According to the Indian Copyright law, a copyright is an automatic right. Once an idea is fixed to a tangible medium, it acquires protection under the copyright laws. The Section 13 of the Copyright Act, 1957 (Act) titled “works in which the copyright subsists” includes in the ambit of copyright protection, original literary, dramatic, musical and artistic works; cinematograph films; and sound recordings. What is important for the purpose of this topic is the fact that the only pre-condition that the works so mentioned need to adhere to is “Originality”. Further, Section 45 of the Act which deals with Application for Registration of Copyright, provides that “The author or publisher of, or the owner of or other person interested in the copyright in, any work may make an application in the prescribed form…”. This section makes it clear that registration of the copyright is not a necessary condition but is up to the choice of the owner of the copyright. Time and again, various sources, which include the Copyright Registry’s website and the various precedents provide for just one essential to be fulfilled to be eligible for copyright protection, and that is the test of originality. However, as simple as it may seem, the answer to the question that whether copyright registration is mandatory, is far from simple.
Various judgments by different High Courts have actually laid down registration as a mandatory pre-condition, complicating the position of law over the question. These include judgments such as Gulfam Exporters and Ors. V. Sayed Hamid and Ors[1] (Bombay High Court), Dhiraj Dewani v. Sonal Infosystems [2](Bombay High Court) Brundaban Sahu v. B. Rajendra Subudhi [3](Orissa HighCourt) and Mishra Bandhu Karyalaya and Ors. v. Shivratanlal Koshalwhich [4](M.P. High Court). Of these, the case of Dhiraj Dewani v. Sonal Infosystems, is the most important for the present discussion, as it is the one that has been cited and dealt with majorly in the recent judgment of Sanjay Soya v. Narayani Trading[5] laid down by the Bombay High Court.
The case of Sanjay Soya v. Narayani Trading carefully scrutinised the provisions of the Copyright Act, 1957 and the Dhiraj Dewani case, before concluding that registration of copyright is not mandatory in order to obtain relief in an infringement action. This judgment has for the time being, come to the rescue, laying the controversy to a rest.
Facts of Sanjay Soya v. Narayani Trading
Both the parties were involved in the business of marketing and selling edible cooking oils of various types, including the product which was the source of the dispute – soyabean oil. The dispute arose with respect to the artistic work of the registered label mark on the products. It must be noted that artistic works are eligible for copyright protection under Section 2(c) of the Act.
The plaintiff had been using the artistic work on his label since May 2003, even before the defendant. However, the work was not registered under the Copyright Act, 1957. The plaintiff later came to know that the defendant had been using a similar artistic work as a label mark for their packaging. The label was similar to that of plaintiff in terms of design, colour and font. This level of similarity, according to the plaintiff was an infringement of their trademark in the label mark and copyrights in the artistic work.
The defendant inter alia contended that the label used by them was different from that of the plaintiff. It was also contended by the defendant that plaintiff was a legal entity, and not a natural person, which puts them outside the purview of the meaning of author given in Section 2(d) of the Copyright Act, 1957. Further, relying on the judgment of Dhiraj Dewani, the defendant contended that since the plaintiff had not registered the label under the Copyright Act, they could not claim relief under the same. It was also argued by the defendant that since the plaintiff had registered the label as a trademark, and could not claim protection for the mark under copyright as an artistic work.
Decision of the Court
In a detailed and elaborately laid down judgment, the court extensively referred to and analysed the current position of law and the precedents laid down on the question. The most referred judgment, that was also overruled was the Dhiraj Dewani v. Sonal Infosystems, laid down by a single judge bench of the Bombay High Court. After dissecting the case in great detail, the court consequently held that the judgment was unreliable. The ratio decidendi that was laid down in the case was, that copyright registration is mandatory to seek remedies.
The court, in Sanjay Soya pointed out that provisions of law pertaining to trademark and copyright are distinct and incomparable. Both the provisions cannot be put on the same footing and doing so will lead to misinterpretation. While the registration of trademark grants additional benefits upon the proprietor, same is not true in case of copyright registration. As per the Section 29 of Trademark Act, 1999, registration of the mark enables the proprietor to bring an action of infringement against anyone who copies the mark without authorisation. However, there is no such provision in the Copyright Act, 1957 that grants any such extra rights to the owner/creator. The court held that both the rights are distinct, operating in completely different domains. These domains may overlap from time to time, where different intellectual property rights may be attributed to one work. For example, a work may be eligible for trademark registration for the label along with copyright registration for the artistic element in it. However, both of these rights are completely different in essence and nature, monitored by completely different sets of laws. On one hand, the trademark law lays down registration as essential to sue for infringement, on the other hand, copyright law only demands for originality.
The court also referred to Sections 51 and 45(1) of the Copyright Act, 1957, stating that neither refers to registration as mandatory. The Section 45(1) only lays down an option to the owner that they may apply for copyright registration. Further, the Berne Convention of 1886, to which India is a signatory, lays down three fundamentals for copyright protection, national treatment, automatic protection (protection without any conditional compliance or formality), and independence of protection. This makes copyright protection free of any compliance or formality, including registration.
Classic Trinity
In order to determine the question of infringement, the court referred to the concept of ‘Classic Trinity’ that was laid down in Oliver LJ in Reckitt & Colman Products Ltd v. Borden Inc.[6] According to the rule of classic trinity, in a claim of passing off, the plaintiff needs to show,
- goodwill owned by the claimant
- misrepresentation
- damage to the goodwill of claimant
The court also clarified that fraud is not necessary. The plaintiff only has to show that false representation of the mark by the defendant has the likelihood to lead the public into believing that goods or services are that of the plaintiff. And this likelihood is tested on the customer’s perception and viewpoint. Hence, the plaintiff does not have to prove actual or special damage and reasonable foreseeability of confusion is enough.
Applying the Classic Trinity test, the court concluded that Sanjay Soya had prima facie proven the three points. Looking at the packaging of both the products, court said “which is whose? I cannot tell”, proving the deceptive similarity of the mark adopted by defendant to that of plaintiff. Stating the defence taken by Narayani Trading as “utterly frivolous and possibly moonshine”, the court imposed costs on them.
The decision has come as a relief and a much needed solution to the confusion around the issue of whether registration is necessary for protection under the Copyright Act. The decision has given a much needed clarity and alleviates the misuse that was being propagated because of the faulty judgment laid down in Dhiraj Dewani. The decision is a major leap towards promotion of creativity, as it shields creators of creative copyrightable works from rigorous process of copyright registration.
[1] 2000 (20) PTC 496 Bom
[2] 2012(3)ALLMR209
[3] 1986 (6) PTC 322
[4]1970 AIR(MP) 261
[5] IA(L) 5011/2020 in COMIP(L) 2/2020
[6] [1990] 1 All E.R. 873
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