Remedies of Copyright Infringement

This article on ‘Remedies of Copyright Infringement’ discusses civil, administrative and criminal remedies available in case of copyright infringement.

Introduction: Remedies of Copyright Infringement

Simply providing a person with a right is futile unless an effective remedy is provided alongside when the right is infringed. The Copyright Act, 1957 lays down entitles the copyright holder of an intellectual creation with certain remedies and they have been enumerated hereunder:

• Civil Remedies
• Administrative Remedies
• Criminal Remedies

Before discussing the provisions laying down the remedies for an aggrieved copyright holder we must take note of the requirements mentioned hereunder, that a copyright holder has to comply with before seeking remedy:

• The impugned work must be covered within the ambit of subject matter as mentioned in Section 13 of the Copyright Act, 1957.
• Further, the party claiming the remedy must be the owner of the work in accordance to Section 17 or a legal assignee of the copyright by complying with the due process laid down in Section 18 to 21 of the Act.
• Impugned work must satisfy the originality test and this could depend on circumstances and facts of each case.

I. Civil Remedies

There are two types of civil remedies provided under Section 55 of the Copyright Act, 1957 that could be extended when copyright infringement ensues:

• Preventive civil remedies; and

• Compensatory remedies

All the civil remedies are subject to defendant’s knowledge regarding the infringement on the date of infringement and lack of reasonable ground to believe that copyright vested in the work. In case the defendant satisfies the proviso the plaintiff is only entitled to an injunction and entire or part of the profits made by the defendant following the sale of the impugned work.

Preventive measures are implemented on anticipation of infringement i.e. before the actual act of copyright infringement takes place. An interlocutory injunction is one of the remedies which can have a significant effect against copyright infringement. It is basically a legal process which restrains a delinquent threatening to intrude the equitable and legal rights of another by stopping the breach before it can commence or continue or by commanding to restore the right holder’s position prior to the commission of the infringement.

The idea behind the interlocutory injunction is to provide the copyright holder with immediate relief and abstain further damage to his creation. It is well within the discretion of a trial court to render a decision of interlocutory injunction. Furthermore, when a pirated work can be segregated from the unobjectionable part of the work then simply the publication of the pirated part is directed. However, in cases wherein the pirated version cannot be isolated from the copyrighted work then-interim injunction becomes imperative.[1]

The United States has a standard four-part test for determining if an interlocutory injunction should be granted or not:

• Will the plaintiff encounter irreparable damage to his business or work if not provided with an interim injunction
• Whether the threat to the plaintiff’s work outweighs the impending injury to the defendant if the injunction is granted
• Whether the plaintiff has a reasonable possibility to succeed on the merits
• Will ordering the grant of the interlocutory injunction does disservice to the public interest

In India three factors are important to determine if granting an injunction is imperative and those are:

• Establishment of prima facie case
• Whether the balance of convenience is inclined towards the plaintiff
• Ensuring if the injury caused to the plaintiff will be irreparable if interlocutory injunction is not granted

Mareva injunction is a type of interlocutory injunction purported to restrain the defendant from discharging the assets of the plaintiff that may be important for the plaintiff’s claim or bereave the court of jurisdiction. Further, these injunctions are primarily sought ex parte, otherwise, prevention of such disposal cannot be constrained if the plaintiff is made to wait till the final judgement of the case.

In the case of Gujarat Bottling Company Ltd v. Coca Cola Company[2] the Apex court observed that,

“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.”

Generally, the appellate courts do not interfere with the order of a subordinate court unless it finds that the impugned order has overlooked the established principles of law that regulates the grant or denial of interim injunction or where it did not appreciate the material on record or nature of the controversy.[3]

In another case Mirabai Films Pvt Ltd v. Siti Cable Network and Ors,[4] ruled in favour of the plaintiffs holding that

“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 the case of Barbara Taylor Bradford v. Sahara Media Entertainment Ltd.,[5] the court refused to order an interim injunction against the defendants on accounts of the immaturity of the interlocutory application. In Media Transata Ltd v. Indian Airlines Ltd,[6] the plaintiffs were denied interim injunction as they delayed in filing the suit even after possessing the information related to the respondent’s activities.

Now, if the plaintiff successfully establishes that the defendant has caused copyright infringement then the court will entitle him to a permanent injunction restraining the delinquent from causing any future infringements for the duration until copyright subsists in the work. Attaining a permanent injunction does not require the proof of actual damage and mere proof of infringement of copyright is acceptable. However, the claim must show the evident likelihood of infringement and not a trivial claim.

Hereunder are certain grounds when the court may refuse the grant of a permanent injunction:

• No evidence exists to show that the defendant’s activities can threaten or intervene in the plaintiff’s enjoyment of copyright
• The intrusion of rights even if exists then they are theoretical in nature and which would to the maximum provide the plaintiff with nominal damages
• The extent of injury caused to the defendant and is higher than the advantage the plaintiff will derive from the injunction

Compensatory civil remedies could be of the following kinds:

• Damages for concession
• Account of profits
• Delivery of infringing copies

The purpose of awarding damages is to restore the plaintiff to his original position as he was prior to the infringement took place. Generally, the damages are equivalent to the amount the plaintiff would have charged had the defendant requested a license of the work. For assessing the amount of damages there are certain other factors to be taken into consideration like – the reduction in the extent of sales of the right holder, losses incurred in profit which he otherwise could have made, injury to reputation, etc.

Section 58 of the Indian Copyright Act, 1957 mandates that the right holder can initiate recovery proceeding against the defendants possessing infringing copies of his work and plates used. Also, all the plates intended to be used in the production of further infringing copies can also be recovered.

The plaintiff can also claim for all the profits incurred by the defendant as a result of the sale of the copyrighted work of the plaintiff in case any. The plaintiff can either opt for the account of profits or for damages, but not for both concurrently.

Even the TRIPS Agreement lays down provisions enforcing remedies for copyright holders. Hereunder are the provisions that provide for the same:

Article 44: This provision lays down for injunction to prohibit the import of goods involving infringement of an intellectual property right, right after they complete their customs checking.

Further, the TRIPS Agreement also requires the judicial authority of the member states to collect and preserve relevant evidence related to the alleged violation of IPR. Additionally, the authorities on identifying a demonstrable risk of evidence being defaced can which could in all likelihood cause irreparable losses to the plaintiff can direct for the enforcement of provisional measures without hearing the other party.

In such a case, the plaintiff is required to establish before the court with “sufficient degree of certainty” that the plaintiff is the copyright holder and his rights are being violated by the defendant. Further, the plaintiff is also required to furnish security or equivalent assurance to protect the rights of the defendants in case the final judgement is in favour of the defendant.[7] Additionally, the TRIPS Agreement also provides for damages to the aggrieved party due to infringement.

II. Administrative Remedy

Section 53 (1) of the Indian Copyright Act, 1957 authorizes the Registrar of copyright to make an order obstructing the importation of copies of work in which copyright subsists into India if brought without the permission of the copyright holder. Furthermore, clause (2) mandates that the Registrar of copyrights himself or any person authorised by him may enter any dock or ship or premise where any infringing copies are suspected to present and examine them. The provision is important to ensure that copies of infringed work of the applicant are stopped from being circulated.

Section 11 of the Customs Act, 1963 lays down that the Central Government if satisfied that it is imperative for the protection of copyrights, patents and trademarks, it may obstruct subject to certain conditions or absolutely the export and import of goods satisfying the aforementioned description. All the infringing copies seized under Customs Act shall not remain with the government but shall be delivered to the copyright holder of the work. Nevertheless, copyright infringement does not take place if an infringing copy of work is imported for private and domestic use by the person importing.

III. Criminal Remedies

Criminal proceedings can be initiated against the person involved in the infringement. The criminal remedies provided under the Copyright Act are separate and independent of the other remedies and can be resorted to concurrently to curtail further infringement and punish the delinquent.

Chapter XIII, extending from Section 63 to 70 are related to offences with respect to copyright. Any person who with all the knowledge about the infringement commits the act of:

• Infringement of a copyrighted work
• Or breached any other right which the Act confers
• Or abets such infringement

Such person is guilty of the offence of infringement of copyright and is punishable with imprisonment for which must not be less than 6 months and which may extend till 3 years along with a fine of a range Rs. 50,000 to 2 lacs. Further, any police officer as provided under Section 64, above the rank of sub-inspector if has reasonable cause to believe regarding the offence under Section 63 has been, is being or is likely to be committed, seize without a warrant all the copies of such work and any plates used to make such infringing copies of work.

In fact, with regard to any person possessing or making any plate with knowledge of committing copyright infringement is guilty of an offence under Section 65 and is thereby punishable of imprisonment for a term of 2 years and fine. Section 66 says that such infringing copies or plates may be ordered to be disposed off by the court or delivered to the owner of the copyright even when the alleged offender has not been convicted.

The constitutional validity of Section 64 was challenged in the case of Girish Gandhi v. Union of India,[8] on the grounds that since the section is not substantiated with any procedure, hence the section is arbitrary and in violation of the constitutional rights. The court dismissed the issue observing that the term ‘satisfaction’ occurring in Section 63 entails the due process of collection of relevant information before the police officer can proceed with the seizure of material. Such satisfaction ought to be objective.

Section 63A mandates that for repeat offenders the minimum term of imprisonment is maximised to 1 year along with a fine of 1 Lac which may be reduced according to the discretion of the judge after considering adequate and special reasons showing that the infringement was not committed for gain in course of business or trade. Also, Section 63 provides for a non-bailable offence.

Section 63B lays down that any person making use of a computer programme with knowledge of it being an infringing copy shall be sentenced to imprisonment for a minimum term of 7 days and which can extend till 3 years along with a fine of 50,000 to 2 lacs. However, the sentence can be reduced depending on the discretion of the judge after considering adequate and special reasons that the programme was not used for the gain in business and trade.

Section 68A mandates the compliance of Section 52A to ensure that certain information imperative to be supplied on a sound recording or video film with respect to the name and address of the person who has made the work is not withheld. Anyone deviating from such provisions can be found guilty and imprisoned for a term that may extend till 3 years along with fine.

In the case of State of Andhra Pradesh v Nagoti Venkararamane, the Apex court was posed with the issue of whether the identification of the owner of the copyright is required to convict an offender under the Copyright Act, 1957. The court observed that the objective of Section 52A was to prohibit piracy of cinematographic films and sound recording. Therefore, if the prosecutors are mandated to track the identity of the owner of the copyrighted work in order to adduce evidence, then this objective would be defeated.

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[1] Ghaffur Bux v. Jwala Prasad, (1921) Indian Law Reports, 43 All. 412

[2] Gujarat Bottling Company Ltd v. Coca Cola Company, A.I.R. 1995 S.C. 2372

[3] Wander Ltd. v. Antox India Pvt. Ltd, 1991 PTC 1 (S.C.)

[4] Mirabai Films Pvt Ltd v. Siti Cable Network and Ors, 2003 (26) P.T.C 473 Del (D.B)

[5] Barbara Taylord Bradford v. Sahara Media Entertainment Ltd, 2004 (28) P.T.C. 474 (Cal.) (D.B.)

[6] Media Transata Ltd v. Indian Airlines Ltd 2003 (26) PTC 294 (D.B.) (Del.)

[7] Article 50, TRIPS Agreement

[8] Girish Gandhi v. Union of India, A.I.R. 1997 Raj 78

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