This article is written by Saurabh Bhalla pursuing a Diploma in Advanced Contract Drafting, Negotiation, and Dispute resolution from Lawsikho. This article has been edited by Ojuswi (Associate, Lawsikho).
This article has been published by Sneha Mahawar.
Table of Contents
Introduction
The first ‘copyright’ was arguably issued to the owner of a rare book by the High King of Ireland, Diarmait mac Cerbaill in the sixth century. It is said that the King instructed the missionary St. Columba to hand over the copy of the book he had secretly made to the owner, St. Finian, famously saying, “ To every cow belongs its calf; to every book its copy”.
Therein lies presumably the earliest account of one of the most important intellectual property rights, namely the copyright. Broadly speaking, a copyright is a bundle of exclusive rights that exist in relation to cultural creations, extending to literature, photographs, drawings, films, music, plays, computer programs, databases, etc. Such creations are an original expression of an author and are usually granted protection without even the need for registration under the relevant law. The purpose of any copyright law is not only to grant exclusive rights to creators but to also encourage the use of creative work in lawful ways.
What does a copyright protect
While ‘expression’ is granted protection, copyright does not protect ideas or facts. Also, the protection offered by copyright neither extends to ‘inventions’, which are protected by patents; nor do copyrights protect ‘brands’, which are the subject matter of trademarks.
A copyright owner can approach a court of law, if his exclusive rights, like that of public reproduction, adaptation, public performance, public distribution, public display, etc. are infringed. However, under The Copyright Act, of 1957 there has been some confusion regarding the jurisdiction of Indian courts on the place of suing. There have been several contradictory arguments related to the long-arm jurisdiction provided by The Copyright Act, 1957 in cases of infringement of copyright.
To appreciate the position of various Indian courts on the matter, it is pertinent first to understand what jurisdiction and long-arm jurisdiction mean in this context.
‘Long-Arm jurisdiction
“Jurisdiction refers to the extent of the power of a court to entertain suits and applications. When we say that a particular court has ‘jurisdiction’ over a matter, it means that the said court has the power, authority and competency to adjudicate the matter presented before it. In other words, such a court enjoys the power and authority to inquire into facts, apply the law, pronounce a judgment and carry it into execution.
Of the three kinds of the jurisdiction of a court – pecuniary, territorial and subject matter – w.r.t. the issue of ‘long arm’ jurisdiction in relation to the Copyright Act in India, we will concern ourselves mainly with the territorial jurisdiction of different Indian courts.
It is pertinent to understand that while jurisdiction is an aspect of state sovereignty; it is not necessarily coextensive with it. A long-arm statute may allow the courts to exercise jurisdiction over non-resident entities, which are outside of the state or national boundary. It was the U.S. Supreme Court, which developed the jurisprudence related to ‘Long-Arm Jurisdiction’ in the International Shoe v. Washington case.
In the context of India, The Copyright Act, 1957 includes a non-obstante clause, which, it has been argued, provides long-arm jurisdiction to the Indian courts.
Statutory provisions and court decisions on ‘Long-Arm’ jurisdiction under the Copyright Act, 1957
Section 62 of The Copyright Act, 1957 which deals with the jurisdiction of courts over copyright matters states that a suit or civil proceeding that arises w.r.t. infringement of copyright shall be instituted in the district court having jurisdiction. However, it further provides for the expression, “notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908)” in Clause 2 of the same section, while specifying that such district courts include one where the person instituting a suit resides or where he/she carries on business or works for gain.
This non-obstante clause (“notwithstanding anything contained in the Code of Civil Procedure, 1908 (CPC)) becomes relevant in reference to Section 20 of the CPC, in the case of copyrights. This is because S. 20 of the CPC specifies that a civil suit shall be instituted in either a court where the defendant resides or carries on business or works for gain; or where the cause of action wholly or partially arose. Also, if a non-resident defendant objects to the place of suing, then such a suit cannot proceed without the leave of the Court.
The question of jurisdiction of courts in copyright infringement matters, taking into account the non-obstante clause in Section 62(2) of The Copyright Act, 1957 and laying particular emphasis on the word “include” in the said clause has come up before different courts in India from time-to-time.
In Caterpillar Inc. v. Kailash Nichani, the Court held that Section 62 of the Copyright Act was a significant departure from the norm that it is the convenience of the defendant that primarily governs the choice of jurisdiction. Although the legislature intended to include a non-obvious clause, the court held that the clause was introduced for a specific purpose in the said section; the purpose was to ensure that it was the transgressor or pirate who suffered inconvenience rather than the sufferer who had to chase him.
Similarly, in Glaxo Operations, U.K. v. Samrat Pharmaceuticals it was held that the plaintiff can institute a suit for the infringement of his copyright at a place where he is residing, carrying on business or working for gain. This means that if the plaintiff has an office at a particular place, he can institute a suit at that place.
In Exphar SA & Anr v. Eupharma Laboratories Ltd & Anr, the Court laid particular emphasis on the word “include” in Section 62(2) of The Copyright Act, 1957. While laying such emphasis, the Court compared the jurisdiction of Indian courts under the Copyright Act, 1957 vis. a vis. the Code of Civil Procedure, 1908. The court concluded that Section 62 of the Copyright Act, 1957 provided for a wider territorial jurisdiction as compared to that provided under S. 20 of the CPC.
The Court clarified that subsection (2) of Section 62 in the Copyright Act, 1957 does not restrict the rights of copyright owners to institute suits for infringement but rather removes the impediments to them exercising their rights. It held that the said subsection prescribes an additional ground, expanding the territorial jurisdiction of the courts in copyright cases, over and above the ones specified under S. 20 of the CPC.
Does the long-arm jurisdiction in relation to copyrights extend beyond the national boundaries
Despite the non-obstante clause in Section 62 of the Copyright Act 1957, providing for long-arm jurisdiction to Indian Courts in copyright infringement cases, such long-arm jurisdiction should not be understood as extending beyond the national boundaries. While the Copyright Act, 1957 extends to the whole of India, there are no express provisions in the Act that enable the existence of international copyright.
Also, Article 245 of the Constitution of India lays down that the Parliament or State Legislatures may make laws for the whole or any part of the territory of India or the whole or any part of the State, respectively.
In spite of Article 245(2) of the Indian Constitution stating that no law made by the Parliament could be invalidated on this basis if it had an extraterritorial operation, the absence of any express provision for enforcing the right beyond the national boundaries indicates that remedies under the Act apply only to infringements taking place within Indian territory.
The long-arm jurisdiction in relation to The Copyright Act, 1957 was further clarified in the Indian Performing Rights Society Ltd. v. Sanjay Dalia case (IRPS). In this case, the Court used Heydon’s “rule of mischief” while interpreting Section 62 of the Act. It held that four things are to be discerned and considered in this regard:
- Common Law before the making of the Act: Section 20 of the CPC, which provided that a suit was to be instituted only in accordance with the provisions contained therein);
- The Mischief and Defect for which the Common Law provided: There was no provision for an author whose copyright had been infringed to sue where he lived, operated a business or was employed. As a result, he suffered inconvenience or deterrence;
- What remedy the Parliament hath resolved and appointed to cure the disease of the commonwealth?: By expressly providing for a provision to the author or copyright that enabled him to sue at his place of residence/business/occupation, the defect was sought to be removed;
- The True Reason of the Remedy: Plaintiffs should not be forbidden from bringing a suit where they reside, have a head/registered office, conduct business, or work for gain, or where the cause of action arose because the legislature intended that they do not have to drag the defendant to a distant location where they have subordinate offices or branches only to inconvenience them. While providing a remedy to the plaintiff for his convenience, avoidance of counter-mischief to the defendant is also necessary. The lawmakers did not intend for both parties to go to a far-off distant place only because the plaintiff wants to inconvenience the defendant. Thus the express provision is not to be misused to the detriment of the defendant.
Conclusion
It has been argued that the IRPS decision is a paradigm shift on the issue of jurisdiction in Intellectual Property Rights, particularly Copyright and Trademark cases. The decision has somewhat restricted the Long-Arm jurisdiction in Copyright cases and narrowed down the options available to the plaintiffs. It has also clarified that the expression “notwithstanding anything contained in the Code of Criminal Procedure” does not imply that Section 20 of the CPC is inapplicable. It is only that an additional remedy has been provided to the plaintiff for his convenience in copyright infringement cases, but the remedy is not to be constructed and interpreted in a way that it can be misused to the detriment of the defendant.
References
- Stavroula Karapapa & luke McDonagh, Intellectual Property Law, 4, (Oxford University Press, 2019)
- Tanya Aplin & Jeniffer Davis, Intellectual Property Law: Text, Cases and Materials, Fourth Edition, 54 (Oxford University Press, 2022)
- K Kannan, Mulla The Key To Indian Practice, 12th Edition, 7 (LexisNexis, 2019)
- International Shoe v. Washington, United States Supreme Court 326 U.S. 310 (1945)
- Mueller, Twenty-First Century Procedure, Aspen Casebook Series (Wolters Kluwer 2013)
- Deep Chand Arya Industries vs Kiran Soap Works And Ors, ILR 1980 Delhi 1605
- Caterpillar INC. v. Kailash Nichani, CS (OS) No. 467 of 2005
- Glaxo Operations U.K. Ltd. v. Samrat Pharmaceuticals. AIR 1984, Delhi 265
- Exphar Sa & Anr vs Eupharma Laboratories Ltd. & Anr, Appeal (civil) 1189-1190 of 2004
- J Sai Deepak, Saikrishna & Associates, Is the extraterritorial application of the Copyright Act possible? 2016
- Indian Performing Rights Society Ltd. v. Sanjay Dalia, (2015) 10 SCC 161: AIR 2015 SC 3479: 2015 (8) SCR 210
- Abhilasha Nautiyal & Aditya Gupta, Killing Me Softly: The Slow Death of Long-Arm Jurisdiction on Intellectual Property Cases in India
- Mulla, The Code of Civil Procedure, Nineteenth Edition (LexisNexis, 2019)
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