Asia IP

In a recent order dated October 24, 2013, of the Delhi High Court in Super Cassettes Industries Limited v. Malayalam Communications Limited, Justice Jayant Nath granted a temporary injunction against the defendant, a Malayalam-language media and entertainment channel restraining them from infringing the copyright in the works of Super Cassettes. The Court dismissed the plea of the defendant that the plaintiff, being the exclusive licensee, cannot institute infringement proceedings as per Section 61 of the Copyright Act, 1957 (the Act) without the owner being made a party to the proceedings.

 

 

Brief Facts

 

The plaintiff, Super Cassettes, one of the most reputed music companies in the country, is the owner of a large repertoire of copyrighted works, including audio-visual works (cinematographic films), sound recordings and underlying musical and literary works and acquires copyright in the works which it commissions and manages, through assignments from authors or other prior owners of copyright.

 

While vehemently objecting to the right of Super Cassettes to institute proceedings as per Section 61 of the Act, the defendant placed reliance on the judgment of Delhi High Court in Jordon Electronics and Anr. v. Bombino Video (P) Ltd., wherein it was held that since the plaintiff, not being the owner of copyright, failed to take any steps for impleading producers and owners of copyright as parties to suit, they are not entitled to an injunction. The defendant contended that regarding some of the works alleged to be infringed, the plaintiff was only an exclusive licensee and since the owner was not made a party, the suit was bad for non-joinder of parties and could not be instituted as per Section 61 of the Act.

 

The plaintiff submitted that under Section 54(b) of the Act, the expression “owner of copyright” includes an exclusive licensee. Furthermore, the phrase “unless the court otherwise directs” in Section 61 of the Act, mandates that where the suit for copyright infringement has been instituted by an exclusive licensee, the Court may direct the suit to proceed without the owner being made a party and such direction may be sought at any stage of the proceedings.

 

 

Finding

 

In view of the same and the fact that the defendant had not shown any prejudice being caused to the owners of the copyright in the infringed works by the institution of the said suit by Super Cassettes, the Court directed that the suit may proceed without the owners or producers being made parties and consequently, an injunction was granted.

 

 

Conclusion

 

Such interpretation of the Court is a remarkable deviation from the earlier cases on the issue of Section 61 and suggests that the nature of Section 61 of the Copyright Act is discretionary and not mandatory, and that the Court may grant such a direction dispensing with the need to add the owner as a party, at any stage of the proceedings. The said ruling will be beneficial to the various individual owners of copyrights in the works and all rights may be licensed freely with one less hurdle for the exclusive licensee wishing to enforce his rights.

The Registrar held that the applicant’s mark, Kenzo Estate, was not visually similar to a great extent to the opponent’s stylized mark, as the latter contained a stylized depiction whereas the former was in a regular font.

ANAND AND ANAND

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About the Author

Pravin Anand is managing partner of Anand and Anand in Noida, where his practice covers intellectual property, litigation and dispute resolution. He has been a counsel in several landmark IP cases involving the first Anton Piller Order (HMV cases); the first Mareva Injunction Order (Philips case); the first Norwich Pharmacal Order (Hollywood Cigarettes case); moral rights of artists (the Jatin Das case). He has been recognized for pro bono work for grassroots innovators (National Innovation Foundation Award).