Category Archives: Intellectual Property Law

Infringement Proceedings – Place for Institution of

On a due and anxious consideration of the provisions contained in Section 20 of the CPC, Section 62 of the Copyright Act and Section 134 of the Trade Marks Act and the object with which the latter provisions have been enacted, it is clear that if a cause of action has arisen wholly or in part, where the plaintiff is residing or having its principal office/carries on business or personally works for gain, the suit can be filed at such place/places. Plaintiff(s) can also institute a suit at a place where he is residing, carrying on business or personally works for gain de hors the fact that the cause of action has not arisen at a place where he/they are residing or anyone of them is residing, carries on business or personally works for gain. However, this right to institute suit at such a place has to read subject to certain restrictions, such as in case plaintiff is residing or carrying on business at a particular place/having its head office and at such place cause of action has also arisen wholly or in part, plaintiff cannot ignore such a place under the guise that he is carrying on business at other far flung places also. The very intendment of the insertion of provision in the Copyright Act and Trade Marks Act is the convenience of the plaintiff. The rule of convenience of the parties has been given a statutory expression in Section 20 of the CPC as well. The interpretation of provisions has to be such which prevents the mischief of causing inconevience to parties.
The intendment of the aforesaid provisions inserted in the Copyright Act and the Trade Marks Act is to provide a forum to the plaintiff where he is residing, carrying on business or personally works for gain. The object is to ensure that the plaintiff is not deterred from instituting infringement proceedings “because the court in which proceedings are to be instituted is at a considerable distance from the place of their ordinary residence. The impediment created to the plaintiff by Section 20 CPC of going to a place where it was not having ordinary residence or principal place of business was sought to be removed by virtue of the aforesaid provisions of the Copyright Act and the Trade Marks Act. Where the Corporation is having ordinary residence/principal place of business and cause of action has also arisen at that place, it has to institute a suit at the said place and not at other places. The provisions of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act never intended to operate in the field where the plaintiff is having its principal place of business at a particular place and the cause of action has also arisen at that place so as to enable it to file a suit at a distant place where its subordinate office is situated though at such place no cause of action has arisen. Such interpretation would cause great harm and would be juxtaposed to the very legislative intendment of the provisions so enacted.
Section 62 of the Copyright Act and Section 134 of the Trade Marks Act have to be interpreted in the purposive manner. No doubt about it that a suit can be filed by the plaintiff at a place where he is residing or carrying on business or personally works for gain. He need not travel to file a suit to a place where defendant is residing or cause of action wholly or in part arises. However if the plaintiff is residing or carrying on business etc. at a place where cause of action, wholly or in part, has also arisen, he has to file a suit at that place. Indian Performing Rights Society Ltd. v. Sanjay Dalia, 2015 (4) AWC 4035.

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Term ‘Originality’ with reference to Copyright Law

In Newspaper Licensing Agency Ltd v Meltwater Holding BV (CA), [2012] Bus LR 53, it was held as under:

As Peterson J said in University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601, 608–609 (approved by the House of Lords in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, 277–278, 285 and 291):

“The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of ‘literary work’, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in original or novel form, but that the work must not be copied from another work—that it should originate from the author.”

Originality involves the application of skill or labour in the creation of the work, Interlego AG v Tyco Industries Inc [1989] AC 217, 259–263. The skill or labour need not be directed to the creation of particular modes of expression; it can be deployed in the selection or choice of what should be included in the work. Thus copyright protection is available to verbatim reports of interviews and public speeches: see Walter v Lane [1900] AC 539 and Express Newspapers plc v News (UK) Ltd [1990] 1 WLR 1320.

In a Leading Judgment of the Supreme Court of India-Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1, while discussing the issue of originality in relation to the Copyright Act, 1957, it was held as under:

The word “original” does not mean that the work must be the expression of original or inventive thought. The Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and in the case of literary work, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work—that it should originate from the author; and as regards compilation, originality is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation. The words “literary work” cover work which is expressed in print or writing irrespective of the question whether the quality or style is high. The commonplace matter put together or arranged without the exercise of more than negligible work, labour and skill in making the selection will not be entitled to copyright. The word “original” does not demand original or inventive thought, but only that the work should not be copied but should originate from the author.

The Supreme Court of Canada in CCH Canadian Ltd. v. Law Society of Upper Canada, (2004) 1 SCR 339 has noticed the competing views on the meaning of “original” in copyright law wherein some courts have held that a work which has originated from an author and is more than a mere copy of a work, is sufficient to give copyright. This approach is held to be consistent with the “sweat of the brow” or “industriousness” standard of originality on the premise that an author deserves to have his or her efforts in producing a work rewarded. Whereas the other courts have held that a work must be creative to be original and thus protected by the Copyright Act, which approach is consistent with a natural rights theory of property law; however, it is less absolute in that only those works that are the product of creativity will be rewarded with copyright protection and it was suggested in those decisions that the creativity approach to originality helps ensure that copyright protection is extended to the expression of ideas as opposed to the underlying ideas or facts. The Court has also noticed that those cases which had adopted the “sweat of the brow” approach to originality should not be interpreted as concluding that labour, in and of itself, would be a ground for finding of originality.

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Filed under Copyright Law, Intellectual Property Law