Registration Of Copyright Not Mandatory For Seeking Protection Under Copyright Act: Bombay High Court

The Bombay High Court has held that registration of copyright is not mandatory under the Copyright Act, 1957 for seeking an injunction against infringement. "Copyright Act gives a range of rights and privileges to the first owner of copyright without requiring prior registration," observed a Single Bench of Justice GS Patel. The Judge emphasized that Section 51 of the Copyright Act, which speaks of infringement of copyright, does not restrict itself to works that have been registered with the Registrar of Copyright. It observed, "This Section does not, per se, demand prior registration. It does not say so anywhere; and this has to be read with Section 45(1), which says that the owner of copyright may apply for registration. Importantly, copyright infringement lies in the unlicensed use of original works, in which the author has a spectrum of exclusive rights." The provision was also compared to Section 27 of the Trade Marks Act which creates a conspicuous bar on institution of any proceeding in regard to infringement of an unregistered trade mark. The Court held, "Copyright and trade mark operate in different spheres, though in some cases — as in the present one — these may overlap or intersect. An artistic work may receive both trade mark registration as a label and copyright protection as an artistic work. One requires registration to sustain a suit for infringement. The other does not. At its essence, 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 emphasise is on originality, labour and skill in expression and realisation." In holding thus, Justice Patel also declared as per incuriam two Single Bench decisions of the High Bombay Court in Dhiraj Dharamdas Dewani v. Sonal Info Systems Pvt Ltd & Ors., 2012 (3) Mh LJ 888, and Gulfam Exporters & Ors. v. Sayed Hamid & Ors. (unreported). The above two cases had held that registration under the Copyright Act is mandatory before a plaintiff can claim relief, civil or criminal, under the Copyright Act. In his order, Justice Patel observed that the above decisions were passed in ignorance of four binding precedents, all to the contrary. The Bench noted that the decision in Dhiraj Dewani (supra) is entirely per incuriam. "It incorrectly notes that there was no decision of the Bombay High Court directly on this point. There were, in fact, four previous decisions, all to the contrary, each binding on the Dhiraj Dewani court," the order stated. The Bench firstly referred to the decision of Justice (Retd) SH Kapadia in Burroughs Wellcome (India) Ltd v. Uni-Sole Pvt Ltd & Anr., 1997(3) Mh L J 914, where after discussing the essence of copyright, the Single Judge had held that there is no provision under the Act that deprives an author of his rights on account of nonregistration of the copyright. Similarly, in the decision of Justice (Retd) SJ Vazifdar in Asian Paints (I) Ltd v. M/s Jaikishan Paints & Allied Products, 2002(4) Mh L J 536, it was held that Registration under the Copyright Act is optional and not compulsory. The Single Judge had ruled, "Registration is not necessary to claim a copyright. Registration under the Copyright Act merely raises a prima facie presumption in respect of the particulars entered in the Register of Copyright. The presumption is however not conclusive. Copyright subsists as soon as the work is created and given a material form even if it is not registered." The decisions in International Association of Lions Club v. National Association of Indian Lions & Ors., 2006(4) Mh L J 527 and in Anand Patwardhan v. Director-General of Doordarshan & Ors., Suit No. 2259 of 2004, were also to the same effect. Thus holding that registration is not a pre-requisite to seek protection under the Copyright Act, Justice Patel observed, "The doctrine of precedent or stare decisis requires that a court is bound by the decisions of not only a larger bench but also of a bench of the same or coordinate strength. Such previous judgements of a bench of coordinate strength cannot be ignored. They are fully binding. The rationale is that there must be a certainty to the law and different judges in benches of the same strength cannot take antipodal views. The earlier binds the later. If the later decision is one made without noticing, or in ignorance of the earlier binding decision, then the later decision is one that must be held to be rendered per incuriam and as not being good law. This must, inevitably, therefore be the fate of the decision in Dhiraj Dewani." He added, "There is one other decision of another learned Single Judge of this Court in Gulfam Exporters And Ors v Sayed Hamid And Ors under Section 63 of the Copyright Act...

Registration Of Copyright Not Mandatory For Seeking Protection Under Copyright Act: Bombay High Court

Akshita Saxena

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