interest needs to be kept in mind
before considering the rival claims?
Findings of the Court:
• The court answered the first question in affirmative.
Regarding the defendant's contention that common law
rights are abrogated/ precluded/pre-empted under section
16 of the Copyright Act, the court held that the pre-emption
under section 16 of the Act only applies to copyright or any
similar right only with respect to 'works' and cannot be
extended to the other rights in any manner whatsoever.
• The score updates/match alerts do not constitute a 'work'
as defined under the Act, and therefore, cannot be said to
fall within the purview of the pre-emption under section 16.
Findings of the Court:
• Moreover, the BCCI and the plaintiff did not seek a creation of
copyright or a similar right from the court, but have sought a
remedy in common law against the tort of unjust commercial
enrichment.
• The plaintiff approached the court de hors the Copyright Act,
1957 and never claimed copyright (or any other similar right)
over information arising from a cricket match.
• The court also noted that Copyright Act creates several rights
besides copyright, like rights of broadcasting organisations
under section 37, the rights of performers under sections 38
and 38A, and the moral rights of authors which are recognized
under section 57; which are all distinct from copyright.
The court has quoted with approval the
observation in
• ESPN Star Sports v. Global Broadcast News Ltd -
"satellite broadcasting rights are treated as separate rights
and the said rights are recognized throughout the world as
independent rights .
• Raj Video Vision v. M/s Sun TV - the court answered the
second issue that the defendants were enriching themselves at
the cost of the plaintiff.
• The court also explained it by stating that the action of the
defendants directly competes with the plaintiff as both the
plaintiff and the defendant are seeking to generate revenue by
way of providing contemporaneous score updates/match
alerts.
As per the court
• since the plaintiff's grievance was not related to
infringement of its exclusive rights over the footage of
the cricket match, but specifically regarding the right to
raise revenue by disseminating match information
contemporaneously via SMS/ MVAS by exploiting the
mobile rights and mobile activation rights exclusively
assigned to it, the element of direct competition clearly
exists specifically with respect to contemporaneous
score updates/ match alerts.
• Thus the action of the defendants cashing upon the
efforts of the plaintiff/BCCI constituted free-riding.
The court categorically held that:
• the contemporaneous dissemination of score updates/match alerts,
without payment, but en-cashing the labour and expenditure of the
plaintiff would amount to unjust commercial enrichment. Regarding
the third issue whether the match information already being in public
domain, the court observed that information emanating from a cricket
match, enters the public domain at different moments of time, i.e., is
becomes freely available to the public at different moments of time.
• The court elucidated it through an example, the outcome of the first
ball bowled in a cricket match, enters the public domain instantly qua
the spectators in the stadium. The same information enters the public
domain after a delay of a few seconds (or micro-seconds) subject to
the time-lag in transmission of such information over a live telecast
through television/radio.
The Court held that:
• M L Metha J held that "match information has not entered public
domain i.e. is not readily available to the class of persons who do not
have access to TV/radio, who also happen to be the target consumers
of the both the parties.“
• New Delhi Television Ltd V. ICC Development
(International) Ltd - wherein it was observed that raising revenue
under the garb of 'reporting' (fair dealing as well) was not in
consonance with the spirit of article 19(l)(a). The court noted that
'news' or 'noteworthy information' arising from a cricket match is very
different from the ball-by-ball or minute by-minute information. For
instance, who won the toss and chose to bat/bowl, whether the
batsman has scored a century, or a bowler has taken a hat-trick, or a
new world record being set constitutes 'news' in the realm of a cricket
match.
The Court held that:
• Therefore, the dissemination of the ball-by-ball
or minute by-minute updates at a premium
cannot be exonerated under the freedom of
speech and expression as guaranteed under
article 19(l)(a).
• However, all noteworthy information arising
from a cricket match constitute 'news', and the
'reporting' of such noteworthy information
would be protected under article 19(l)(a).
The Court held that:
• A question might arise as to why the lag is only 15 minutes and not 2/3
minutes or 30 minutes or more?
• If the time lag was 2/3 minutes, it would be more or less contemporaneous
with the live telecast/broadcast of the match. If it is 30 minutes or more, as
observed by the Division Bench in the NDTV Case, the information becomes
irrelevant, and it would deprive the public of their right to that information.
• By specifying a 15 minute lag, it is ensured that the defendants are not
providing ball-by-ball or minute-by-minute score updates/ match alerts
contemporaneously with respect to the live telecast/broadcast of match.
• Considering the time-sensitive nature of the information, after a span of 15
minutes, there is no longer a direct competition between the parties to provide
contemporaneous match information to the customers who demand it.
• This maintains a balance between the right of the plaintiff to monetize the
cricket match and the right of the public to receive such information, and also
prevents the defendants from free-riding on the efforts of the plaintiff.
10. Happy New Year- Red Chilies Entertainments Private Limited vs.
Hathway Cable & Datacom Ltd. & Ors G.S. PATEL, J
SUIT (L) NO. 993 OF 2014 (Bombay High Court)

• Plaintiff has produced a film “Happy New Year,” is under

apprehension based on previous experience, is that there is a
likelihood of pirated copies of this film being released on
different media, including Blu-Ray, CD, DVD, VCD etc., and
• even of a film being transmitted through the service of
Defendants Nos. 1 to 3 or through cable service operators.
• In this case Mr. Dhond, learned senior counsel for the
Plaintiff filed an ad-interim order sought is in the nature of a
“John Doe” order in the sense that they seeks reliefs against a
person or persons unknown in addition to the present
Defendants Nos. 1 to 3. An affidavit of service on Defendants
Nos. 1 to 3 has been filed.
• Various High Courts have in the past issued similar orders. There is a
detailed order of 14th June 2002, for instance passed by the Delhi High
Court in TAI Television Limited V Rajan Mandal, as also an
order of the Chennai High Court in Viacom 18 Motion Pictures v
Jyoti Cable Network & ors.
• Mumbai High Court has passed such an order in Viacom 18 Motion
Pictures V Sonali Cable Vision Private Limited & ors.
• Senior counsel Mr. Dhond makes a statement that the injunction
sought does not pertain to any internal dispute regarding the
production of the film, but seeks only to restrain potential damage and
loss likely to be caused to the Plaintiff if these pirated copies are allowed
to flood the market.
• The suit is, therefore, brought as a quia timet action to prevent any such
irreversible or irredeemable damage.
After perusal of statements made in the plaint
• and to the nature of the reliefs sought, The Judge satisfied that urgent ad-
interim orders are necessary. There will, therefore, be an ad-interim
injunction in terms of prayer clauses (b), (c) and (d) of the Notice of Motion,
which read as follows:
• “(b) that pending the hearing and final disposal of the suit the Defendants
by themselves, their servants, agents, licensees, franchisees, partners,
proprietors and/or otherwise howsoever be restrained by an order of
mandatory injunction of this Hon’ble Court from telecasting/
broadcasting/distributing/putting on the cable TV network/disseminating/
reproducing or otherwise making available to the pubic, the film “Happy
New Year;
• (c) that pending the hearing and final disposal of the suit the Defendants by
themselves, their servants, agents, licensees, franchisees, partners,
proprietors and/or otherwise howsoever be restrained by an order of
mandatory injunction of this Hon’ble Court from
Issues submitted for grant of injunction:
(i) making a copy of the said film, including a
photograph of any image forming part thereof,
(ii) to sell or give on hire, or offer for sale or hire, any
copy of the said film, regardless of whether such copy
has been sold or given on hire on earlier occasions,
(iii) to communicate the film to the public in any
manner whatsoever including by way of but not limited
to telecasting and/or re telecasting the said film, or
even otherwise dealing with the rights in the said film
which vest exclusively in the Plaintiff, in any manner
whatsoever.
Issues submitted for grant of injunction:
• (d) that pending the hearing and final disposal of this suit, this
Hon’ble Court be pleased to pass an order and temporary injunction,
restraining the Defendants, their partners, proprietors, directors,
shareholders, officers, servants and agents, their representatives,
franchisees, nominees and other known and unknown parties, from
communicating or making available or distributing, or duplicating, or
displaying, or releasing, or showing, or uploading, or downloading or
exhibiting, or playing, and/or defraying the movie “HAPPY NEW
YEAR” in any manner without proper license from the Plaintiff or in
any other manner which would violate/infringe the Plaintiffs
copyright in the said cinematograph film “HAPPY NEW YEAR”
through different mediums like CD, DVD, Blu-ray, VCD, Cable TV,
DTH, Internet, MMS, Tapes, Conditional Access System or in any
other like manner
Judgment
• The Plaintiff shall be at liberty to publicize in all
available media an authenticated copy of this
order, including setting out the substance of the
order.
• This may also be prominently displayed in on-
line advertising, television as also in cinemas
and in newspapersAll police authorities are
directed to act on production of an authenticated
copy of this order.
11. The Chancellor, Masters & ... vs Rameshwari Photocopy
Services & ... on 16 September, 2016 - Justice Rajiv Sahai Endlaw
CS(OS) 2439/2012

• The five plaintiffs, namely i) Oxford University Press, ii) Cambridge

University Press, United Kingdom (UK), iii) Cambridge University
Press India Pvt. Ltd., iv) Taylor & Francis Group, U.K. and, v) Taylor &
Francis Books India Pvt. Ltd., being the publishers, including of
textbooks, instituted this suit for the relief of permanent injunction
restraining the two defendants namely Rameshwari Photocopy Service
(carrying on business from Delhi School of Economic (DSE),
University of Delhi) and
• the University of Delhi from infringing the copyright of the plaintiffs
in their publications by photocopying, reproduction and distribution of
copies of plaintiffs' publications on a large scale and circulating the
same and by sale of unauthorised compilations of substantial extracts
from the plaintiffs' publications by compiling them into course packs /
anthologies for sale.
Facts
• The suit along with IA No.14632/2012 under Order XXXIX
Rules 1 & 2 of Code of Civil Procedure, 1908 (CPC) for
interim relief restraining photocopying/reproducing copies
of plaintiffs' publication and sale of course packs came up
before this Court first on 14 th August, 2012 when summons
of the suit and notice of the application for interim relief
were issued and though no ex-parte ad-interim relief
granted but a Commissioner appointed to visit the premises
of the defendant No.1 without prior notice and to make an
inventory of all the infringing and pirated copies of the
plaintiffs' publication found and to seize and seal the same.
The defendant No.2 University has also
contested the suit :
(i) that world over Universities permit students to copy limited
pages from any work for use in research and for use in the
classroom by a student or teacher and this is recognised
by Sections 52(1) (a) & (i)  & (i) of the Copyright Act also;
(ii) that individual teacher and student may either read books
prescribed in the syllabus and curriculum offered by the
defendant No.2 University in the library or borrow the books
and make photocopy of the relevant chapter and pages; this
service of copying certain pages for educational purpose is
necessary because purchasing individual books is expensive
and several of the books are also out of print or not available
in India.
Courts Order
• Vide order dated 26th September, 2012, the defendant
No.2 University was directed to examine the proposal
of the counsel for the plaintiffs that the defendant
No.2 University obtains a licence from Reprographic
Rights Organisation for preparing course packs and to
also inform this Court whether any proposal for
obtaining such licence was pending consideration.
• Vide the same order, the defendant No.1 was also
directed to maintain proper accounts of sales and to
file a fortnightly statement before this Court.
Impleadment
• Association of Students for Equitable Access to Knowledge
(ASEAK) filed IA No.3454/2013 for impleadment in the
present suit and which was allowed vide order dated 1st
March, 2013 and ASEAK impleaded as defendant No.3.
• Though FAO(OS) No.192/2013 was preferred by the plaintiffs
there against but dismissed vide order dated 12th April, 2013
with some clarification.
• The defendant No.3 has also filed IA No.3455/2013 under
Order XXXIX Rule 4 of the CPC. Society for Promoting
Educational Access and Knowledge (SPEAK) filed IA
No.5960/2013 for impleadment and which was also allowed
on 12th April, 2013 and SPEAK impleaded as defendant No.4.
Reliance was placed on:
• Princeton University Press Vs. Michigan Document
Services Inc. 99 F.3d 1381 (6th Cir. 1996) also concerned with an
action for restraining the defendant from reproducing substantial
segments of copyrighted works of scholarship, binding the copies
into course packs and selling the course packs to the students for
use in fulfillment of reading assignments given by professors at
University of Michigan and negativing the defence of fair use
doctrine;
• it was held that the fair use of copyright work does not provide
blanket immunity for multiple copies for classroom use;
• (zj) that if such copying is allowed, there would be no market left
for the book(s);
• (zk) that the situation here is different from the judgment of the
Reliance was placed on:
• Supreme Court of Canada in Province of Alberta vs. Canadian
Copyright Licensing Agency 2012 SCC 37 where the teacher was
making short passages from the books; here pages after pages have been
photocopied; (zl) attention was also invited to Basic Books Inc. Vs.
Kinko's Graphics Corporation 758 F. Supp. 1522 also holding that
copying of excerpts without permission, compiling them into course pack
and selling them to college students amounted to infringement;
• (zm) that the defendant No.2 University also has a commercial interest
inasmuch as in lieu of permitting the defendant No.1 to so photocopy the
books, it is entitled to free photocopy of 3000 pages every month;
• (zn) it was demonstrated that the extent of copying of the textbooks in a
course pack ranges from 5% of the contents of the book to as much as
33.25% of the contents of the book and it was argued that the copying
would thus qualify as substantial;
Reliance was placed on:
• The Chancellor, Masters & Scholars of the University of Oxford Vs.
Narendera Publishing House 185 (2011) DLT 346 relating to ‘guide books' would
have no application as the same was concerned with transliteration and not copying as
is being done in the present case; attention was invited to Syndicate of The Press of
The University of Cambridge Vs. B.D. Bhandari 185 (2011) DLT 346, holding
that the defence of ‘fair use' as provided in Section 52(1) (h) is only available to the
teacher and pupil to reproduce the literary work in the course of instructions or
examination paper setter to reproduce any literary work as part of the questions or to
the pupil to reproduce the literary work as answers to such questions and further
holding that the publishers of commercial books were neither teachers nor students nor
a person giving or receiving instruction and that if the defence of fair use is allowed to a
publisher, then it would result in a situation where every publisher, without permission
from the owner of copyright, would reproduce the ad verbatim literary text from the
educational textbooks prescribed by the University and for commercial gains and
benefits and that too without giving any royalty or payment to the right owners towards
such a reproduction and thereby discourage creativity of authors who put their skill,
labour, years of knowledge, expertise etc. into the educational books.
Attention was drawn to the Lok Sabha
Debates of 22nd May, 2012
• Academy of General Education, Manipal Vs. B. Malini Mallya
(2009) 4 SCC 256, laying down that when a fair dealing is made inter alia
of a literary or dramatic work for the private use including research and
criticism or review, no infringement can be claimed and that no injunction
will be granted with respect to this as mentioned in Section 52 of the Act;
(viii) reliance was placed on Longman Group Ltd. Vs. Carrington
Technical Institute Board of Governor (1991) 2 NZLR 574 holding
that in its ordinary meaning the words ―course of instruction would
include anything in the process of instruction with the process
commencing at a time earlier than the time of instruction, at least for a
teacher, and ending at a time later, at least for a student and that so long
as the copying forms part of and arises out of the course of instruction, it
would normally be in the course of instruction; it encompasses
preparation of material to be used in the course of instruction.
Relied on
• The Supreme Court of Canada in CCH Canadian Ltd. Vs.
Law Society of Upper Canada 2004 SCC 13, it was held
that the defendant did not authorise copyright infringement
by maintaining a photocopier available in the Library and
posting a warning notice that it would not be responsible for
any copies made in infringement of copyright and on this
basis it was argued that course packs containing prescribed
reading material cannot amount to commercial exploitation.

• Regard was placed on the judgment dated 11th May, 2012 of

United States District Court for the Northern District of
Georgia (Atlanta Division)
Relied on
• in Cambridge University Press Vs. Mark P. Becker holding that small
parts averaging around 10% of the whole copyrighted work did not substitute for
the book and the court is required to consider whether the conduct engaged in by
the defendant would result in a substantially adverse impact on the potential
market for the original and if a professor used an excerpt of 10% of the copyrighted
work and this was repeated by others many times, it would not cause substantial
damage to the market for the copyrighted work because 10% excerpt would not
substitute for the original, no matter how many copies were made
• in Cambridge University Press Vs. Mark P. Becker holding that small
parts averaging around 10% of the whole copyrighted work did not substitute for
the book and the court is required to consider whether the conduct engaged in by
the defendant would result in a substantially adverse impact on the potential
market for the original and if a professor used an excerpt of 10% of the copyrighted
work and this was repeated by others many times, it would not cause substantial
damage to the market for the copyrighted work because 10% excerpt would not
substitute for the original, no matter how many copies were made
The counsel for the defendant No.1
argued :
(a) that the actions of the defendant No.1 impugned in this suit are licensed by the
defendant No.2 University and the defendant No.1 has been acting strictly in
accordance therewith;
(b) that the rate charged by the defendant No.1 of 40 paise per page for photocopying
is an inclusive charge / binding charge and there is no commercial angle thereto;
(c) that the plaint does not comply with the provisions of Order IV Rule 1 of CPC;
(d) that no resolution of the Board of Directors of any of the plaintiffs companies
authorising the institution of the suit have been filed;
(e) that the damages if any have to be awarded against the defendant No.2 University
only as the defendant No.1 has merely been acting as the agent / licensee of the
defendant No.2 University;
(f) drew attention to Articles 39(f) and 41 of the Constitution of India constituting
giving of opportunities and facilities to children to develop in a healthy manner,
protected from exploitation and right to education as Directive Principles of State
Policy; otherwise the counsel for the defendant No.1 adopted the arguments of the
senior counsel for the defendant No.2 University.
The senior counsel for the defendant No.2
University argued
(i) that the question as has arisen has not arisen in the country till now;
(ii) that the question, though relating to copyright law, has to be judged in
the light of the right to access to knowledge;
(iii) that the right to education finds mention in the Constitution not only
as a Fundamental Right but also as a Directive Principle of State Policy;
(iv) that access to education is a cherished constitutional value and
includes within it access for students to books in library and right to
research and to use all materials available;
(v) that there is no dispute that a copyright would certainly subsist in the
works published by the plaintiffs but it is to be examined whether the
said copyright vests in the plaintiffs or not;
(vi) that abstraction of work is not the same as reproduction of work
mentioned in  Section 14 (a) (i)  defining copyright, though reproduction
would include reproduction by photocopy;
Also Stated that:
• Education has always been a time honoured
exemption to copyright law; the copyright law
has always exempted reproduction for the
purpose of education, research and teaching
assuming it to be an intrinsic right of
academicians; that similarly copyrighted
material can be used by Judges and policy
makers without infringing the copyright; that
what has statutorily.
Cases Relied by the Court
• Time Warner Entertainment Company, L.P. Vs. RPG
Netcom (2007) 140 DLT 758 held that copyright cannot be
claimed and suit for infringement of copyright cannot be
maintained de-hors the Copy Right Act and that the Common
law rights to copyright were abrogated, earlier by Section 31 of
the Copyright Act, 1911.
• Supreme Court also, in Entertainment Network (India) Ltd.
supra held that copyright unlike trademark is a right created
under the Act and that when a author claims a copyright, the
right has to be determined with reference to the provisions of the
Act. Recently, in Krishika Lulla Vs. Shyam Vithalrao Devkatta
(2016) 2 SCC 521, copyright was held to be a statutory right
requiring statutory conditions to be satisfied.
Cases Relied by the Court
• J.K. Cotton Spinning & Weaving Mills Co. Ltd. Vs.
State of Uttar Pradesh AIR 1961 SC 1170 held that this
rule has not been arbitrarily made by lawyers and judges but
springs from common understanding of men and women
that when the same person gives two directions, one
covering a large number of matters in general and another to
only some of them, his intention is that these latter
directions should prevail as regards these while as regards all
the rest the earlier direction should have effect. The act of
making of photocopies by the defendant no.2 University, as I
have held hereinabove, is reproduction of copyrighted work
by the defendant no.2 University.
Guru-Shishya parampara
• (Teacher - disciple tradition) has for long now
been institutionalised, both at school and post -
school level, with imparting of education by a
teacher individually having no recognition.
• There is no reason to interpret Section 52(1)(i)
 as providing for an individual teacher and an
individual pupil and which, neither at the time of
inclusion thereof in the statute nor now exists in
the society.
The word ‘instruction‘:
• as commonly understood and defined in dictionaries,
means something that someone tells you to do' or ‘a
direction or order' or detailed information about how
something should be done or operated' or the action or
process of teaching'.
• Thus the word ‘instruction' in the context of a teacher
would mean something which a teacher tells the
student to do in the course of teaching or detailed
information which a teacher gives to a student or pupil
to acquire knowledge of what the student or pupil has
approached the teacher to learn.
Cases Relied by the Court
• B.K. Raghu Vs. The Karnataka Secondary Education Examination
Board ILR 2009 Karnataka 206 also equated education to instruction or
training by which people, (generally young), learn to develop and use their
mental, moral and physical powers. It was held that 'formal education' is
instruction given in schools and colleges--In this type of education, the people in
charge of a school or college decide what to teach and learners then study those
things under the direction of teachers. A Division Bench of the High Court of
Bombay in Bombay Municipal Corporation Vs. Ramachandra
Laxman Belosay AIR 1960 Bom 58 held that the words ―educational objects
in Section 63(b) of the Bombay Municipal Corporation Act, 1888 and the word
―instruction used in clause (k) are words of very wide import. Education was
held as meaning ―totality of information and qualities acquired through
instruction and training which further the development of an individual
physically, mentally and bodily. The word ―instruction ‖ was held to mean, to
furnish knowledge or information, to train in knowledge or learning, to teach, to
educate.
Reliance on Berne Convention
• Article 9 Right of Reproduction:
• 1. Generally; 2. Possible exceptions; 3. Sound and visual
recordings (1) Authors of literary and artistic works protected
by this Convention shall have the exclusive right of authorizing
the reproduction of these works, in any manner or form.
• (2) It shall be a matter for legislation in the countries of the
Union to permit the reproduction of such works in certain
special cases, provided that such reproduction does not
conflict with a normal exploitation of the work and does not
unreasonably prejudice the legitimate interests of the author.
• (3) Any sound or visual recording shall be considered as a
reproduction for the purposes of this Convention.
Reliance on Berne Convention
• Article 10 Certain Free Uses of Works:
• 1. Quotations; 2. Illustrations for teaching; 3. Indication of source and author
(1) It shall be permissible to make quotations from a work which has already
been lawfully made available to the public, provided that their making is
compatible with fair practice, and their extent does not exceed that justified
by the purpose, including quotations from newspaper articles and
periodicals in the form of press summaries. (2) It shall be a matter for
legislation in the countries of the Union, and for special agreements existing
or to be concluded between them, to permit the utilization, to the extent
justified by the purpose, of literary or artistic works by way of illustration in
publications, broadcasts or sound or visual recordings for teaching, provided
such utilization is compatible with fair practice. (3) Where use is made of
works in accordance with the preceding paragraphs of this Article, mention
shall be made of the source, and of the name of the author if it appears
thereon.
Courts Interpretation
• Most countries allow a few photocopies to be made without
payment especially for personal or scientific use, but expressions
of this sort leave a lot of latitude to legislators and the courts.
• Laws, for example the Tunis Model Law, often allow the
reproduction of a work for "the user's personal and private use".
True, this expression is interpreted in different ways, but in
principle it does not cover any collective use and it assumes that
the reproduction is not done for profit.
• The usual example is that of the student who, for study or
research purposes, copies a text.
• Manuscript copies have little impact; but with the arrival of new
copying techniques the situation changes. It is a matter not only
of photocopiers but also of tape-recorders.
Copyright Limitation
• Article 13 of the Agreement on Trade-Related
Aspects of Intellectual Property Rights is as
under: “ Article 13 Limitations and
Exceptions Members shall confine limitations or
exceptions to exclusive rights to certain special
cases which do not conflict with a normal
exploitation of the work and do not
unreasonably prejudice the legitimate interest of
the right holder.
Judgment
• In accordance with the aforesaid international covenants, the
legislators of some other member / privy countries in the context of
their respective countries have worded the exceptions differently
and on an interpretation of which legislation, the Courts of those
countries have adjudicated and which judgments have been cited
by the counsels.
• The Judge is of the opinion that the said judgments in the context
of different legislations on the basis of perception by the legislators
thereof of the purpose of teaching and unreasonable prejudice to
the legitimate interest of the author cannot form the bedrock for
this Court to interpret the Copyright Act of this country.
• Finally it is therefore concluded that the actions of the defendants
to be not amounting to infringement of copyright of the plaintiffs.
International News Service v. Associated Press 248 U.S.
215: 39 S.Ct. 68 (1918) - Justice PITNEY
• During the First World War, International News Service (INS) freely admitted
that it used news stories from the Associated Press (AP) in its own
publications.
• This was because INS could not effectively report war news after it had
released negative information on British casualties.
• To compensate for its lack of independent sources, INS owner William
Randolph Hearst resorted to tactics such as bribery or early editions of East
Coast newspapers in gaining access to AP news. (This was most effective on
the West Coast because of the time change.)
• The INS rewrote the news and failed to credit the AP for it. 

• The AP believed that this violated its right to all of the news that it gathered
from contributors around the world. By contrast, INS argued that the AP's
proprietary rights expired when the news was first published. The AP received
an injunction from the lower court.
The Complainant
• the Associated Press (Complainant) and the Defendants,
International News Services (Defendants) are both
involved in the news collection business.
• The collected news is distributed by the parties to
newspapers around the county. Both parties are in direct
competition with each other.
• The Defendants were involved in collecting news posted
by the Complainant on bulletin boards and newspapers
and then reproducing this news as their own work.
• This action was filed by the Complainant arguing that this
copycatting of the news constituted unfair competition.
Issue

• Whether the Defendant can be lawfully

restrained under theories of interference with
Complainant’s property rights in the news and
unfair competition, from appropriating news
taken from bulletins issued by Complainant or
any of its members, or from newspapers
published by them, for the purpose of selling it
to Defendants’ clients.
Cases Cited

• Board of Trade v. Christie Grain & Stock Co., 198 U. S. 236, 250,

 25 Sup. Ct. 637, 49 L. Ed. 1031, related to the distribution of
quotations of prices on dealings upon a board of trade, which were
collected by plaintiff and communicated on confidential terms to
numerous persons under a contract not to make them public.
• This court held that, apart from certain special objections that were
overruled, plaintiff's collection of quotations was entitled to the
protection of the law; that, like a trade secret, plaintiff might keep
to itself the work done at its expense, and did not lose its right by
communicating the result to persons, even if many, in confidential
relations to itself, under a contract not to make it public; and that
strangers should be restrained from getting at the knowledge by
inducing a breach of trust.
Cases Cited

• In National Tel. News Co. v. Western Union Tel. Co., 119 Fed. 294,
56 C. C. A. 198, 60 L. R. A. 805, the Circuit Court of Appeals for the
Seventh Circuit dealt with news matter gathered and transmitted by
a telegraph company, and consisting merely of a notation of current
events having but a transient value due to quick transmission and
distribution; and, while declaring that this was not copyrightable
although printed on a tape by tickers in the offices of the recipients,
and that it was a commercial not a literary product, nevertheless
held that the business of gathering and communicating the news—
the service of purveying it was a legitimate business, meeting a
distinctive commercial want and adding to the facilities of the
business world, and partaking of the nature of property in a sense
that entitled it to the protection of a court of equity against piracy.
Held

• Affirmed. In the present case there is unfair competition by the Defendants,

as two competing parties are endeavoring to make money and Defendants
are misappropriating Complainant’s quasi property interest in the news it
collected and misrepresenting it as their own.
•  In determining whether a news collecting agency has property rights in the
news the consideration needs to be whether an agency has a property right in
news it collected versus other collecting agencies, rather than against the
public
• The business of making this news known to world, when the parties to the
case are competitors in the field creates a quasi property interest in the news
between them.
• It is unfair competition when one party interferes with the normal operation
of another’s legitimate business precisely at the point where profit is to be
reaped, in order to divert a material portion of the profit from those who
have earned to those who have not.
NBA vs. Motorola -105 F.3d 841, 843 (2d Cir. 1997) - VAN
GRAAFEILAND, WINTER, and ALTIMARI

• Motorola manufactures and markets the

SportsTrax paging device while STATS supplies the
game information that is transmitted to the pagers.
• The product became available to the public in
January 1996, at a retail price of about $200.
SportsTrax's pager has an inch-and-a-half by inch-
and-a-half screen and operates in four basic
modes: "current," "statistics," "final scores" and
"demonstration." It is the "current" mode that
gives rise to the present dispute. 
In that mode, SportsTrax displays the following
information on NBA games in progress:

(i) the teams playing;

(ii) score changes;
(iii) the team in possession of the ball;
(iv) whether the team is in the free-throw bonus;
(v) the quarter of the game; and
(vi) time remaining in the quarter.
The information is updated every two to three
minutes, with more frequent updates near the
end of the first half and the end of the game.
SportsTrax's operation relies on:
• a "data feed" supplied by STATS reporters who watch the
games on television or listen to them on the radio.
• The reporters key into a personal computer changes in the
score and other information such as successful and missed
shots, fouls, and clock updates.
• The information is relayed by modem to STATS's host
computer, which compiles, analyzes, and formats the data for
retransmission.
• The information is then sent to a common carrier, which then
sends it via satellite to various local FM radio networks that in
turn emit the signal received by the individual SportsTrax
pagers.
The NBA's complaint asserted six claims for
relief:
(i) state law unfair competition by misappropriation;
(ii) false advertising under Section 43(a) of the Lanham Act, 15 U.S.C.
Section 1125(a);
(iii) false representation of origin under Section 43(a) of the Lanham
Act;
(iv) state and common law unfair competition by false advertising and
false designation of origin;
(v) federal copyright infringement; and
(vi) unlawful interception of communications under the
Communications Act of 1934, 47 U.S.C. 605.
Motorola counterclaimed, alleging that the NBA unlawfully interfered
with Motorola's contractual relations with four individual NBA teams
that had agreed to sponsor and advertise SportsTrax.
Decision of District Court
• The district court dismissed all of the NBA's claims
except the first - misappropriation under New York law.
• The court also dismissed Motorola's counterclaim.
Finding Motorola and STATS liable for
misappropriation, Judge Preska entered the permanent
injunction, reserved the calculation of damages for
subsequent proceedings, and stayed execution of the
injunction pending appeal.
• Motorola and STATS appeal from the injunction, while
NBA cross-appeals from the district court's dismissal of
its Lanham Act false-advertising claim.
 Copyrights in Events or Broadcasts of Events

• Under 17 U.S.C. Section 102(a). Section 102(a) lists

eight categories of "works of authorship" covered by
the act, including such categories as "literary works,"
"musical works," and "dramatic works." 
• The list does not include athletic events, and, although
the list is concededly non-exclusive, such events are
neither similar nor analogous to any of the listed
categories. Sports events are not "authored" in any
common sense of the word.
• There is, of course, at least at the professional level,
considerable preparation for a game.
Nimmer on Copyright concludes that
• the "[f]ar more reasonable" position is that athletic
events are not copyrightable. M. Nimmer & D.
Nimmer, Nimmer on Copyright Section 2.09[F] at 2-
170.1 (1996). Nimmer notes that, among other
problems, the number of joint copyright owners would
arguably include the league, the teams, the athletes,
umpires, stadium workers and even fans, who all
contribute to the "work."
• Concededly, case law is scarce on the issue of whether
organized events themselves are copyrightable, but
what there is indicates that they are not.
Case law
• Prod. Contractors, Inc. v. WGN Continental Broad.
Co., 622 F. Supp. 1500 (N.D. Ill. 1985) (Christmas
parade is not a work of authorship entitled to copyright
protection).
• In claiming a copyright in the underlying games, the
NBA relied in part on a footnote in Baltimore Orioles,
Inc. v. Major League Baseball Player's Assn., 805 F.2d
663, 669 n.7 (7th Cir. 1986), cert. denied, 480 U.S. 941
(1987), which stated that the "[p]layers' performances"
contain the "modest creativity required for
copyrightability."
Cases relied
• Prod. Contractors, Inc. v. WGN Continental Broad.
Co., 622 F. Supp. 1500 (N.D. Ill. 1985) (Christmas
parade is not a work of authorship entitled to copyright
protection). In claiming a copyright in the underlying
games, the NBA relied in part on a footnote
in Baltimore Orioles, Inc. v. Major League Baseball
Player's Assn., 805 F.2d 663, 669 n.7 (7th Cir.
1986), cert. denied, 480 U.S. 941 (1987),
• which stated that the "[p]layers' performances" contain
the "modest creativity required for copyrightability."
Infringement of a Copyright in the Broadcasts of NBA Games

• As noted, recorded broadcasts of NBA games - as opposed to the

games themselves - are now entitled to copyright protection.
• The Copyright Act was amended in 1976 specifically to insure
that simultaneously-recorded transmissions of live performances
and sporting events would meet the Act's requirement that the
original work of authorship be "fixed in any tangible medium of
expression." 17 U.S.C. 102(a). Accordingly, Section 101 of the Act,
containing definitions, was amended to read:
• “A work consisting of sounds, images, or both, that are being
transmitted, is "fixed" for purposes of this title if a fixation of the
work is being made simultaneously with its transmission.”
Judgment
• The district court found, "[a]fter viewing the complained-of
statements in this action in their context," that "[t]he
statements as to the particular origin of game updates
constitute nothing more than minutiae about SportsTrax.“
• However, we note that if the NBA were in the future to
market a rival pager with a direct data-feed from the arenas -
perhaps with quicker updates than SportsTrax and official
statistics - then Motorola's statements regarding source
might well be materially misleading. On the present facts,
however, the complained-of statements are not material and
do not misrepresent an inherent quality or characteristic of
the product.
Judgment
• We vacate the injunction entered by the district
court and order that the NBA's claim for
misappropriation be dismissed. We affirm the
district court's dismissal of the NBA's claim for
false advertising under Section 43(a) of the
Lanham Act.
Burlington Home Shopping Pvt. Ltd. v Rajnish Chibber & Anr. 1995
PTC (15) 278 -JUDGMENT R.C. Lahoti, J.

• The plaintiff is a mail order service company. According to the

plaintiff it publishes mail order catalogues dealing with several
consumer items which are posted to the select list of the
plaintiff's clients.
• By this method the plaintiff does substantial business. A major
investment notably in the business of mail order shopping is the
compilation of a list of clientele/customers database which is of
essential importance and consequence.
• The plaintiff has developed a list of clientele/customers database
over a period of three years prior to the institution of the suit by
investing considerable amount of money and time. The said
database is an expensive and gradual process of compilation.
facts
▫ The defendant was at one time an employee of the plaintiff. His nature of
the duties had nothing to do with the compilation and development of the
database. The plaintiff is a mail order service company. According to the
plaintiff it publishes mail order catalogues dealing with several consumer
items which are posted to the select list of the plaintiff's clients. By this
method the plaintiff does substantial business.
▫ A major investment notably in the business of mail order shopping is the
compilation of a list of clientele/customers database which is of essential
importance and consequence. The plaintiff has developed a list of
clientele/customers database over a period of three years prior to the
institution of the suit by investing considerable amount of money and time.
▫ The said database is an expensive and gradual process of compilation. The
defendant was at one time an employee of the plaintiff. His nature of the
duties had nothing to do with the compilation and development of the
database.
Issues before the Court

• The defendant has denied all the material plaint

averments. It is submitted that the said database
is neither developed by the plaintiff nor does he
have any copyright therein.
• It is also submitted by the defendant that he has
developed his own database and utilisation
thereof does not amount to any infringement of
the copyright of the plaintiff.
Statutory Provisions Involved

• Section 2(o) defines `literary work' to include (among others)

computer programmes, tables and compilations including
computer databases. 
• Section 2(y)defines `work' as meaning any of the following
works namely: (i) a literary, dramatic, musical or artistic
work,(ii) a cinematographic film, (iii) sound recording.
Under section 14, literary work is one of the items wherein
exclusive rights can be claimed so as to amount to copyright.
• Under Section 17(c)if a work is made in the course of other's
employment under a contract of service or apprenticeship it is
the employer who is the first owner of the copyright therein in
the absence of any agreement to the contrary.
Copinger & Skone James on Copyright ( 1991 Edn.) on
Literary Work

• Law in the context of compilation and state that

"compilations" are included in `literary work'.
They further state : "TRADE catalogues are
generally compilations, and as such are capable
of protection as literary works. On similar
principles, a computer database, stored on tape,
disk or by other electronic means, would also
generally be a compilation and capable of
protection as a literary work"
David Bainbridge has in Software Copyright Law (at p.48) dealt
with computer database in the following terms:

• "A computer database is a collection of information stored on computer

media. The information may be a list of clients and their addresses or it
may be the full text of various documents or it may be a set of co-
ordinates relating to a three-dimensional building structure. The range
of things which may be included in a computer database is enormous.
The information contained in the database may, itself, be confidential
and protected by the law of breach of confidence but what of the
copyright position?
• The simplest way of looking at a computer database is to consider the
work it represents, for example, a printed listing of names and
addresses, a printed set of documents or a drawing of a building. Those
works are protected by copyright as literary or artistic works. It does
not matter if the work is never produced on paper and only ever exists
on computer storage media.
For Example:

• Xyz Supplies Ltd has a computer database containing names,

addresses, telephone and fax numbers of customers. This database has
been developed over a couple of years and it is usual for a new
customer's details to be entered directly into the computer by XYZ's
telesales' staff without a written record being made. The customer
database is protected by copyright as an original literary work
(assuming a modicum of skill and judgment is involved in compiling the
database, for example, if the telesales staff have to exercise judgment in
deciding whether to accept a new customer). Being a compilation, it is a
literary work. By storing the information in a database, it has been
recorded in `writing or otherwise' as required by the Act ( `Writing 'is
defined widely and includes any form of notation or code regardless of
the method or medium of storage). Even if the database is never printed
out on paper, it will be protected by copyright."
McComas, Davison and Gonski in The Protection Of Trade SECRETS-A
in General Guide (1981 Ed).

• The authors have stated that it is not possible to

provide an exhaustive list of all that a court may
regard as confidential or a trade secret.
However, some examples of what has been held
to constitute the subject matter of an action to
protect confidential information or a trade secret
include ( amongst others) customers lists and
information concerning the proposed contents of
a mail order catalogue.
Paul Goldstein states
• "TRADE secret law protects a wide array of business
data : ...... Customer lists and other compilations of business
data may be copyrightable as fact works. In theory,
copyright and trade secret law protect different elements of
compiled business data, with copyright protecting the
expression in these compilations and trade secret law
protecting the underlying data. In fact, copyright and trade
secret protection for compilations of business data
frequently converge. Copyright protection for business
directories often extends to the underlying data, and trade
secret protection may extend to particular expressive
arrangements of data."
Defendants Contention

• The defendant has denied all the material plaint

averments.
• It is submitted that the said database is neither
developed by the plaintiff nor does he have any
copyright therein.
• It is also submitted by the defendant that he has
developed his own database and utilisation
thereof does not amount to any infringement of
the copyright of the plaintiff.
Cases relied by learned Judge

• In Waterlow Directors Ltd vs Reed Information Service

Ltd, 1992 Fsr ( Fleet Street Report) 409, the names and
addresses appearing in the plaintiff's directory but not in the
defendant's directory were copied on to a word processor which
was used to produce letters inviting the prospective clients to
appear in the new editions of the defendant's directory. It was
held: " It was clear that a person could not copy entries from a
directory and use such copies to compile his own directory. Even
if it was correct that a person could use the information in a
directory to compile another directory provided that reproduction
did not take place, that was not the case before the court. The
defendant had reproduced the names and addresses from the
plaintiff's directory onto a word processor and a computer."
William Hill (Football) Ltd vs Ladbroke (Football) Ltd,
1980 Rpc 539

• It was a case of compilation of certain lists by the plaintiff which

were copied down by the defendant. It was held : " In my
judgment the selection of those 16 lists and the writing of them
down in the coupon, with headings and notes, it a compilation
which is the subject of copyright.
• Test it by an illustration I gave in the course of the argument.
Suppose a bookseller let us call him William Hill, who is himself
an expert critic, reads 500 books and selects 16 of them as the
best of the year. He makes a list of them and prints it on a
circular which he heads "William Hill's selection of the 16 best
books of the year" and sends it round to his customers. Is he not
entitled to copyright in his circular ? I should have thought he
clearly was. "
Govindan vs Gopalakrishna

• It was held that though in the case of "compilation" the

amount of originality will be very small but even that
small amount is protected by law and no man is
entitled to steal or appropriate for himself the result of
another's brain, skill or labour even in such works.
• On the defense plea of common source it was held : " A
person relying on it must show that he went to the
common source from which he borrowed, employing
his skill, labour and brains and that he did not merely
do the work of the copyist, by copying away from
another work."
Sham Lal Paharia vs Gaya Prasad Air 1971
Allahabad 182, it was held :
• "A compilation derived from a common source falls within ambit of literary
work." "A work of compilation of a nature similar to that of another will
not by itself constitute an infringement of the copyright of another person's
work written on the same pattern. The question whether an impugned
work is colourable imitation of another person's work is always a question
of fact. The determining factor is to see whether the impugned work is a
slavish imitation and a copy of another person's work or it bears the
impress of the author's own labours and exertions." " It is true that from the
mere fact that the defendant had the plaintiff's book with him will not by
itself lead to an irresistible inference that he had copied the calculations
from plaintiff's work. But from the fact that the mistakes committed by the
plaintiff in certain calculations in his book are found in the defendant's
book in similar calculations it must be held that the defendant had copied
the calculations from plaintiff's book and must be deemed to have infringed
the copyright of the plaintiff with regard to such calculations."
Judgment

• From the above statement of the authorities and the trend

of judicial opinion it is clear that a compilation of
addresses developed by any one by devoting time, money
labour and skill though the sources may be commonly
situated amounts to a `literary work' wherein the author
has a copyright. For the foregoing reasons the application
filed by the plaintiff is allowed. The defendant shall
remain restrained during pendency of the suit from
carrying on any business including mail order business by
utilising the list of clientele/customers included in the
database exclusively owned by the plaintiff.
Summary of Principles propounded in the Judgment:

• (1)A compilation which may be derived from a common source

falls within the ambit of literary work.
• (2)A work of compilation of a nature similar to that of another will
not by itself constitute an infringement of the copyright of another
person's work written on the same pattern.
• (3)The question whether an impugned work is a colourable
imitation of another persons' work is always a question of fact and
has to be determined from the circumstances in each case.
• (4)The determining factor in finding whether another person's
copyright has been infringed is to see whether the impugned work
is a slavish imitation and copy of another person's work or it bears
the impress of the author's own labours and exertions. The
aforesaid principles are by no means exhaustive.
15. Warner Bros. Entertainment Inc. v.
RDR Books - 575 F. Supp. 2d 513
• J.K. Rowling is the author of the Harry Potter series of books. The
popularity of the book series extends around the globe.
• As a result of the success of the book series, Warner Brothers
Entertainment, Inc. obtained the exclusive rights from Rowling to
create the entire film series. Each of the movies is covered by
copyright registration. Warner Brothers have licensed certain
rights, such as a license to Electronic Arts to create a video.
• Rowling also wrote a short series of a fictional newspaper “The
Daily Prophet” that was distributed in the UK. Additionally,
Rowling wrote two companion books to the series and registered
their copyrights.
• Rowling also stated an intention to create an encyclopedia for the
series.
Facts
• This encyclopedia would alphabetically list the people, places
and things found throughout the series.
• Rowling has started to compile her works in order to work
on her encyclopedia.
• Steven Vander Ark owns a website called the Harry Potter
Lexicon. That website was an online encyclopedia that
contained characters, facts, etc. from the book. Based off the
website and some outside sources, Vander Ark sought to
create a written encyclopedia.
• RDR Books approached Vander Ark to publish the book.
RDR planned to create the book, but Warner Bros. and
Rowling instituted suit.
Holding

• Court held that the Harry Potter Lexicon violated Warner Brothers’ and Rowling’s
copyright protections and that the use was not a fair use.
• The court reasoned that an injunction both benefited and harmed the public
interest. The court explained that "to serve the public interest, copyright law must
'prevent the "misappropriation of the skills, creative energies, and resources
which are invested in the protected work." Ultimately, the court decided that a
permanent injunction must be issued because "The Lexicon" uses too much of
Rowling's creative work to serve as a reference guide, and permitting publication
of works like Vander Ark's would "deplete the incentive for original authors to
create new works." Regarding statutory damages, the court awarded Plaintiffs the
minimum award under the statute for each work where infringement was
established, reasoning that since "The Lexicon" had not been released, Plaintiffs
did not suffer any harm beyond copyright infringement.' The court held that
Plaintiffs are entitled to a total of $6,750.00, which equals $750.00 in statutory
damages for all seven of Rowling's books and for her two companion books.
In order for plaintiffs to make their case,
they had to show that
• (1) they had to show ownership of valid copyright and (2) copying of the constituent
elements of the works that are original.
• First the court looked to whether the plaintiffs had valid copyrights claims to the
materials that were allegedly infringed. The court determined that the plaintiffs did
have a valid claim to them, including the “Daily Prophet” series and the video games
and playing cards.

• Secondly, the court looked to whether there was copying of the original and determine
if they were substantially similar.
• That determination had a quantitative (how much was copied) and qualitative (were the
copied parts protectable) analysis.
• The court found that significant portions of the original were copied. In fact, the
defendant admitted that he had created his work by using the original works to compile
his information.
• As for the qualitative analysis, the court determined that the encyclopedia copied
“fictional facts” that were created by Rowling.
Plaintiffs also argued that
• defendant violated the right to control derivative works.
• The court rejected this argument because the
encyclopedia did take facts from the novels but merely
put them to another use – to give readers an
understanding of what is going on in the fictional world.
• It no longer takes on the same characteristics as the
original works.

• Finally, defendant asserted fair use as a defense against

copyright infringement.
The court looked to the four factors laid out in
§107 of the Copyright Act:
(1) the purpose and character of the use, including
whether such use is of a commercial nature or is
for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used
in relation to the copyrighted work as a whole, and
(4) the effect of the use upon the potential market
for or value of the copyrighted work.
The court first looked at the relationship between the
first and third factors.
• The court found that the encyclopedia was transformative in its
purpose for some areas, where they added incite and other things
not included in the original, but that the use was not consistently
transformative, where there was simple descriptions taken from
the books.
• The court then looked to the amount of copying and determined
that the amount copied far surpassed that needed for the purpose
of the encyclopedia.
• Viewed together, the first and third factors weighed against
finding fair use.
• The second factor also weighed against finding fair use because
the original works were so creative and fanciful that they deserved
greater protection.
Judgment
• The market harm factor also weighed against the
defendant because it took away a possible market that
the plaintiff wanted to exploit.
• As a result of balancing, the court found that there
was no fair use.
• This will have a major impact on the analysis that will
go on when a party is attempting to create a derivative
work similar to an encyclopedia.
• It will guide the party on what kinds of things need to
be done in order to present a solid fair use defense.
16. Entertainment Network (India) Ltd vs. Super Cassette Industries Ltd &
Ors. -  AIR 2004 Delhi 326, 112 (2004) DLT 549 S.B. Sinha, Lokeshwar
Singh Panta

• First respondent is one of the leading music companies engaged in

the production and/or acquisition of rights in sound recordings. It
has copyright over a series of cassettes and CDs commonly known
as T- series. It has copyrights in cinematographic films and sound
recordings. Appellant M/s. Entertainment Network (India) Ltd.
(ENIL) broadcasts under the brand name "Radio Mirchi". It is a
leading FM radio broadcaster.
• Disputes and differences arose between Bennett Coleman & Co.
Ltd., the holding company of the first respondent and
Phonographic Performance Ltd. (PPL) as regards the playing of the
songs of which copyrights belongs to the first respondent in their
FM radio network. Appellant is a company which holds licence for
running FM radio stations in various cities across India.
Facts
• Free-to-Air private FM Radio Broadcasting is a
recent phenomenon in India and the basic
content of any radio station, presently, is only
sound recordings, i.e., songs.
• Disputes and differences having arisen between
the parties in regard to broadcast of the songs in
respect whereof the first respondent holds a
copyright as owner thereof or by reason of
purchase of the copyright belonging to others.
Issues
(i) Whether the Copyright Board has jurisdiction under Section 31
 (1)(b) of the Copyright Act, 1957 to direct the owner of a copyright
in any Indian work or a registered copyright society to issue
compulsory licences to broadcast such as works, where such work
is available to the public through radio broadcast?
(ii) Whether in any event such a compulsory license can be issued to
more than one complainant in the light of Section 31(2)?
(iii) What would be the relevant considerations which the Copyright
Board must keep in view while deciding on;
(a) Whether to issue a compulsory license to a particular person; and
(b) The terms on which the compulsory license may be issued,
including the compensation?
Cases Relied

• In Gramophone Company of India Ltd. v. D.B.

Pandey [(1984) 2 SCC 534 at 549, this Court
held:
• "An artistic, literary or musical work is the brain-
child of an author, the fruit of his labour and, so,
considered to be his property. So highly is it
prized by all civilized nations that it is thought
worthy of protection by national laws and
international conventions relating to copyright."
COPYRIGHT SOCIETY

▫ The provisions with respect to Copyright Societies are

contained in Chapter VII of the Act which in its present form
was introduced by the Copyright (Amendment) Act , 1994. 
Section 33 of the Act provides for the registration of a
Copyright Society. Section 34 of the Act empowers a Copyright
Society to accept from the owner exclusive authorization to
administer any rights in any work by issue of licenses or
collection of license fee or both.
▫ A Copyright Society may issue voluntary licenses under 
Section 30, collect fees in pursuance of such licenses, distribute
such fees amongst owners of rights, and perform any other
functions consistent with the collective control of the owners
whose rights it administers.
• The Copyright Society is required to frame a scheme to determine the
quantum of remuneration payable to individual copyright owners having
regard to the number of copies of the work in circulation. [Section 34A(2)]
Chapter V of the Copyright Rules, 1958 makes detailed provisions with
respect to the conduct of business by Copyright Societies.
• Rule 14J requires that a Copyright Society shall frame a scheme of tariff to be
called a "Tariff Scheme" setting out the nature and quantum of fees or
royalties which it proposes to collect in respect of such copyright or other
rights administered by it. Rule 14K requires a Copyright Society to frame a
"Distribution Scheme" setting out the procedure for collection and
distribution of royalty specified in the Tariff Scheme among the owners of
copyright.
• Any distribution under the Distribution Scheme is required to be in the
proportion to the income of the Copyright Society from actual use of the work
or works of each owner of rights." COMPULSORY LICENCE
The scheme of the Act affirms the
• freedom to contract as being the primary machinery by which the copyright owner
publishes his work through a voluntary license regime in terms of Section 30.
• Compulsory licenses are an exception to the general freedom of the copyright
owner to contract.
• Section 31 deals with compulsory license in works withheld from the public and the
submissions relating to this provisions are set out in detail in the next section of
this outline of submissions.
• Section 31A empowers the Copyright Board to issue a compulsory license in respect
of an unpublished Indian work or a translation thereof in any language, whose
author is dead or unknown or cannot be traced or the owner of copyright in such
work cannot be found.
•  Section 31A(4) empowers the Board to hold an enquiry and direct the Registrar of
Copyrights to grant to the applicant a license to publish the work or translation,
subject to the payment of such royalty and subject to such other terms and
conditions as the Copyright Board may determine.
Scheme of the Act
• Section 32 empowers the Copyright Board to issue a
compulsory license to produce and publish a translation of
literary or a dramatic work in any language after a period of 7
years from the first publication of the work.
• Section 32A empowers the Copyright Board to grant a
compulsory license where after the expiry of the relevant
period from the date of the first publication of an edition of a
literary, scientific or artistic work, copies of such edition are
not made available in India.
• Section 32B provides for the termination of a compulsory
license where it is issued under Section 32(1A) or Section 32A,
on the fulfillment of the conditions mentioned in that Section.
Scheme of the Act
• Rule 9 of the Copyright Rules prescribed the manner in which the
Copyright Board shall determine royalties payable to the owner
with respect to a compulsory license for a translation under 
Section 32. Rule 11D provides for the manner in which the
Copyright Board shall determine royalties payable to the owner of
the copyright in respect of compulsory licenses issued under 
Section 31A, Section 32 and Section 32A.
• Rule 11C (4) provides that where there are more applicants than
one seeking a compulsory license for translation of a work or for
reproduction of the work or for publication of an unpublished
work, then the Copyright Board make grant the compulsory
license to such one of the applicants, as in the opinion of the
Board, would best serve the interest of the general public.
Scheme of the Act
• Chapter VI relate to grant of licence, which can be divided into
two parts; licences by owners of copyright and compulsory
licenses. Compulsory licences can be granted by the Copyright
Board subject to the limitations contained therein. It cannot be
said to be an exception to the general rule in the strict sense of
the term as the provisions relating to grant of license by owners
of Copyright and compulsory licenses operate in different fields.
It may be true that while passing an order for grant of
compulsory licenses, the relevant factors as laid down therein
must be kept in mind which would include the right of the owner
of the copyright as a part of the right of property, but where a
statute is to be construed as a balancing statute, the situation
may be different.
CONSTRUCTION OF SECTION 31 OF THE ACT

The broad requirements of Section 31 are as under:

"(a) The subject work must be an Indian work whose term of copyright is
subsisting;
(b) The Indian work must be one that has been published or performed in
public;
(c) The owner of the copyright in the work must have
(i) refused to republish or allow republication of the work or have refused to
allow the performance of the work and by reason of such refusal the work
is withheld from the public; or
(ii) refused to allow communication to the public by broadcast, of such
work or in the case of a sound recording the work recorded in such sound
recording, on terms which the complainant considers reasonable; and
(d) The Copyright Board is satisfied that the grounds for refusal are not
reasonable."
PUBLIC INTEREST - PUBLIC POLICY

• [See Gherulal Parakh v. Mahadeodas Maiya and Ors. [1959

Supp (2) SCR 406]. This case was referred to in the recent
decision of this court in Devinder Singh and Ors. Vs. State of
Punjab and Ors. [AIR 2008 SC 261] The right to property,
therefore, is not dealt with its subject to restrict when a right
to property creates a monopoly to which public must have
access. withholding the same from public may amount to
unfair trade practice. In our constitutional Scheme of statute
monopoly is not encouraged. Knowledge must be allowed to
be disseminated. An artistic work if made public should be
made available subject of course to reasonable terms and
grant of reasonable compensation to the public at large.
ROYALTY AND COMPENSATION

• Are the terms "royalty" and "compensation" are not synonymous?

"Royalty" means the remuneration paid to an author in respect of
the exploitation of a work, usually referring to payment on a
continuing basis (e.g. 10 per cent of the sale price) rather than a
payment consisting of a lump sum in consideration of acquisition of
rights. May also be applied to payment to performers. (See `World
Copyright Law' (2nd Edn) by J.A.L. Sterling).
• The word `compensation', however, must have been used keeping in
view the fact that if it is a statutory grant; it is a case of statutory
licence. We are not unmindful of the fact in cases of other statutory
licenses, the word `royalty' has been used. Even the word `usually' has
been used. Mr. Divan himself has referred to Rule 11A and Form IIA
appended to the Rules of 1958. Clauses (10) and (11) of the Form which
have validly been made used the word `royalty.
NTERPRETATION OF SECTION 31(2)

• This takes us to the interpretation of Section 31(2). It is

attracted in a case where there are more than one applicants.
The question of considering the respective claim of the
parties would arise if they tread the same ground. The same,
however, would not mean that only one person is entitled to
have a licence for all time to come or for an indefinite term
even in perpetuity. A licence may be granted for a limited
period; if that be so another person can make such an
applicatioin. Sub-section (2) of Section 31 would lead to an
anomalous position if it is read literally. It would defeat the
purport and object of the Act. It has, therefore, to be read
down. purposive construction therefor may be resorted to.
In New India Assurance Company Ltd. v. Nusli Neville Wadia and Anr.
[2007 (14) SCALE 556, (2008) 3 SCC 279], this court opined:

• "With a view to read the provisions of the Act in a proper and

effective manner, we are of the opinion that literal
interpretation, if given, may give rise to an anomaly or
absurdity which must be avoided. So as to enable a superior
court to interpret a statute in a reasonable manner, the court
must place itself in the chair of a reasonable legislator/
author. So done, the rules of purposive construction have to
be resorted to which would require the construction of the Act
in such a manner so as to see that the object of the Act
fulfilled; which in turn would lead the beneficiary under the
statutory scheme to fulfill its constitutional obligations as
held by the court inter alia in Ashoka Marketing Ltd. (supra)."
Purposive Construction in Barak's words:

• "Hart and Sachs also appear to treat 'purpose' as a subjective

concept. I say 'appear' because, although Hart and Sachs claim
that the interpreter should imagine himself or herself in the
legislator's shoes, they introduce two elements of objectivity:
First, the interpreter should assume that the legislature is
composed of reasonable people seeking to achieve reasonable
goals in a reasonable manner; and second, the interpreter should
accept the non-rebuttable presumption that members Page 0184
of the legislative body sought to fulfill their constitutional duties
in good faith. This formulation allows the interpreter to inquire
not into the subjective intent of the author, but rather the intent
the author would have had, had he or she acted reasonably."
Mr. Divan relied on 
Indian Administrative Services (SCS) Association, U.P. & ORS. v. Union of India
& ORS
. [1993 Supp. (1) SCC 730] wherein it has been held that:
• Thus it is settled law that where the intention of statutory amendment is clear and expressive,
words cannot be interpolated. In the first place they are not, in the case, needed. If they should
be added, the statute would more than likely fail to carry out the legislative intent. The words
are the skin of the language which the legislature intended to convey. Where the meaning of
the statute is clear and sensible, either with or without omitting the words or adding one,
interpolation is improper, since the primary purpose of the legislative intent is what the statute
says to be so. If the language is plain, clear and explicit, it must be given effect and the question
of interpretation does not arise. If found ambiguous or unintended, the court can at best iron
out the creases. Any wrong order or defective legislation cannot be righted merely because it is
wrong. At best the court can quash it, if it violates the fundamental rights or is ultra vires of the
power or manifestly illegal vitiated by fundamental laws or gross miscarriage of justice. It
could thus be held that the legislature intended that the First Amendment Rules would operate
prospectively from February 3, 1989, the date of their publication in the Gazette of India. Its
policy is explicit and unambiguous. Rule 3(3)(ii) intended to remedy the imbalances while at
the same time the proviso intended to operate prospectively to avert injustice to the officers
recruited/promoted earlier than the officer promoted later to that date. The proviso carved out
an exception to ward off injustice to the officers that became members of I.A.S. earlier to those
dates."
In this case, however, the meaning of the
Statute
• is neither clear nor sensible. It is a statute where a purposive
construction is warranted. It is a case where sub-Section (2)
should be kept confined to clause (a) for that purpose.
• The statute has to be read down. It is not a case of improper
interpolation so as to take away a primary purpose of the
legislative intent.
• It is expedient to give effect to the intent of the statute. This itself
says that creases can be ironed out.
• While undertaking the said exercise, the court's endeavour would
be to give a meaning to the provisions and not render it otiose. We
are, therefore, of the opinion that Section 31(2) refers to case
falling under clause (a) of Sub-section (1) ofSection 31 and not
clause (b) thereof.
CONCLUSION

• As it was a case of abuse, the Board had the jurisdiction to entertain any
application for grant of compulsory licence.
• How far and to what extent appellant has infringed the right of the respondent is
a matter which may be taken into consideration by the Board. A suit was filed and
injunction was granted.
• Apart from the fact that the appellant offered to take a license held negotiations
with the respondents in the suit as soon as it came to know that Super Cassettes is
not a member of PPL, it gave an undertaking. Each case must be considered on its
own facts.
• However, we do not approve the manner in which the Board has dealt with the
matter. It has refused to examine the witnesses. It took up the matter on a day for
hearing which was fixed for production of witnesses. We, therefore, are of the
opinion that the order of the Board should be set aside and the matter be remitted
to the Board again for the consideration of the matter afresh on merit. These
appeals are allowed with the aforementioned directions. In the facts and
circumstances of the case, the parties shall pay and bear their own costs.
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