Copyright Registration Is Not Mandatory To Claim Relief Under The Copyright Act
In the case of Sanjay Soya Pvt. Ltd. v. Narayani Trading Company, the Bombay High Court clarified that copyright registration is not a mandatory requirement in order to claim copyright protection. The Court reiterated the principle that a copyright in a work subsists upon creation and thus a work is granted automatic protection, without any need to file for registration.
The Plaintiff claimed trademark infringement of its label mark “SANJAY SOYA” and copyright infringement of the artistic work contained in the label. Upon comparison between the packaging for the product of the Plaintiff with the Defendant’s, the Court concluded that, “So far as copyright infringement is concerned, it is sufficient to note that a very substantial part of Sanjay Soya’s label has been taken up by Narayani Trading and used in its product.”
The Plaintiff had claimed that the label was created by their employee in the course of his employment, exercising skill, judgment and effort. Thus, making the label an original artistic work within the meaning of section 2(c) of the Copyright Act, 1957 (the “Act”). They also argued that they had acquired goodwill and reputation in the mark over the years and that consumers identify the goods exclusively with Sanjay Soya, through its label and artwork. Further, the Plaintiff alleged that the Defendant “has entirely lifted and unauthorisedly and illicitly copied” their registered label mark and the copyright-protected artistic work in the label.
In response, the Defendant argued that the Plaintiff does not have any copyright in its artistic work, thus its claim of copyright infringement is unfounded. The Defendant also argued that since the Plaintiff had registered their trademark, the label was a trademark and cannot be an artistic work. The Court in response to this argument stated that “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 Court also observed the Defendant’s arguments with regards to validity and existence of copyright in the mark. The Defendant cited the case of Dhiraj Dharamdas Dewani v. Sonal Info Systems Pvt. Ltd. and Others where the court had held that registration under the Act is mandatory before a plaintiff can claim relief, civil or criminal. However, the Court in the present case, rejected the decision made in the Dhiraj Dewani case. In fact, the Court stated other precedents in favour of the argument that copyright registration is not mandatory.
The Court cited the case of Burrough Wellcome (India) Ltd v. Uni-Sole Pvt. Ltd and Anr., where the Learned Single Judge had held that there is no provision under the Act that deprives an author of his rights on account of non-registration of copyright. Second, the Court also cited the case of Asian Paints (I) Ltd v. M/s Jaikishan Paints & Allied Products where it was held that, “Registration under the Copyright Act is optional and not compulsory.” Further, the Court also noted the case of International Association of Lions Club v. National Association of Indian Lions & Ors. where the court had held that registration is not necessary, if availed, it establishes prima facie evidence of ownership.
Relying on the above precedents, the Court held the Dhiraj Dewani decision to be rendered per incuriam not good law and explained that, “Dhiraj Dewani, at least implicitly, equates or places on the same pedestal registration under Trade Marks Act with registration under the Copyright Act. This is incorrect. The two are entirely distinct. Registration under the Trade Marks Act confers specific distinct rights unavailable to an unregistered proprietor. Important amongst these is the right to sue for infringement. This is only available to a registered proprietor… There is no such requirement under the Copyright Act at all. In fact the Copyright Act gives a range of rights and privileges to the first owner of copyright without requiring prior registration.”
The Court also laid emphasis on section 51 of the Act, which relates to infringement of copyright and does not restrict itself to works that have been registered with the Registrar. The Court also 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 copyright may apply for registration.”
The Court also referred to the Supreme Court’s decision in the case of Engineering Analysis Centre of Excellence Pvt. Ltd. v. Commissioner of Income Tax & Anr.. where the Apex Court did not find that any prior registration is mandatory before claiming copyright protection. International treaties and obligations to which India is a party were also observed and the Court found that according to the Berne Convention, automatic protection subsists once a work is created. Similarly, as per the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement the principles of national treatment, automatic protection and independence of protection apply to copyrighted works.
Furthermore, the Court also noted that the Plaintiff had made out a prima facie case of passing off in its favour and the Hon’ble Judge stated that upon perusal of both the packages, “which is whose, I cannot tell.” The Court ordered disposal of the interim application in the suit making it absolute in favour of the Plaintiff and imposed costs upon the Defendant, finding their defence to be frivolous and unfounded on legal basis.
