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This article is written by Shyna Narula pursuing Diploma in Business Laws for In-House Counsels from LawSikho.

Introduction

“Copyright is a recognition of originality, granting rights of commercialisation and exclusivity in that commercialisation to the author of a work, a person who, by sweat of his brow, has brought into being the original expression or realisation of an idea. The emphasis is on originality, labour and skill in expression and realisation.” –Justice G.S Patel 

Copyright is an essential part of the process of development in a country. The protection afforded to literary, dramatic, musical, artistic works, cinematograph films, and sound recordings is an integral part of the enrichment of the national cultural heritage. The encouragement of the creators or authors is directly proportional to the level of protection granted to their creativity and work. Therefore, the encouragement of intellectual creation is one of the recognised basic prerequisites of all social, economic, and cultural developments. 

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Copyright refers to a bunch of exclusive rights vested with the owner of the copyright by the virtue of Section 14 of the Copyright Act 1957. These rights can only be exercised by the owner of the copyright or by any other person who is duly licensed by the owner of the copyright in this regard. Copyright basically in a nutshell protects only the work of the person but not the ideas, which is probably the only drawback or missing piece in the copyright law.

“The problem with copyright is it only protects that literal work. It doesn’t protect the design and the ideas. That’s unfortunate.” -Shiva Ayyadurai

The concept of copyright has a great significance in the context of contemporary scientific, economic, social, political, and legal environments not only in India but also in the entire world. Technological innovations for example computers, audio recording, cable television, satellite broadcasting, video recording, reprography, and the internet have posed challenges to copyright laws from time to time and forced the nations to amend their laws.

Copyright law in today’s time not only protects the rights of the copyright owner and neighbouring rights but also deals with the subject of public interests and tries to create a balance between the two rights in this digital/technological environment. Thus, copyright law has come through a long journey from the time when it used to only protect literary and artistic works to now when it has entered into a new world that is full of technological innovation. In this article, we will be discussing whether the registration of a copyright is mandatory or not in light of the latest judgment passed by the Bombay High Court. 

Copyright registration: Mandatory or not

At the very moment when a work is created, copyright protection is commenced. Registration of a copyright is optional and not compulsory. Mere registration doesn’t confer any rights to the owner but rather it’s just a prima facie proof and an entry of the work in the copyright register which is maintained by the registrar of copyright under the Copyright Act 1957.

Acquisition of copyright is affected once a work has been created. It is not compulsory that one shall register before they own a work. However, it is always advisable to get the work registered so that the documents received after registration can be used as evidence in court if any dispute arises based on one’s creation. In addition to this, copyright protects the work from being replicated by anyone.

Advantages of copyright registration

Copyright protection is automatic from the very moment a work is created thus; registration is not necessarily required in order to protect one’s work. However, there are numerous advantages to the registration of the copyright and it is highly recommended, if feasible. These advantages include:

  1. The registration of copyright enables one to file a lawsuit to enforce copyright in court. An application for the registration shall be filed with the registrar in order to sue someone for the infringement of copyright, even if the infringement has already occurred prior.
  2. It holds as evidence that the copyright is valid. This could be important if a copyright infringement case is brought involving the owner’s work. The registration of copyright will satisfy the basic level of proof in the court of law regarding the validity of the copyright’s ownership. However, this does not guarantee the claim of copyright ownership. Having registered will only shift the burden of proof on the other party involved in the case. While it isn’t much of a distinction, the party holding the registration holds a stronger position in the court.
  3. Registration of copyright enables one to claim statutory damages and attorney’s fees. In order to be eligible for the award of statutory damages and attorneys’ fees in a copyright infringement case, the work must be registered before infringement commences, or, if the work is published, under three months of its publication. Statutory damages for infringing use of work usually entitle one to a predetermined amount of damages.
  4. Copyright registration creates a public record. The public is made aware that the owner’s work is protected by copyright and that who is the copyright owner. Registration provides notice to the world of the copyright claim. Among other things, this also helps people who wish to license the work to ascertain the status of the same and find the owner.

Case: Soya Private Limited vs. Narayani Trading Company

Recently in the case of Soya Private Limited vs. Narayani Trading Company, IA(L) 5011/2020 in COMIP(L) 2/2020 (Suit), Justice G S Patel, the single judge bench of Bombay High Court passed a judgment on 9th March 2021 holding that the registration of copyright is not mandatory. This judgement overruled the view given in the case of Dhiraj Dharamdas Dewani vs Sonal Info Systems Pvt Ltd and Others which has been misused in many cases for considering the registration for copyright is mandatory. 

Facts and issues of the case

Sanjay Soya Pvt Ltd (plaintiff) who has been manufacturing and selling edible oils of a great range for many years instituted a legal suit for infringement of trademark and copyright in respect of its label mark against the use of a similar label mark by Narayani Trading Company (defendant) which is a sole proprietorship. Their label marks appear to be similar to each other. 

The plaintiff (owner of the label/artistic work) started using the label before that of the defendant without getting it registered under the Copyright Act, 1957. The defendant on the other hand started using a similar label for his brand with the similar, colour, font, and design which claimed by the plaintiff was infringing their trademark (in label mark) and copyright (in artistic work). The plaintiff was questioned upon the non-registration of copyright and the validity of the assignment between him and the artist (who basically created the label).

Amongst the various issues raised in court, the prime question that was discussed in the court was with regards to the registration of copyright being mandatory to seek relief under the Copyright Act, 1957. This case also shed light on the case of Dhiraj Dharamdas Dewani vs Sonal Info Systems Pvt Ltd, whether the registration of copyright made mandatory is a good and beneficial law.

Findings of the court

Considering the arguments of both, the plaintiff and defendant, the court observed that their labels are substantially similar and could confuse the customers. The contention of the defendant was that the predecessor of the plaintiff being a legal entity could not be the author of the label, the court further observed that the Act does not require identification of the original author of artistic work and it was not appropriate on part of the defendant to challenge the validity of the Assignment Deed since it was a complete stranger to the same. 

Judgment

The court found the defendant’s label to be quite similar and said it was likely to create confusion between the two with respect to the question raised on the trademark. The court also concluded that this was a case of passing off owing to the dishonest adoption and also an attempt in order to encash the plaintiff’s reputation and goodwill.

The claim of copyright infringement was resisted by the defendant through various arguments. Plaintiff’s ownership of the copyright with respect to the label was challenged by arguing that not a commercial entity like that of a company, but the artist could own the copyright under Section 17 of the Copyright Act 1957. The court struck down this argument as the case fell in the ambit of Section 17(c) of the Copyright Act 1957, as the former employee designed the label for the plaintiff. The defendant further tried to argue and prove the label art to be unoriginal and also tried to prove priority in its label use, failing to which, the defendant pleaded that in light of the Dhiraj Dewani precedent, relief for copyright infringement could not be claimed by the plaintiff as the same was not registered. The court observed that in the Dhiraj case, they failed to recognise the prior judgments that proved the contrary. The court mentioned that none of the provisions of the Copyright Act makes it mandatory for the owner to get the registration of the copyright. 

The Dhiraj Dewani case talked about the infringement of taxation software. The plea was made for civil and criminal remedies brought under Sections 63, 63B, and 64 of the Copyright Act 1957. According to these provisions’ conviction is only possible if the infringement is done knowingly. It was noted that penal provisions shall be interpreted strictly.  It was further explained that an infringer cannot be expected to know about copyright existing over any work until and unless it is registered and published in the Official Gazette. Therefore, the court read the optional registration provisions in Section 45 of the Copyright Act 1957 as compulsory. 

In the case of Sanjay Soya, the judicial overstepping was declared per incuriam (meaning ‘through lack of care’). Justice G.S. Patel explained why the legal position taken in the Dhiraj Dewani case is wrong. He also noted that the same was made in order to make registration of copyright mandatory in the Copyright Bill 1955, which was further dropped on the recommendation of the JPC Report, which cautioned it could create an undue restriction in the exercise of one’s rights.

Copyright infringement is defined as presenting or using another’s work as one’s own and thereby illicitly acquiring/availing the rights which are exclusive to the owner. To this Justice G.S. Patel rightly stated that this exclusivity cannot be subject to registration. 

The court also relied upon the relevant clauses within the Berne Convention, 1886 and Trade-Related Aspects of Intellectual Property Rights, 1994 to which India is a signatory which also does not require compulsory copyright registration. The court gave an excellent reasoned analysis on this matter, it was concluded that a case for copyright and trademark infringement, also for passing off in made out.

Comments

The present decision of Sanjay Soya was confined to ascertaining the correct position of law, which as it stands, clearly makes copyright protection automatic. There have been many judgments with different views in regards to the registration of copyright being mandatory or not. But, in my opinion, the present judgment given by Justice G.S Patel has provided much-needed clarity on the issue. The Dhiraj case has been misused in many ways especially in lower courts by the infringers as they did tend to take advantage of the registration being mandatory. However, the decision given in the present case in Bombay High Court will encourage creativity as the creators of copyrightable works will not have to compulsorily undergo the rigorous procedure of copyright registration for the protection of their rights.

Conclusion

Most of the courts in India have rightly held that the registration of copyright is optional and not mandatory, even though there have been a few cases, where certain courts have a different view in this matter and have held that registration of copyright mandatory for the purposes of enforcement. These conflicting judicial precedents bring in an element of ambiguity and uncertainty on this crucial issue. The decision given by Justice G.S Patel has cleared all the uncertainty in this regard. 

In my opinion, even though the registration of a copyright is optional and not mandatory, one should get the registration done in order to save themselves from the court procedures in the future if the question of ownership arises. The creativity of a person holds true importance and shall be protected at all costs. The better the protection provided, the better the innovative and creative mind works.  

References

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