Bombay High Court Says Registration Of Copyright Not Mandatory to Seek Protection Under Copyright Act

Bombay HC Says Registration Of Copyright Not Mandatory to Seek Protection Under Copyright Act

The Bombay High Court (HC) held on 9 March 2021, in the case titled Sanjay Soya Pvt. Ltd. (Plaintiff) v. Narayani Trading Company (Defendant), that registration of copyright is not mandatory under the Copyright Act, 1957 (Act) for seeking an injunction against infringement.

The HC single-judge Justice GS Patel observed that "The Copyright Act gives a range of rights and privileges to the first owner of copyright without requiring prior registration."

Justice Patel emphasized the point that Section 51 of the Act deals with infringement of copyright and it is not just restricted to works that are registered with the Registrar of Copyright under the Act.

The Court further observed that "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 the 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."

A comparison was made between the said provision of the Copyright Act and Section 27 of the Trade Marks Act. It was stated that it creates a bar on the institution of any proceeding regarding infringement of an unregistered trademark.

The High Court held that "Copyright and trademark operate in different spheres, though in some cases as in the present one these may overlap or intersect. An artistic work may receive both trademark registration as a label and copyright protection as an artistic work. One requires registration to sustain a suit for infringement. The other does not."

It added, "At its essence, copyright is a recognition of originality, granting rights of commercialization and exclusivity in that commercialization to the author of a work, a person who, by the sweat of his brow, has brought into being the original expression or realization of an idea. Emphasize is on originality, labour, and skill in expression and realization."

Justice Patel stated, "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 HC took reference of the Apex Court's judgment in the case titled Engineering Analysis Centre of Excellence Pvt Ltd v. Commissioner of Income Tax & Anr., wherein the Court while delineating the rights of an author of a work, of the owner of the copyright, of the concept of copyright, and when and how it can be used, claimed and protected against infringement, it did not return a finding that prior registration is mandatory before such rights and entitlements are claimed.

The HC held that registration of copyright is not a mandatory pre-requisite to seek protection under the Act. Justice Patel dissented with the judgments of the cases Dhiraj Dharamdas Dewani v. Sonal Info Systems Pvt Ltd & Ors., 2012 (3) Mh LJ 88 and Gulfam Exporters & Ors. v. Sayed Hamid & Ors. (unreported), declaring it as per incuriam.

The HC compared the labels of plaintiff and defendant and held, "These variations are too irrelevant to warrant consideration. From a look at these products, it would be possible to tell one from the other. That is indeed the only test when it comes to trademark infringement, passing off, or copyright infringement."

The defendant company argued before the Court that the plaintiff-company is a commercial entity and it could not be considered to be an 'artist' itself and hence cannot acquire the copyright. It was also argued that Section 17 of the Act provides that an author of a work is the first owner of the copyright. Section 2(d), regarding an artistic work, defines an author to mean the artist.

The Court did not agree with the arguments of the defendant and said, "The argument overlooks provisos (a), (b), and (c) in the context of artistic works. This is not a matter to which Narayani Trading can ever attest as a matter of its knowledge, i.e., that the artistic work was not done by a person in the employment of, or engaged by, SK Oil."

It added that "There is no requirement that the person who sketched or drew the artwork must be identified and that, even if employed full-time and charged with doing this work, he would be the holder of copyright and not his employer; clause (c) of the proviso covers exactly this situation."

The defendant attempted to distinguish between the label and the artistic work and urged before the HC that the label mark is a registered trademark and therefore cannot be an artistic work.

Justice Patel disagreed with the aforesaid contentions of the defendant and stated, "This is wholly incorrect. The artistic work is the label, and the label is the artistic work. This is true of almost every type of commercial art and commercial graphic design, from labels on wine bottles to the packaging of soap. The label has registration under the Trade Marks Act. The original artistic work, an integral and inseverable part of the label, receives copyright protection."

The HC decided the matter in favour of the plaintiff and directed Defendant to pay costs of Rs 4,00,230 in favour of the petitioner.