LI Network
Published on: October 13, 2023 at 18:14 IST
The Karnataka High Court has clarified that a suit filed under Section 60 of the Copyright Act is not maintainable when a copyright holder has already initiated legal action for copyright infringement against the alleged infringer.
Justice V Srishananda clarified that the proviso tois designed to prevent an alleged infringer from filing a suit when the copyright owner has previously filed a suit under Section 55. In this particular case, the timing favored the defendants, as they had filed their suit after the plaintiff had initiated their legal proceedings.
The court stated, “Since a separate suit is filed by the defendants after the plaintiff filed O.S.No.617/2013 on 19.01.2013 in Bengaluru, the plaintiff’s right to take action under Section 60 of the Copyright Act, 1957, would automatically terminate in view of the positive action taken by the defendants in filing CS(OS) No.616/2013 on 02.04.2013 in the High Court of Delhi, where the proviso to Section 60 of the Copyright Act, 1957, comes into play.”
The appeal in question was filed to challenge an order by the trial court that rejected the plaintiff’s suit upon the application of M/s Indian Performing Rights Society Ltd.
The plaintiff had filed the complaint under Section 60 of the Copyright Act in conjunction with Section 26 and Order VII Rule 1 of the CPC, seeking a declaration that the alleged infringement of copyrights, as claimed by the defendants, was unfounded and intended for extortion. They also sought a permanent injunction against further threats from the defendants.
The plaintiff contended that the defendants, who claimed to be a copyright society, had made aggressive demands and threats regarding their copyrights, insisting that various establishments, including the plaintiff’s hotel, obtain licenses for playing pre-recorded music. Under protest, the plaintiff had acquired a license from the defendants to avoid further harassment.
The defendants applied to dismiss the plaintiff’s suit, arguing that a suit they had filed against the plaintiff in the Delhi High Court for copyright infringement rendered the suit in Bengaluru inadmissible.
The Trial Court accepted the defendant’s application and rejected the plaintiff’s suit. The plaintiff appealed this decision.
The central issue in this case revolved around whether the suit initiated by the defendants in the Delhi High Court would preclude the continuation of the plaintiff’s suit in Bengaluru.
The plaintiff contended that the defendants’ suit was merely an empty threat designed to extort money and should not block their suit in Bengaluru, citing the case of Dhiraj Dharamdas Dewani vs. M/s Sonal Info Systems P. Ltd in support of their argument.
In contrast, the defendants argued that their suit in Delhi was a proactive legal action that should terminate the plaintiff’s proceedings in Bengaluru. They cited the case of M/s Mac Charles (I) Ltd. vs. M/s Indian Performing Rights Society Ltd to support their stance.
After hearing both parties, the Court emphasized the significance of the proviso to Section 60, which states that an action under Section 60 will not apply if the person making threats (the defendants in this case) commences and diligently pursues a copyright infringement action.
“The proviso to Section 60 of the Copyright Act, 1957, clearly indicates that the action envisaged under Section 60 will not apply if the person making such threats, with due diligence, commences and prosecutes an action for infringement of the copyright claimed by them.”
The court considered the plaintiff’s assertion that the defendants’ actions were mere threats aimed at extortion. However, it found that the plaintiff’s suit was primarily a reaction to these alleged threats and not a response to proactive legal action by the defendants.
It was also confirmed that the defendants had taken positive action by filing a suit in the Delhi High Court on April 2, 2013, related to copyright infringement claims against the plaintiff.
“In this case, according to the plaintiff, the alleged actions of the defendants are empty threats. The defendants have demonstrated that positive action was taken by filing a proper suit in the High Court of Delhi on 02.04.2013. In other words, since a separate suit was filed by the defendants after the suit filed by the plaintiff on 19.01.2013 in Bengaluru, the plaintiff’s suit in Bengaluru is not maintainable.”
Referring to the Supreme Court judgment in M/s Mac Charles (I) Ltd. vs. M/s Indian Performing Rights Society Ltd, the bench held,
“This Court is of the considered opinion that the grounds mentioned in the appeal memorandum are insufficient to allow the plaintiff to continue with the suit in O.S.No.617/2013 in Bengaluru by setting aside the impugned Order, whereby the plaintiff’s suit was rejected under Order VII Rule 11(d) of the CPC.”
The appellate court made it clear that it did not express any opinion on the merits of the case. It recognized that the parties were at liberty to argue the merits of the matter in the suit pending before the High Court of Delhi.
“It is always open for the plaintiff to present its defense before the High Court in Delhi and have the suit decided based on the merits of the matter. The scope of the present appeal does not permit addressing the opposing arguments regarding the merits of the matter.”
Accordingly, it dismissed the appeal.
