STUDY MATERIAL

REMEDIES FOR COPYRIGHT

INFRINGEMENT
According to the Copyright Act, there are three
types of remedies i.e., Civil Remedies, Criminal
Remedies and Administrative remedies. In practice,
the aforementioned remedies is also be classified as
follows:
1. Provisional measures
2. Injunctions and Delivery-Up
3. Compensatory damages
4. Punitive damages
5.Account of profits

1. PROVISIONAL MEASURES
Typically, a plaintiff wants to proceed before trial
to obtain a pre-trial injunction and an order to seize
documents and infringing goods from the defendant’s
premises.
Under the provisions of TRIPs Art. 50, also insist
the member to keep such kind of option to obtain such
orders, the applicant must show, through sufficiently
certain “reasonably available evidence”, that (1) he is
the right holder, and (2) his work is being, or is about
to be, infringed.
He may have to provide security to compensate the
defendant if the order has been wrongly granted or
executed abusively. The defendant must have the right
to a prompt hearing if he wishes to have the order
revoked or altered. The order ceases effect, on the
defendant’s request, if the applicant does not initiate
proceedings leading to a decision on the merits
“within a reasonable period” as determined by the
relevant judicial authority.
A pre-trial injunction may be granted if the
plaintiff shows that
(i)there is a serious issue to be tried,
(ii) the plaintiff will be irreparably harmed if
the defendant is not stopped pending the full trial,
and
(iii) the balance of convenience favours such an
order.
It is therefore important for the plaintiff to have the
infringer stopped meanwhile; it is equally important
for an innocent defendant not to have his business
wrongly interrupted or even shut down.
 The court must balance the interests of both parties
to reach the fairest result, remembering that the
evidence will not be available at an early stage and
that the picture at trial may look very different.
Case Law:
Titan Linkabit Corp. v. S.E.E. See Electronic
Engineering Inc., (1993) 48 C.P.R. (3d) 62(Canada:
Federal Court)
Facts:
The plaintiffs were the copyright owner of a
computer program contained in device that decoded
scrambled paid-channel television signals, and the
First Choice television channel, which was the
exclusive licensee of that device. They sued the
defendant for copyright infringement for making and
marketing a decoding device that copied the copyright
program.
Remedy sought:
The plaintiffs sought an interlocutory injunction.
The test for granting an interlocutory injunction is:
Whether there is a serious issue to be tried; if so,
whether the applicant establishes that it will suffer
irreparable harm if the interlocutory injunction is not
granted; and if so, whether in all the circumstances
the balance of convenience favours the granting of an
interlocutory injunction pending trial of the issues
between the parties.
Irreparable harm
Infringement of their copyright interests, it is
urged, constitutes sufficient harm per se for the grant
of injunctive relief without the necessity of further
proof of irreparable harm…
Principle
If an injunction is not awarded to the plaintiffs at
pre-trial or pending-trial period, they will suffer
irreparable harm through the following circumstances.
Continuing distribution and sales of defendants’ …
descramblers will place devices in the hands of
consumers which the plaintiffs, even if successful at
trial, will not be able, in most cases, to locate or to
effectively restrain from reception of encrypted
satellite broadcasts without authorization of the
broadcasters or payment of subscription fees.
That will compromise the security of the plaintiffs’
system and the interests of those who use it, like the
plaintiff First Choice, on an ongoing basis.
Any loss to the reputation of the plaintiffs and
continuing monetary losses to them will be almost
impossible to assess with any precision.
Finally, any substantial damages that may be
awarded in favour of the plaintiffs at trial, even for the
intervening period until trial, are not likely to be
recoverable from the defendants.
The balance of convenience
The defendants will suffer harm if an injunction is
now awarded. They claim that harm will be
irreparable. They urged that the grant of an
interlocutory injunction would, in effect, dispose of
the action finally in favour of the plaintiffs because
there would be nothing left in the defendants’ interests
to warrant either pre-trial or during the trial
proceeding period.
Here there is no basis to conclude that the
injunction sought, to preclude infringement of the
plaintiffs’ patent and copyright interests, would
put the defendants out of business.
The defendants have been continuing in business
despite an interim injunction and materials held under
an Anton Piller order issued some 15 months before
the application for an interlocutory injunction was
heard.
More serious as a basis for finding irreparable
harm to the defendants claim is that the injunction, if
awarded, would delay their technological
development of devices for a substantial secondary
market and that it would facilitate the plaintiffs’
technological development of competing software…
The court is persuaded by the fact that if an
injunction is now awarded, and ultimately at trial the
defendants’ devices are found not to constitute
infringement of the plaintiffs’ proprietary interests,
the harm to the corporate defendants’ fledgling
enterprises seeking to get established in a highly
competitive market may not be readily addressed in
damages.
In the opinion of the court, this constitutes
irreparable harm.
Finally, the plaintiffs here undertake through their
solicitors that they will meet any damages found by
the court to be caused to the defendants if an
injunction now be awarded, but at trial it is found that
the defendants have not infringed the plaintiffs’
proprietary interests by the acts alleged. There is no
evidence that the substantial plaintiff corporations
would not be able to meet that undertaking. On the
other hand, the defendants do not advance a similar
undertaking, but they do offer to maintain an account
of all devices sold during the trial period and if the
injunction now sought is refused. That is an
inadequate undertaking should the plaintiffs’ claim to
substantial damages be upheld.
In all of these circumstances, the court opined that
the balance of convenience in this case favours the
award of an injunction pending trial of the issues.
Conclusion
In the light of the above, the court concluded that
the pleadings and the evidence produced clearly
indicate that there are serious issues to be tried. If an
interlocutory injunction is not awarded the plaintiffs
will suffer irreparable harm during pending trial
period of the issues. In considering the balance of
convenience, in the circumstances of this case, that
balance favours the grant of an injunction for pending
trial period of the case and further orders of the court
as the case may be followed.
A pre-trial seizure order may be granted ex
parte (i.e., without notice to the defendant), where
notice would likely result in the defendant
eliminating evidence
Under TRIPs Art. 50.2, judicial authorities must
also be authorized to adopt provisional measures in
audi altera partem [i.e., without having heard the
other side] where appropriate, in particular where any
delay is likely to cause irreparable harm to the right
holder, or where there is a demonstrable risk of
evidence being destroyed.
These so-called Anton Piller orders (renamed in
U.K., as “seizure orders”, since 1999) are quite
frequently granted, although on stringent conditions,
in the U.K. and the Commonwealth.
Case-Law:
Anton Piller K.G. v. Manufacturing Processes
Ltd [1976] Ch. 55 (U.K.: Court of Appeal)
Facts:
A German manufacturer had evidence that its
English agent was passing on the German company’s
confidential manufacturing drawings and other
information to a competitor. It applied to the High
Court in London, without notice to the agents, for a
pre-trial injunction stopping them from infringing
copyright or passing on confidential information.

The Court granted this injunction, but refused an order

requiring the agents to allow up to two representatives
of the applicant and two of their lawyers to enter the
agents’ premises and inspect and remove into the
lawyers’ custody any documents or articles relating to
the design or manufacture of copies of the German
company’s equipment. The applicant appealed this
refusal.
Judgment:
The court held that, the order sought in this case is
not a search warrant. It does not authorise the
plaintiffs’ solicitors or anyone else to enter the
defendants’ premises against their will. It does not
authorise the breaking down of any doors, or the
slipping in by a back door, or getting in by an open
door or window. It only authorises entry and
inspection by the permission of the defendants. The
plaintiffs must get the defendants’ permission.
But it does do this:
It brings pressure on the defendants to give
permission. It does more. It actually orders them to
give permission – with the result that if they do not
give permission, they are guilty of contempt of court.
It seems that such an order can be made by a judge
ex-parte, but it should only be made where it is
essential that the plaintiff should have inspection so
that justice can be done between the parties: and
when, if the defendant were forewarned, there is a
grave danger that vital evidence will be destroyed,
that papers will be burnt or lost or hidden, or taken
beyond the jurisdiction, and so the ends of justice be
defeated: and when the inspection would do no real
harm to the defendant or his case.
Nevertheless, in the enforcement of this order, the
plaintiffs must act with due circumspection. On the
service of it, their solicitor, who is an officer of the
court, should attend the plaintiffs. They should give
the defendants an opportunity of considering it and of
consulting their own solicitor. If the defendants wish
to apply to discharge the order as having been
improperly obtained, they must be allowed to do so. If
the defendants refuse permission to enter or to inspect,
the plaintiffs must not force their way in. They must
accept the refusal, and bring it to the notice of the
court afterwards, if need be on an application to
commit.
Such order can be effective in this way:
It serves to tell the defendants that, on the evidence
put before it, the court is of opinion that they ought to
permit inspection – may, it orders them to permit –
and that they refuse at their peril.
It puts them in peril not only of proceedings for
contempt, but also of adverse inferences being drawn
against them; so much so that their own solicitor may
often advise them to comply…
Justification to issue such order: It contains an
undertaking in damages, which is to be supported (as
the plaintiffs are overseas) by a bond for £10,000. It
gives an interim injunction to restrain the
infringement of copyright and breach of confidential
information, etc. It orders that the defendants do
permit one or two of the plaintiffs and one or two of
their solicitors to enter the defendants’ premises for
the purpose of inspecting documents, files or things,
and removing those, which belong to the plaintiffs.
This was, of course, only an interim order pending the
return of the summons.
Essential pre-conditions for issuing Anton Pillar
Order:
First, there must be an extremely strong prima
facie case.
Secondly, the damage, potential or actual, must
be very serious for the applicant.
Thirdly, there must be clear evidence that the
defendants have in their possession incriminating
documents or things, and that there are real
 possibilities that they may destroy such material
before any application of ‘inter prates’ can be
made. …
In the circumstances of the present case, all those
conditions are satisfied, and this order is essential in
the interests of justice.
Position in India
In India, Ordinance 39 of the Civil Procedure
Code, 1908, authorizes court to issue orders in the line
of Anton Piller order. Not only CPC, even the statutes
like Trade Marks Act, 1999, The Geographical
Indications of Goods (Registration and Protection)
Act, 1999 specifically provide for such an order.
Essentially an interlocutory injunction, the
elements that a Plaintiff needs to establish in order to
get a Mareva order are along the lines of any interim
injunction – i.e. a prima facie case, balance of
convenience and irreparable injury. Over the years,
the exact criterions have been clearly laid down and
include the below listed points, such as:
• there must exist a cause of action at the time
the order is to be granted, and the Plaintiff must
demonstrate a good arguable case.
• The Defendant must have assets within the
jurisdiction of the Court.
• The balance of convenience must be in favor
of the Plaintiff being granted the injunction.
• The Plaintiff must establish that the
Defendant lacks probity and that there is a real risk of
dissipation of assets.
• There has been no delay in applying for the
injunction.
Case Law:
Bucyrus Europe Ltd v Vulcan Industries
Engineering Co Pvt Ltd., 2005 (30) PTC 279
In this case, the appellant-plaintiffs were granted
an ‘ex parte ad interim order of injunction’ restraining
the defendant from manufacturing, selling, stocking
for sale, offering for sale, marketing, advertising and
distributing in any other manner or dealing with the
impugned product of the defendant having been
produced from any of the drawings or any design
substantially similar thereto by using engineering,
design, shape and configuration and getup of the
appellant. The High Court allowed the order for a
limited period of 14 days and appointed a learned
Counsel as Special Officer to look over the
proceedings. After the Special Officer filed his report,
a full contested hearing took place on the question of
grant and continuance of ad interim order. The learned
Counsel for the defendant submitted that the
averments which have been made in the ex parte
application for interim order, did not disclose the state
of affairs fully, in the sense that they suppressed the
fact that the defendant had filed three applications for
cancellation of the registration of designs of the
appellant. Section 19 along with Section 22 of
Designs Act, the defendant contended since those
grounds for cancellation of design provide good
defence, the Court ought to take note of the
defendant’s grounds for cancellation of registration.
Since, the appellant suppressed the cancellation
proceedings, the Counsel for the defendant contended
that there was no ground for granting of the order. The
plaintiff’s attempts to bring the case under Copyright
protection failed miserably, when the Court pointed
out that ‘design’ as defined u/s 2(d) of Designs Act
does not include any artistic work as defined u/s 2(c)
of the Copyright Act.
While deciding the case, Ashok Kr Ganguly J,
observed that an Anton Piller order can be passed in
the following situations:
(a) Where the plaintiff has an extremely strong
prima facie case,
 (b)Where the actual or potential damage to the
plaintiff is very serious,
(c) Where it was clear that the defendant possessed
vital evidence, and
(d)There was a real possibility that the defendant
might destroy or dispose of such material so as to
defeat the ends of justice,
(e) The purpose of Anton Piller order is the
preservation of evidences.
The Court also mentioned about the safeguards
that have to be provided while granting Anton Piller
order, like undertaking by the plaintiff to compensate
the defendant for the losses he wrongly suffered.
Regarding the validity of the ex parte injunction,
the Court referred to Bengal Club Ltd v Susanta Kr
Chowdhury 2002 (3) CHN 322 where the Court had
emphasized on the importance of good faith in the
pleadings in the context of an ex parte application for
injunction. Since at the application stage, there is no
contested hearing, the Judge has to rest on the
plaintiff’s submission and hence good faith assumes
much importance. Following this, the Court held that
utmost good faith of the plaintiff is condition
precedent for granting an injunction on the lines of
Anton Piller order, and in the absence of such, it
rejected the application. This case has explained the
requirements of an Anton Piller order. The Court
while granting the ex parte injunction tried to
incorporate the safeguards evolved by English Courts
in India. The judgment itself notes some of the
safeguards, e.g., issue of the order for a limited
period, appointment of a learned Counsel as Special
Officer to carry out the execution, providing the
defendant an opportunity to take legal advice, etc.
However, few questions were still left unanswered,
like:
• In this case, the defendant fully co-operated with
the solicitor. So, the question regarding whether a
refusal would entail a proceeding against the
defendant for contempt of Court is still unsettled.
The case did not deal with the issue of cross
undertaking, the most important safeguard for the
defendant. The Court dismissed the case with costs
and directed the costs to be paid in favour of
Calcutta High Court Legal Services Authority and
no mention was made of compensating the
defendant. So, there are serious concerns regarding
what would be the relief to the defendant, if he
suffers damages from the order.
 The most critical question that was not dealt was
regarding privilege against self-incrimination.
Unlike England, in India there is a fundamental
right, granted by Article 20(3) of the Constitution of
India. So, regarding privilege against self-
incrimination, whether any exemption, in the line of
Section 72 of the UK Supreme Courts Act, 1981,
could be culled out still remains unanswered.
The Court did not lay down any guidelines
regarding practice procedure, in the line of Practice
Direction in UK. However, one can find solace in
the fact that the Court has tried to incorporate
practice, which has already been taken note of.
The application of Anton Piller order in India is
working but some questions are still left unanswered.
It is hoped that, taking clue from the English and USA
cases, the Indian Courts would apply the order only at
essential conditions sparingly with all the necessary
safeguards.
However, researchers believe that it is high time
that both Judiciary and Legislature should come
forward to lay down substantive guidelines, covering
all the critical aspects like, privileges against self-
incrimination, nature of damages, contempt of Court,
etc. to ensure more clarity in the whole proceedings.
Mareva injunction
There is a particular form of interlocutory
injunction which is known as Mareva injunction, the
purpose of which is to restrain the defendant from
disposing of assets which may be required to satisfy
the plaintiff or claim or removing them from the
jurisdiction of the court.
In India, however, the Civil Procedure Code, 1908,
provides the jurisdiction to the Courts vide Order
XXXVIII, Rule 5 to grant such remedy. It states that:

‘if, at any stage of a suit, the court is satisfied…that

the defendant, with intent to obstruct or delay the
execution of any decree that may be passed against
him, is about to dispose of, or remove from the
Court’s jurisdiction, the whole or any part of his
property, the court may direct the defendant… to
furnish security in a specified sum, and place at the
court’s disposal the property or equivalent value…as
may be sufficient to satisfy the decree’.

Even jurisdictions where the Mareva injunction lacks

statutory backing, have found ways to incorporate the
remedy into their ordinary civil proceedings. An
analysis of the jurisprudence in the area demonstrates
that the acquisition of the jurisdiction to grant the
Mareva injunction is considered very useful.
 Mareva injunction was granted in CBS v.
Lambert 1983 F.S.R 127 where the principal assets,
however, were cars and the order including a
provision requiring the defendant to disclose their
whereabouts. The prevention of disposal is not of
much use if the plaintiff cannot locate the assets when
it comes to seek to enforce any final judgment
obtained. Therefore, such injunctions are usually
sought ex parte.
In India, Copyright Act, 1957 provides the remedy
of interlocutory injunction against the infringement of
copyright. Interlocutory injunction is granted under
order XXXIX, Rules 1 and 2 of the Code of Civil
Procedure, 1908. The principles laid down in English
precedents are frequently relied upon and followed in
India.
In Macmillan and Company Ltd. v K and J
Cooper A.I.R. 1924 P.C. 75 it was held that the
plaintiffs have made out a prima facie case for the
issue of a temporary injunction under Order XXXIX.
Rule 2 of Civil Produce Code against defendant, who
brought out a book containing selection from
plaintiff’s book. It was held in this case that there was
a prime facie case for the issue of a temporary
injunction.
 The injunction, of course holds good only during
the pendency of the proceeding before the trial court.
It is settled law that in granting interlocutory
injunction, three factors are taken into consideration.
First, the establishment of a prima facie case,
second, the balance of convenience in favour of the
plaintiff and finally irreparable injury would be
caused to plaintiff if interlocutory injunction were not
granted.
The relief of injunction is found on equity and it
can’t be sought as a matter of right. It is also liable to
be refused where the court found that plaintiff had
approached it with unclean hands by suppressing
material facts and had acted in an unfair and
inequitable manner.
But where his claim appears to be bona fide, his
rights would have to be preserved pending
adjudication of his claim in the suit because the
purpose is to mitigate injustice to him and avoid the
possibility of his being non-suited.
The Supreme Court in Gujarat Bottling
Company Ltd. v. Coca Cola Company A.I.R. 1995
S.C. 2372 observed: “The decision whether or not to
grant an interlocutory injunction has to be taken at
time when the existence of the legal right assailed by
the plaintiff and its alleged violation are both
contested and uncertain and remain uncertain till they
are established at the trial on evidence. Relief by way
of interlocutory injunction is granted to mitigate the
risk of injustice to the plaintiff during the period
before that uncertainty could be resolved. The object
of the interlocutory injunction is to protect the
plaintiff against injury by violation of his right for
which he could not be adequately compensated in
damages recoverable in his favour at the trial. The
need for such protection has however, to be protected
against injury resulting from his having been
prevented from exercising his own legal right for
which he could not be adequately compensated. The
court must weigh one need, against another and
determine where the balance of conveniences lies.”
As the power to grant or refuse an ‘ad interim
injunction’ is discretionary, the appellate courts
normally do not interfere in the exercise of the
discretion by the subordinate court. The appellate
court will not normally reassess the material on record
before that court and substitute its view to grant or
refuse a temporary injunction. It will also not disturb
the order in this regard even where a contrary view or
conclusion is possible. But, at the same time, the
appellate court will not hesitate to intervene where the
impugned order is found to have ignored the settled
principles of Law regulating grant or refusal of
interlocutory injunction or where it proceeded on non-
appreciation of nature of controversy or the material
on record.
In Mirabai Films Pvt. Ltd v. Siti Cable Network
and others 2003 (26) P.T.C. 473 Del. (D.B.), the
appellant was the producer of the film ‘Monsoon
Wedding’ and respondents were cable television
operators providing cable television network, cable
Internet access and other several related services in
several parts of the country through their
associate/subsidiary companies, distributors,
franchisees, assignees, head ends and cable operators.
The appellant alleged that respondents were
habitual offenders in telecasting pirated copies of
films and were opt to do so in case ‘Monsoon
Wedding’ also and if not restrained, it would cause
irreparable injury and loss to the appellant. The court
while granting temporary injunction to the appellant
held: “we have no doubt that appellant had done its
part as it claims that it owned the film’s copyright and
enjoyed its exclusive right to deal with it, be that in its
marketing, distribution or selling it or communicating
it by whatever means including through cable
networks in the films or any right to indulge in its
exhibition or communication had gone uncontroverted
in the absence of respondent’s written statement. So
has its plea that the balance of convenience was on its
side and that it would suffer irreparable loss and
injury even by a single telecast of respondents and
their distributor, franchisees which could reach
several lakhs of homes at one time.”
In Khajanchi Film Exchange and Another v.
State of M.P. and others, 2003 (26) P.T.C 183
(M.P.) (D.B.), the appellant alleged that producers
have not released video rights of film ‘Kabhi Khushi
Kabhi Gam’, therefore, violation of copyright by
illegal duplication of film and screening thereof would
cause them immense financial disadvantage.
Appellants seeking mandamus against 55 respondents
filed a writ petition.
The M.P. High Court dismissing the writ petition
concluded that the film was released on December 14,
2001. Writ petition was filed on November 28, 2001,
16 days before the release of the film. Appellants had
enough time to approach the authorities/police and
later for the respondents giving there reaction to the
grievance and how it was ready to deal with matter.
Therefore, unless the demand was put across and
reaction waited for some time, moving the court was
premature and unsustainable.
 In Barbara Taylor Bradford v Sahara Media
Entertainment Ltd., 2004 (28) P.T.C. 474 (Cal.)
(D.B.) the plaintiff sued defendants for infringement
of her copyright in 1979 bestseller “A women of
substance”. The division Bench of Calcutta High
Court while applying the ratio of Fraser v Euans,
observed: “….we do not know what the serials are
going to be like; we do not know the situations, which
will be shown. We do not know the scenes, which will
be displayed. We do not know the details of storyline.
All that we know is that one of the team of persons
engaged in production, which is quite a large team has
said to a certain fishing journalist that there are some
characters which are as per the book of the plaintiff
No.1 and that the serials have been based on the book
and Indianised and adapted.
This is simply not enough.” The court held that the
interlocutory application was premature. The plaintiff
would hardly suffer any loss of value of her book if 15
or 20 out of 800 episodes were shown. If an injunction
were obtained after 15/20 episodes, the plaintiff
would get practically full relief. Thus, the balance of
convenience lay in favour of defendants.
In Prentice Hall India Pvt. Ltd. v. Prentice Hall
lac. & Others 2002 (25) P.T.C. 511 (Del.) Defendant
no. 1 was the owner of publications in question in
which the plaintiff was seeking to claim copyright
without any individual agreements having been
entered into. It was the case of owner versus so called
assignee of the copyright.
The title of defendant no. 1 was not in dispute
whereas the copyright of the plaintiff was in dispute.
The Delhi High Court held that: “…the grant of ad
interim injunction in favor of the plaintiff at this stage
would mean decreeing the suit itself.” Acquiescence
or delay on the plaintiff’s part disentitles him to an
interlocutory injunction.
In Media Transasta Ltd. & Another v. Indian
Airlines Ltd. & Others 2003 (26) PTC 294 (D.B.)
(Del.), the appellants, in spite of possessing the
information regarding respondents’ activities, did not
take immediate legal action. The suit was filed only
towards the end of July 2002 by which time a new
contract was born and third party rights had been
created in favour of respondent no. 3. The delay in
filling the suit, therefore, proved fatal and interim
injunction was denied to the appellants.
The proviso to Section 55(1) of the Copyright Act,
1957 provides that if the defendant proves that at the
date of infringement, he was not aware and had no
reasonable ground for believing that copyright
subsisted in the work, the plaintiff shall not be entitled
to any remedy other than an injunction in respect of
the infringement and a decree for the whole or part of
the profits made by the defendant by the sale of the
infringing copies, as the court may in the
circumstances deem reasonable. In case if the work is
very large and the pirated portion can be separated
from the unobjectionable portion, the pirated work
will be stopped from publishing but where pirated
work cannot be separated from lawful work the court
will not hesitate in granting injunction to restrain the
publication of the whole work.
Permanent injunction: If the plaintiff succeeds at
trial in establishing infringement of copyright, he will
normally be entitled to a permanent injunction to
restrain future infringements. This injunction will
operate only during the unexpired term of copyright.
For the entitlement of the final injunction plaintiff
need not prove actual damage. If the plaintiff proves
that his copyright has been infringed, the court will
grant an injunction without proof of actual damage.
But at the same time the plaintiff must show that there
is a probability of damage, that this is not, simply
trivial.
 In Hawkins Cookers Ltd. v. Magicook
Appliances Co., A.I.R 2003 Del. 191. The Delhi
High Court granted permanent injunction to the
plaintiff by restraining defendants from dealing in any
manner, whatsoever with their cookbooks having
passages reproduced from the cookbooks of the
plaintiff.
When can permanent injunction be refused?
Normally, the court will refuse injunction in the
circumstances where:
(i)there is no evidence that the defendant has done
or threatens to do anything which would interfere
with the enjoyment of any right, vested in the
plaintiff, or
(ii) invasion of the right, if any, of the plaintiff,
is of a theoretical nature, which would at the most,
give the plaintiff at right to claim nominal damages,
or
(iii) the injunction would inflict far more injury
on the defendant than the advantage which the
plaintiff could derive from it.
INJUNCTION AND DELIVERY UP OF
INFRINGING ITEMS
Since an infringement of copyright is treated as a
violation of a property right, the usual order against an
infringer is an injunction to stop the continuation of
the infringement. The defendant is usually also
ordered to hand over infringing stock to the plaintiff,
so that the injunction is made effective and any
continuing temptation to infringe is removed.
An injunction and order for delivery up of
infringing items may be granted, even where the
plaintiff would suffer no loss from a continuing
infringement.
The Queen v. James Lorimer&Co. Ltd, (1984) 77
C.P.R. 2d 262 (Canada: Federal Court)
Facts:
The Canadian government department in charge of
anti-competitive practices held an inquiry into the
petroleum industry and produced a 7-volume report at
the end of it. The copyright of the report was owned
by Government of Canada, which sold the work for
$70 but also gave away free copies to institutions such
as public libraries. Without the government’s
authorization, the defendant publisher condensed the
report into a one-volume paperback, which it sold for
$14.95.
The government claimed an injunction and
damages for the infringement. The first instance court
found infringement but refused an injunction or
delivery up of existing stocks. Instead, it awarded
damages equivalent to an 8% royalty on the retail sale
of the defendant’s books, both for the past and the
future. The government appealed. The appeal court
agreed that the government was entitled to an
injunction and an order that the defendant deliver up
the infringing stocks in his possession.
Judgment
In exercising his discretion to refuse the injunctive
relief, the learned trial judge found persuasive the
facts that the infringement had not adversely affected
distribution and sales of the appellant’s infringed
work, nor adversely affected the revenue deriving
from its sales, as well as the unusual character of the
appellant as a plaintiff.
The characterization of the Crown as an “unusual
plaintiff” lies, in his finding of fact that it was not
much interested in income or revenue from its work
and not, in a generalization that the Crown is to be
treated differently than other litigants.
The Copyright Act is clear. Infringement does not
require that the infringing work compete in the market
place with that infringed; it requires only that the
infringer do something that the copyright owner alone
has the right to do. It follows that, where infringement
of copyright has been established, the owner of the
copyright is prima facie entitled to an injunction
restraining further infringement…
The onus is on the infringer to establish grounds
upon which the court may properly exercise its
discretion against granting such relief. …those
grounds must lie in the conduct of the copyright
owner, not in the conduct or motives of the infringer.
The fact that the copyright owner has suffered no
damages as a result of the infringement is not a basis
for refusing an injunction. …a computation of
damages based on an appropriate royalty is acceptable
where the copyright owner does not prove he would
have made the sales the infringer did.
However, the court found no authority for
requiring a copyright owner to acquiesce in a
continuing infringement against payment of a royalty.
That is tantamount to the imposition of a compulsory
licence. In the absence of legislative authority, the
court has no power to do that.
Finally, the court found that learned trial judge
applied wrong principles and erred in law in denying
the relief of injunction and delivery up of existing
stocks and substituting for that relief a royalty on the
future sale of infringing copies.

DAMAGES
Under TRIPs Article 45.1, a copyright infringer
must pay the copyright owner “damages adequate to
compensate for the injury the right holder has suffered
because of the infringement”. Such damages are not
mandatory unless the defendant infringed copyright
“knowingly, or with reasonable grounds to know” that
he was infringing.
General Principles Damages for infringement track
those for tort generally. The claimant should receive
monetary compensation (general and aggravated
damages) restoring it to the position in which it would
have been had the infringement never occurred.
The claimant’s present economic position is
compared with that hypothetical state; the difference –
excluding reasonably avoidable and “remote” losses
(i.e., those not flowing naturally and directly from the
wrong) – is what the infringer owes.
But every case will have its own peculiarities. The
object is to compensate this claimant – not some other
claimant, who could have lost more or less from the
same infringement – for the particular wrong…
Every infringement is a separate wrong. A person
who, without authority, scans an unpublished
photograph into her computer and posts it on her Web
site may infringe the copyright owner’s rights of
reproduction, first distribution, and tele-
communication.
The copyright owner should technically get
compensation for each wrong. A sense of proportion
must, however, be retained, and double or overlapping
recovery should be avoided. Some complaints are
trivial and deserve no award: overcompensation is as
much a vice as under compensation…
Compensatory Damages
The following guidelines may help to assess
damages as compensation.
a) Lost Sales
If a right-holder’s business is selling the protected
product, it can obviously recover its lost net profit on
sales the infringer took from it by selling competing
products. The infringer cannot escape by proving it
could have sold a non-infringing substitute. A
publisher once sold a school anthology containing a
major section of a novel without obtaining copyright
clearance. It had to compensate both the author for
lost royalties and a rival publisher, who owned the
copyright, for the latter’s profit on sales lost from the
competition.
An infringer may also undercut prices because it
does not have the claimant’s start-up cost (e.g.,
research, development, and market creation).
A claimant reducing prices to meet this
competition can also recover for its lost margin and
any general business decline — for example, if the
infringer produces an inferior product that makes the
market turn against the claimant’s product as well.
b) Reasonable Royalty
What if the copyright holder could never have
made the infringer’s sales – for example, they would
have gone to other competitors, or the infringer
created a new market?
The copyright holder is then entitled to damages
based on a reasonable licence fee on those sales. For
right- holders in the licensing business – for example,
copyright collecting societies – this amount is the
actual royalty fee they would have charged the
defendant for a licence.
A video store that wrongly copies videotapes for
rental has to pay as damages the licence fee the
copyright owner charges comparable video stores that
acquire lawful copies.
If the right-holder never licenses (e.g., a painter
who sells only originals and turns away all attempts to
persuade him to allow reproductions of his work to be
made or sold), then a notional reasonable royalty fee
may be set: what a willing licensor and licensee in the
shoes of the particular parties would have negotiated
under existing market conditions.
The factors real-life negotiators, acting reasonably
with a view to reaching an agreement, would use in
that line of business are then taken into account: for
example, comparable fees for comparable licences
anywhere, the infringer’s savings and profits, and any
admissions by either party of the figure it would be
willing to accept as a royalty…
The reasonable royalty formula is ultimately a
device to prevent unjust enrichment: the infringer is
treated like the car thief, who has to pay the owner a
reasonable rental for the time the owner was deprived
of her property, even if the owner had put the car in
storage for the winter. Neither party can avoid a
calculation on this basis by saying that, in the real
world, he would never have entered into licence
negotiations with the other or would have settled only
for otherworldly rates…

c) Intangible Losses
Infringements may sometimes cause right-holders
intangible losses. For example, someone who puts up
a building infringing an architect’s plans may deprive
the architect of the reputation that would have come
her way from news of the building (placards on the
site, etc.).
Damages for copyright infringement may
compensate for this lost credit. Sometimes, too,
damages can cover embarrassment and distress, as
when a national newspaper publishes a private
photograph without copyright clearance.
d) Apportioning Damages
Damages may sometimes need to be apportioned.
An infringer who takes one chapter from a ten-
chapter book should pay damages only on the loss
caused by taking that chapter. Exceptionally, this
proportion may be like taking the whole book: a
newspaper that publishes the juiciest chapter in a
biography might so satiate the market that demand for
the book on general release might be much less, even
zero.
More often, the loss would be less. One might start
with the proportion of pages taken in relation to the
whole book and then increase or lower this rate
depending on the importance of the chapter, the cost
to the infringer of substitutes, the infringer’s profit on
the enterprise, and the likely effect on the copyright
owner’s own sales or future licensing efforts.
The plaintiff should be restored, so far as
money can do so, to the position he would have
occupied if the infringement had not occurred.
Difficulties in assessing such compensation should
not deter the making of a substantial award.
Case Law:
Cartes-en-Ciel Inc. v. Boutique Elfe Inc. (1991) 43
C.P.R. (3d) 416 (Canada: Court)
Facts
A firm asked an artist to copy a Christmas card
titled “Un Noël de Rêve” that the firm’s manager
bought from a retail store. The firm had 1,300 of the
copied cards printed for $C 165 and sent them out for
New Year to its customers. The plaintiff claimed the
full retail price of 1300 cards as damages, over $C
2,000. The defendant offered $C 500, being what the
plaintiff had charged a third party for a licence to
reproduce, for publicity purposes, another similar card
(“Toutes voiles au vent”) by the same artist. The court
accepted the defendant’s theory for assessing
damages, but awarded $C 800.
Judgment:
The defendant did not make a profit by infringing
the copyright. She did not sell the cards to her
customers and nothing indicates that the boutique’s
sales increased as a result of the distribution of these
cards. … The plaintiff sold the cards for $ 1.75 each.
As a result, as the defendant had 1,300 cards printed,
she would have had to pay $ 2,275 if she had
purchased them from the plaintiff. The plaintiff claims
this amount. However, the price of $ 1.75 appearing
on the cards is the retail price.
The plaintiff cannot claim to be entitled to $ 1.75
times 1,300 cards, since if the 1,300 cards had been
sold, the plaintiff would not have received $2,275, but
rather a lesser amount. The plaintiff has not
established the cost or the profit, which could have
resulted from the sale of the cards. He cannot also
claim that the defendant used these cards in order to
misappropriate moneys, which should have lawfully
gone to him. The defendant submits that if damages
are granted, they should be limited to an amount
corresponding to the plaintiff’s publication royalties
[being no more than the $500 charged and received
for “Toutes voiles au vent”.
The plaintiff claims that the work “Un Noël de
Rêve” was much more popular than “Toutes voiles au
vent” “…It should be remembered that copyright is a
property that is a wasting asset. It is subject to
depletion. Every time an infringement takes place so
much of the plaintiff’s property has been taken and
consumed, never to be recovered. Copyright is not an
inexhaustible store that can be drawn on at will
without detraction.”
The object of the Copyright Act does not permit
the person who has infringed the copyright of the
owner to escape a judgment for damages merely
because they are impossible or difficult to prove … If
damages are difficult to assess or cannot be evaluated,
… “the tribunal must do the best it can, although it
may be that the amount awarded will really be a
matter of guesswork”…
In civil law as in common law, these “real” or
actual damages must be direct and ascertainable. The
court considers it more appropriate to assess the
damage suffered as a function of the amount that the
plaintiff could have demanded for the use and
reproduction of its work, rather than as a function of
the retail sale price of the cards representing this
work. Considering the superiority that the author
attributes to this work, “Un Noël de Rêve”, over the
other, “Toutes voiles au vent”, and its much greater
popularity, recognizing that a certain element of
subjectivity cannot be eliminated in the assessment of
any work of this nature, the court sets at $800 the fair
and proper compensation for the damage suffered by
the infringement of the copyright.
Case Law:
Hay v. Sloan, (1957) 12 D.L.R. 2d 397 (Canada:
Ontario High Court)
Facts:
A builder sued another builder for copying the
former’s architectural work, the “Belaire” model
home, by constructing a virtually identical house for a
buyer. The defendant builder was encouraged to copy
by a real estate broker, who profited from the sale.
Both the buyer and the broker were also defendants.
The broker had asked the plaintiff for permission to
copy the house, but the plaintiff refused. The court
found infringement and granted an injunction to
prevent further copying. The court also granted
damages.
Judgment:
Where the plaintiff can establish clearly that the
defendant’s profit would have been his but for the
infringement, these profits then become the plaintiff’s
loss and, in that sense, are an element of damages
sustained by him…
It was suggested here that the damages to be
assessed against the builder and the real estate broker
would be their respective profit. It has not been
established, however, that the plaintiff would have
received such sums had the infringement of his
copyright not occurred.
Only such loss as is the “natural and direct
consequences of the infringer’s acts” can be assessed
on this basis…
Punitive or exemplary damages may be awarded
…and if damages cannot be proved, nominal damages
may be allowed, which are not necessarily small… In
other cases it has been held that where it is customary
to grant licences the amount of the royalty payable is
the usual measure of damages… There is evidence
here that on occasion they would grant a licence to
erect the Belaire at a cost of $60. This sum is
inadequate.
The damages being at large, the court assessed
them at the sum of $650, and though without any
satisfactory measuring rod in so doing, but follow the
example laid down in the precedents that the measure
of damages “is to be dealt with in the rough – doing
the best one can, not attempting or professing to be
minutely accurate…
Such matters should be dealt with broadly and as
best we can as men of common sense.” The court
apportioned the damages among the infringers
according to their respective culpability.
India
In India, there is no provision in the Copyright Act,
1957 for the award of additional damages in special
circumstances such as flagrancy of the infringement
or the fortune reaped by the defendant by his misdeed.
However, there is no bar for courts in India to award
exemplary or punitive damages in appropriate cases,
that way courts have freedom and in certain cases
other than IPR did so, if necessary in IPR they may do
so.
The formula for calculation of damages in cases
where the copyright work is not priced and the award
of exemplary damages came for consideration in P.N.
Krishnan Murthy v. Co-operative for American
Relief Everywhere AIR 2001Del 258.
In this case the plaintiff-appellant is the author of
the story Lakshma Kills A Tiger and the registered
owner of copyright from 1969. Under licence the
story was converted into a comic booklet by Care for
children in many languages and published through
CAP a publication unit owned by the plaintiff. In
1970 Care under licence from the plaintiff contracted
CAP for the publication of 15 lakh copies of the same
story in Malayalam. But CAP terminated this contract
because of difference of opinion. Care with the help
of another publisher published the book and circulated
it free to the children in Kerala. The plaintiff filed the
present suit for infringement of copyright in 1971.
Though the trial started in 1972 and the plaintiff
completed his evidence in 1973 it took many years for
the defendant to complete the evidence. The
defendant could not produce any evidence regarding
the accounts and the records available at New York
were reported to have been destroyed. The district
court finally in 1998 (after 27 years) found that there
was infringement of copyright granted injunction and
awarded 17.50 per cent of the cost of the publication
of one copy of the book i.e, a total of Rs. 2,31,000/-
with 18 per cent interest from the date of suit for
damages. Both the parties appealed to the High Court.
The defendants contended that there was no copyright
violation since the work was created under
employment. Since there was no evidence produced
by Care to show that there was a valid assignment of
right for the translation of the work in Malayalam and
based on the evidence on record, the High Court
concluded that there was copyright infringement.
Regarding the contention of the plaintiff on the
calculation of damages, the court after considering the
fact that the book was not priced or sold in the market
but freely distributed in Kerala State and also that the
plaintiff could not prove his actual loss of profit,
accepted the formula adopted by the trial court and
observed:
“The trial court has taken the cost of publication
of the book at Rs. 1/- and has awarded 17.50% of the
same to the plaintiff… We are conscious of the
argument of the plaintiff that 17.50% of this cost
which is taken as the basis by the trial court was the
amount which the plaintiff would have received had
there been printing and publication of the book in
question by the plaintiff as per the contract dated 15th
September, 1970 and the plaintiff is not claiming the
said cost but is claiming damages on account of
infringement. However, the absence of any other
yardstick, even for the purpose of damages we
consider 17.50% of the cost as reasonable
particularly when the book is not a priced one and
royalty in the normal course would be attracted on
the basis of the price of the book. Therefore, we feel
that if the plaintiff is given 17.50% of the cost and if
the cost of printing and publication of the book is
taken as Rs. 1/- that would be an adequate
compensation to the plaintiff”.
The court found that 9,847 million copies of the
book were published and circulated. Based on this the
court calculated Rs. 16,92,950/- as damages. It was
also contended by the plaintiff that the defendant
deliberately delayed the suit at the trial court for a
period of more than 25 years and on that ground
claimed for exemplary damages. Rejecting this the
court opined :
“No doubt conduct of the Care during the
proceedings before the trial court has not been
proper. However, one has to keep in mind that the
project in question for which the book was to be
distributed and in fact distributed to the poor children
was a benevolent project of public service. The books
were distributed free of cost to the children and
therefore, we do not deem it fit to grant any
exemplary damages against the defendants”.
The court seems to be benevolent to an intentional
organization who has not only deliberately violated
the copyright of an author but also with all its
financial might fought the case at the lower court for a
period of 27 years harassing the author monetarily and
mentally. This seems to be a fit case to award
exemplary damages to send a clear message that be it
for charitable purpose or not the parties that too
financially sound should not abuse the process of law
that too in case of intellectual property infringement.
PUNITIVE DAMAGES
As is evident from Hay v. Sloan, just mentioned,
common law courts sometimes grant punitive or
exemplary damages, on top of compensation, for
copyright infringement. Since the 1960s, U.K. courts
have been unwilling to grant such damages, but the
U.K. Law Commission recently recommended a
change in this policy. Commonwealth and U.S. courts
grant such damages quite often. Even civil law judges
in Quebec have begun to grant such damages for
copyright infringement.
Punitive damages punish flagrant conduct and
deter future infringement
Case Law:
Profekta International Inc.v.Lee,(1997)75 C.P. R.
(3d)369(Canada: Federal Court of Appeal)
The defendant copied and rented out videotapes
from her variety store, without the authorization of the
copyright owner. In 1988, she pleaded guilty to a
criminal charge of deliberate copyright infringement
and was fined $50. Six years later, however, an Anton
Piller order executed in her store turned up over 300
tapes containing the plaintiff’s works. The defendant
had earlier refused to take a licence from the plaintiff.
The trial court awarded the plaintiff compensatory
damages of $9,500, based on the usual charges made
by the plaintiff for licensing reproduction and rental,
plus costs of $2,500, but refused to grant any
additional punitive award. The plaintiff appealed.
Judgment
Exemplary damages …should only be awarded in
cases “where the combined award of general
damages and aggravated damages would be
insufficient to achieve the goal of punishment and
deterrence”…
The question which this Court must ask … is:
“was the misconduct of the defendant so outrageous
that punitive damages were rationally required to act
as deterrence?”
The interference of the court is urged on the
following grounds:
First, the conduct of the respondent, in
continuing to violate the copyright before the
injunction was issued, was flagrant in the light of her
criminal conviction earlier, the warning issued to her
by Profekta and her irresponsible attitude as
reflected in her statements… that she would rather
spend $5,000 on legal fees to fight Profekta than
abide by the copyright and enter a licence
agreement.
Second, the compensatory damage award, while
not so low as to be altered by this Court, was
modest, considering the financial benefit obtained
by the respondent in violating the copyright.
Third, the extra profit made by the respondent in
not paying any licence fees cannot be ignored.
Thus, in our view, an award of punitive damages
was required in addition to the compensatory damages
in order to punish the respondent for the flagrant
conduct and to deter her and others from similar
conduct in the future. In view of the amounts awarded
in similar cases, the amount of $10,000 in punitive
damages should be awarded.
ACCOUNT OF PROFITS
Anglo-American courts allow successful
claimants, usually as an alternative to damages, to
recover the net profits the infringer has made from the
infringement. This remedy is called “an account of
profits” or “an accounting for profits”; the defendant
must account for the profits he has made, and then has
to pay this sum to the claimant.
This remedy is optional under TRIPs, Art. 45.2:
Members may authorize the judicial authorities to
order recovery of profits … even where the infringer
did not knowingly, or with reasonable grounds to
know, engage in infringing activity. The award
measures the defendant’s net gain, not the plaintiff’s
net loss. Indeed, an award may be made even though
the plaintiff has made no loss at all.
• The purpose of an account of profits is to
prevent the defendant from enriching himself at
the plaintiff’s expense. In calculating gains, the
court may have regard to any value the defendant
has added to the plaintiff’s work.
Case Law:
 Sheldon v. Metro-Goldwyn Pictures Corp., 106
F.2d 45 (U.S. Court of Appeals, 2nd Circuit, 1939),
affirmed 309 U.S. 390 (U.S.: Supreme Court, 1940)
Facts:
The defendant was found to have infringed the
plaintiff’s copyright by making a movie based on the
plaintiff’s play. The plaintiff was awarded an account
of profits against the defendant. The defendant then
claimed that the plaintiff should be awarded only a
small part of the defendant’s film profits, since they
were mainly attributable to the defendant’s
endeavours, not to the plaintiff’s relatively unknown
play. The Court agreed that the plaintiff should not
have the whole of the defendant’s net profit, but
decided that she should be awarded more than the
defendant proposed.
Judgment
Pirated material has been mixed with matter in the
public domain. The difficulties of separation have
generally prevented infringers from attempting any
apportionment; they have contented themselves with
getting down the net profits as low as possible…
When an infringer makes no effort to discharge the
duty resting upon him, he will be cast for the whole
profit… The expert testimony was of two kinds, that
of producers and that of exhibitors. The questions put
to each were substantially the same:
What was the proportion of the gross receipts
properly apportionable to the play?
Their answers were in percentages that ran between
five and twelve… Very generally they professed to
believe that the controlling factor in the success of a
play was the popularity of the actors – the stars…
They thought that the other chief factors were the skill
and reputation of the producer and the director, the
scenery and costumes, the extent of the advertising
and the reputation and standing of the producing
company itself, which gave an assurance to exhibitors
and to playgoers, on which both very largely relied…
The defendants must be content to accept much of
the embarrassment resulting from mingling the
plaintiff’s property with their own. We will not accept
the experts’ testimony at its face value; we must make
an award, which by no possibility shall be too small.
It is not our best guess that must prevail, but a
figure, which will favor the plaintiffs in every
reasonable chance of error. With this in mind, we fix
their share of the net profits at one fifth. …
 It was the frequent practice of the defendants to
employ their more costly employees – directors,
producers, stars and writers – at yearly salaries, rather
than by the picture.
This involved a certain waste of time since one
picture cannot always be fitted closely upon another.
The “idle time” of [the stars] before making the
infringing picture was allowed as a credit, and similar
allowances were made in the “overhead.”
The plaintiffs must take the defendants’ practices
as they were; they are confined to the profits actually
made, not to what the defendants might have made. If
it was in the long run more economical to employ
their assistants by the year, obviously the “idle time”
must be paid for by the returns from pictures, and
whether it was better to charge it to the next following
picture, or to an earlier one, is not important. …
“Overhead” which does not assist in the production of
the infringement should not be credited to the
infringer; that which does, should be; it is a question
of fact in all cases.
As a corollary to the injunction, equity may, in
appropriate cases, require a defendant to account to a
plaintiff for profits made from wrong doing such as
the infringement of copyright. Thus, the plaintiff is
entitled to require the defendant to account for the
profits made by him by his infringement of former’s
copyright. This is not a notional computation as with
damages, but an investigation of actual accounts. The
account is of net profits, i.e., the sale price of
infringing article as deducted by the manufacturing
and delivery cost.
In Mohan Lal Gupta v. The Board of School
Education, Haryana, 1978 I.P.L.R 83. the defendant
was ordered to pay 20% of the profits to the plaintiff
as the matter copied was less than one – tenth of the
book.
A plaintiff is entitled to opt for damages or for an
account of profits. He cannot obtain both an account
of profits and damages. The basis on which an
account is ordered is that there should not be any
unjust enrichment of the defendant and that the
defendant should be deprived of any profit, which he
earned, by wrongful acts committed in breach of the
plaintiff’s right. The plaintiff would be refused an
account of profits if there were no profits. In such a
case the plaintiff may elect to claim damages and he
would be bound by an election once made. The
distinction between an account of profits and damages
is that by the former the infringer is required to give
up his ill-gotten gains to the party whose rights he has
infringed whereas by the latter he is required to
compensate the party wronged for the loss he has
suffered.
ADMINISTRATIVE REMEDY
In order to prevent importation of infringing copies
in India, the Copyright Act, 1957 makes available an
effective and quick administrative remedy to the
owner of copyright. Section 53(1) of the Act
empowers the Registrars of copyrights to make an
order prohibiting the importation into India of copies
of a copyrighted work made outside India which, if
made in India, would infringe copyright in the work,
on the application of the owners of copyright in such
work, or his duly authorized agent, after making such
inquiry as he deems fit.
The issue of importation into India of the
infringing copies of the work protected by copyright
came before Supreme Court in Gramophone
Company of India Ltd. v. Birendra Bahadur
Pandey and Others A.I.R. 1984 SC 667.
The appellant in this case, the Gramophone
Company of India Ltd., was the owner of copyright in
musical records and cassettes. The appellant received
information from the customs authorities at Calcutta
that a assignment of pre-recorded cassettes sent by
Universal Overseas Private Ltd., Singapora to M/s
Sungawa Enterprises, Kathmandu, Nepal had arrived
at Calcutta port by ship and was awaiting dispatch to
Nepal. Due to broken condition of the consignment,
which was lying in the Calcutta docks, the appellant
learnt that a substantial number of cassettes were,
pirated works.
The appellant sought intervention of the Registrar
of copyrights in action under Section 53 of the
Copyright Act, 1957. As the Registrar was not taking
expeditious action on the application of the applicant
and as it was apprehended that the pirated cassettes
would be released for transportation to Nepal, the
appellant filed a writ petition in the Calcutta High
Court seeking a writ in nature of mandamus to compel
the Registrar to pass an appropriate order under
Section 53 and to prevent release of the cassettes from
the custody of the custom authorities.
Section 53(2) of the Act empowers the Registrar of
copyrights, or any person authorised by him in his
behalf to (a) enter any ship, dock or premises where
any such copies as are referred to in Section 53(1)
may be found, and (b) examine such copies. The
purpose of the above provision is to determine
whether or not such copies infringe the copyright in
the work of the applicant. Rule 23 of the Copyright
Rules, 1958 requires the Registrar or any person
authorized by him in this behalf to take action under
Section 53(2) in collaboration with customs
authorities.
All copies of the work to which the order of the
Registrar applies shall be deemed to be goods of
which the import has been prohibited under Section
11 of the Customs Act. 1962 and all provisions of that
Act shall have effect accordingly. Section 11 of the
Customs Act, 1962 provides interalia that if the
Central Government is satisfied that it is necessary for
the protection of patents, trademarks and copyrights, it
may prohibit absolutely or subject to conditions,
prohibit the import or export of goods of any specified
description.
Under Section 110 of the Customs Act, 1962, if the
proper officer has reason to believe that any goods are
liable to confiscation under the Act, he may seize such
goods.
However, where it is not practicable to seize any
such goods, the proper officer may serve an order on
the owner of the goods that he shall not remove, part
with, or otherwise deal with the goods except with
prior permission of such officer. It is mandatory to
give a notice of the seizure of the goods to the owner
of goods within six months; otherwise the goods shall
be returned the person from whose possession they
were seized.
However, the period of six months may be
extended by another period of six months if sufficient
cause is shown. Under Section 111 (d), any goods
which are imported or attempted to be imported or are
brought within the Indian customs waters for the
purpose of being imported, contrary to any prohibition
imposed by law shall be liable to confiscation. The
pirated copyright goods are covered under this
provision.
All infringing copies confiscated under Custom
Act shall not vest in the government but shall be
delivered to the owner of the copyright in the work.
However, importation of one infringing copy of the
work is allowed for the private and domestic use of
the importer. The remedy available to copyright
owner under Section 53 is different from and in
addition to the civil remedy available for the
infringement of copyright under Section 55. The
remedy available under Section 53 of the Act is quasi
– judicial in nature as an appeal can be made to the
Copyright Board against the order of Registrar under
Section 72 of the Copyright Act.
Criminal enforcement
The Copyright Act, 1957 has provided for
enforcement of copyright through a series of penal
provisions under Chapter 13 of the Act. The following
are the principal penal provisions under the Act:
1.Under section 63, where any person knowingly
infringes or abets infringement of the copyright in a
work and any other right as covered by the Copyright
Act, 1957 (broadcast reproduction rights, performers’
rights, moral rights, etc), such person may be
punished with imprisonment of a minimum term of
six months and a maximum term of three years, and a
fine of between 50,000 and 200,000 rupees.
2. Section 65A penalises circumvention of
effective technological measures that may be applied
to copies of a work with the purpose of protecting any
of the rights conferred under the Act (i.e, copyright,
performance rights). The punishment under this
provision is imprisonment that may extend to two
years and payment of a fine. Section 65A was inserted
by the Copyright (Amendment) Act, 2012.
3. Section 65B makes un-authorized removal
or alteration of ‘rights management information’
punishable with imprisonment of up to two years and
payment of a fine. The provision makes the un-
authorized distribution, broadcast or communication
to the public of copies of the work punishable in the
same manner if the person is aware that electronic
rights management information in the copy has been
removed or altered. Section 65B was inserted by the
Copyright (Amendment) Act, 2012.
4. Section 63A provides for enhanced penalty on
second or subsequent convictions under section 63(i).
5. Other provisions in the chapter provide
penalties for offences such as using infringing copies
of a computer program, making or possessing plates
for the purpose of making infringing copies of works,
and making false entries in the Register of Copyrights.