Copyright

Where do I file my suit?: Jurisdictional issues in IPRS v. Sanjay Dalia


Our readers will remember that in September we had reported about the reference made by Justice Bhat with respect to the important question of jurisdiction in the Banyan Tree case. While that reference made to the Division Bench is now underway, yet another decision from the Delhi High Court has come to our attention examining the same, basic question of jurisdiction.

In IPRS v. Sanjay Dalia, the Delhi High Court was faced with a question of alleged public screening of copyrighted material without a license. However, herein the bone of contention lay in the filing of the suit within the jurisdiction of the Delhi High Court- where the Defendants had a branch office, but as per the admission of the Plaintiff, no cause of action had arisen.
What makes this decision so different? The importation of principles of civil procedure in a suit that is evidently relating to a copyright issue. The learned Judge in the present case has decided to look at Section 20 of the Code of Civil Procedure in conjunction with the specific provisions already available in the Copyright Act and its sister provision in the Trademark Act.

For our readers who are not too familiar with the wording of these Sections, this is the difference between the provisions- Simply put, Section 20 of the Code of Civil Procedure states that all suits instituted must be at the place where the defendant or one of the defendants reside, carry on business or personally work for gain or where the cause of action arises wholly or in part. On the other hand, in what seems almost contradictory, Section 62 of the Copyright Act and Section 134 of the Trademarks Act, favour the Plaintiff and notwithstanding anything contained in Section 20 of the Code of Civil Procedure allow for the institution of the suit by the Plaintiff at any district Court where the Plaintiff “actually and voluntarily resides or carries on business or personally works for gain.”

What was held? (November 19th, 2008)
Both parties relied on several cases to prove their stand as to why the Delhi High Court possessed/ did not possess the requisite jurisdiction to hear the matter. The Court, however in this matter dealing purely with alleged use of copyright, held in favour of the defendants by placing reliance on several cases dealing with the interpretation of Section 20 of the Code of Civil Procedure. Stating that the cause of action was an aspect inseparable from the suit itself, the Learned Judge read Section 20 of the CPC conjunctively with the jurisdictional provisions contained in the Copyright and Trademark Act.

Notably, in the Banyan Tree case, Justice Bhat proposed an amendment to the provisions of the Copyright and Trademark Act since he believed the same to be contradictory, which in my post I respectfully disagreed with. I still continue to hold that view. Following the rules of interpretation, a plain reading of the statue is mandated. Therein, the cause of action giving rise to jurisdiction is a component wholly outside the Copyright or Trademark Act, which in the opinion of this blogger, can only be imported from the CPC in cases where none of the conditions stated in the relevant provisions of the Copyright or Trademark Act are satisfied.

Therefore in a hypothetical situation where the infringement takes place in India but the Plaintiff is neither a resident, nor does he carry on a business in India, or have an office here- only then can the jurisdiction under Section 20 of the Code of Civil Procedure be invoked.

While the Court in this decision believes that an interpretation of this sort would provide an “ameliorative advantage” to the Plaintiff and establish that litigation as “a device of harassment calculated to force an adversary into succumbing into settlement for fear of fighting a lis at an inconvenient venue”, this is the mandate of the statute.

One of the main principles reiterated by Courts time and again, is that the Judiciary cannot make law, or interpret the law in a manner that changes legislative intent. In the present case however, I fear that this is exactly what the Honourable Judge has in fact done, which is erroneous, and should hopefully be corrected as soon as possible.

9 comments.

  1. AvatarAnonymous

    “…and establish that litigation as “a device of harassment calculated to force an adversary into succumbing into settlement for fear of fighting a lis at an inconvenient venue”, this is the mandate of the statute.”

    Specifically with respect to this argument, if a statute does indeed have the effect of being a “device of harassment” it is an absurd construction to say that the legislature intended such harassment? Is it not open to Courts to avoid absurd constructions? Isn’t the legislature presumed not to have intended absurd consequences?

    Of course you could argue that the effect was not of harrasment; but assuming that this was the effect, surely it is open to Courts (paraphrasing Lord Denning) to iron out the creases without destroying the texture of legislative fabric?

    Section 134 does not take away CPC jurisdiction; it grants additional jurisdiction. With the result that sometimes 2 forums will have jurisdiction, one under CPC and one under Trademarks Act. Can Courts not, in that case, read in a requirement that the particular forum must also be a convenient forum in terms of the particular case before the Court? That way, in cases of “harassment”, a Court will decline jurisdiction… (I am arguing that the Court must read in in Section 134 something analogous to the conflict of laws principles surrounding forum selection and non conveniens – I think that given that harassment is possible, it must necessarily be open to Courts to decline to exercise jurisdiction in certain cases…)

    Regards,

    Another Anon. Cow.

    Reply
  2. AvatarKruttika Vijay

    Dear AAC

    Let us first acknowledge, that Section 134 does not grant “additional jurisdiction” with respect to trademark disputes. It grants _the_ jurisdiction for Courts, and this is notwithstanding anything contained in the CPC.

    What you and many others may consider an absurd construction, is in fact the intent of the Legislature upon consideration of the provision in question.

    Also to be noted is that the CPC is a 1908 statute, and the TM Act was enacted in 1999. Why is it so difficult to imagine that the framers of this statute being fully aware of the way that the CPC confers jurisdiction, chose to grant a marginal advantage to the Plaintiffs in trademark disputes?

    Perhaps instead of being caught up in the way that the CPC seems to conflict or superscede the TM Act, using another principle of interpretation, let us save the true intent of the framers and attempt a harmonious interpretation.

    However as we all know, this of course is open to debate and is a decision that will in all probability be appealed against.

    Reply
  3. AvatarAnonymous

    “Why is it so difficult to imagine that the framers of this statute being fully aware of the way that the CPC confers jurisdiction, chose to grant a marginal advantage to the Plaintiffs in trademark disputes?”

    Why is it so hard to imagine that the legislature granted a discretion to Courts as to when plaintiffs may have a marginal advantage?

    Assume for a moment that the situation involves not just a marginal advantage to the plaintiff, but is tantamount to harassment of defendant. Surely, the legislature did not intend harassment of defendants? If you concede this, then you must concede that it is up to the Courts whether or not to let the plaintiff proceed. Indeed, this is the correct harmonious interpretation in my humble opinion.

    Regards,
    AAC

    Reply
  4. AvatarAnonymous Coward

    I’m in the pleasant position of disagreeing with both the above perspectives.

    @Kruttika
    You have misunderstood the non obstante clause contained in both section 62 of the Copyright Act and section 134 of the Trade Mark Act. Let’s read them carefully:

    Section 62 of the Copyright Act
    Jurisdiction of court over matters arising under this Chapter [that is, the chapter XII, dealing with civil remedies]
    (1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.

    (2) For the purpose of sub section (1), a “district court having jurisdiction” shall notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908), or any other law for the time being in force, include a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.

    Section 134 of the Trade Mark Act
    Suit for infringement, etc., to be instituted before District Court
    (1) No suit
    (a) for the infringement of a registered trade mark; or
    (b) relating to any right in a registered trade mark; or
    (c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

    (2) For the purpose of clauses (a) and (b) of sub-section (1), a “District Court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or ca ries on business or personally works for gain.

    Explanation. For the purposes of sub-section (2), “person” includes the registered proprietor and the registered user.


    Now, what is does the non obstante clause deal with? “District court having jurisdiction”. What does the non obstante clause do? Gives that phrase an inclusive definition.

    What effect does all this have? Consider the following questions and answers.
    1. In which court must a civil suit for TM and copyright infringement be filed?
    It must be filed in a district court.
    2. Which district court?
    A district court that includes the plaintiff’s local district court.
    3. That still doesn’t answer the question: which district court?
    Well, the district court that is mentioned in the CPC as the appropriate court is the default for all civil proceedings, and the TMA and the Copyright Act include these other district courts as well. Since the plaintiff is the one who files the case, she has a choice as to where to file it.

    Thus, AAC is correct when she asserts that it is “additional” jurisdiction. It does not do away with the CPC’s idea of jurisdiction. It adds to it.


    I’ve completely lost you here:
    “Therein, the cause of action giving rise to jurisdiction is a component wholly outside the Copyright or Trademark Act, which in the opinion of this blogger, can only be imported from the CPC in cases where none of the conditions stated in the relevant provisions of the Copyright or Trademark Act are satisfied.”

    Could you please explain what that means? How is “cause of action” “wholly outside” the relevant statutes? When I’m filing a case for trade mark infringement or copyright infringement doesn’t that cause of action arise from a statutory provision, which I have to quote along with Order VI of the CPC? As I said, I completely lost your line of reasoning there.


    “Therefore in a hypothetical situation where the infringement takes place in India but the Plaintiff is neither a resident, nor does he carry on a business in India, or have an office here- only then can the jurisdiction under Section 20 of the Code of Civil Procedure be invoked.”

    This is patently wrong. The plaintiff has a choice. The Trade Mark Act does not mandate the location of his filing of suit, only the heirarchical position of the court. Thus, it must be a district court. Which district court? Any district court which has jurisdiction. Which district court has jurisdiction? Any district court that falls under s.20 of the CPC or s.62/174 of the ICA/TMA. The plaintiff can choose to file where the defendant resides. It is another matter that she won’t. But the plaintiff has that choice.

    You state:
    “While the Court in this decision believes that an interpretation of this sort would provide an ‘ameliorative advantage’ to the Plaintiff and establish that litigation as ‘a device of harassment calculated to force an adversary into succumbing into settlement for fear of fighting a lis at an inconvenient venue’, this is the mandate of the statute.”

    I disagree. That is perhaps the privilege the statute allows the plaintiff. It is most definitely not the mandate of the statute. To prove the latter, you will have to show that the statute asserts that courts having jurisdiction cannot decline to exercise such jurisdiction on any grounds (or on the ground that a more convenient forum exists). As far as I know (and I may well be wrong on this point), no statute asserts that. AFAIK, that is the interpretation that the Supreme Court has given to the CPC.

    @AAC
    You state:
    . . .it is an absurd construction to say that the legislature intended such harassment? Is it not open to Courts to avoid absurd constructions?

    True, it is absurd to suggest that the legislature intends such harassment. But it is most definitely not absurd to suggest that the legislature intends to give the plaintiff choice of jurisdiction. That such choice leads to hardship on the defendant does not, in and of itself, display the intention of the legislature to harass the defendant, and prove the existence of an absurdity. You are missing a link there. To prove absurdity, you need to prove that the only way that sections 62 and 174 can be read is as harming citizens wihout any justification, and that such a reading is most absurd. When more beneficial readings can be made of the sections, the question of absurdity does not arise.

    Oops. Sorry, just now read your Denning comment (after writing the above). But, I believe my point stands still. While the effect might be that of harassment, that does not point to an absurdity, but rather a hardship.


    The last paragraph of your first comment makes an excellent point, but I am not sure it rests on sound legal reasoning. Importantly, I think (though, I can’t make an assertion of this) that you are conflating jurisdiction in Private International Law, and domestic jurisdiction. Can a court (in a domestic civil dispute), which is possessed of jurisdiction, decline to hear a case by saying that it is not the most convenient forum? I am not so sure. And I won’t be convinced until you show me proper Indian case law to back your argument.

    … And don’t I feel the fool now. I just finished reading your last paragraph. And, I take back my nasty comments about you conflating concepts from two realms, etc. You are well aware of the difference and are making an argument for that concept to be brought into Indian law of civil jurisdiction.

    Well, all I can say is that I’m not sure that attempt will succeed. I vaguely recall cases asserting “if a court has jurisdiction, it cannot refuse to exercise it”. In any case, that would be the default position. So, to make an argument to the contrary (and make it fly with the courts), you’ll have to construct it out of case law.

    But, it _is_ a very interesting and creative idea.


    All in all, quite an interesting discussion. And it is also interesting to see the sudden rushing of cowards to this blog. I most definitely do welcome the phenomenon.

    – Anon. Cow.

    Reply
  5. AvatarAnonymous

    Hi AC,

    You might be aware that one of the leading Indian decisions on forum non conveniens in the private intl. law background is the SC decision in Modi Entertainment (2003). Now, the Madras HC in a decision in October 2008 has applied the principle of Modi in the case of a conflict between two domestic jurisdiction-conferring Acts. One of the many issues in the case was whether the court could issue an anti-suit injunction restraining a party from instituting a suit before a tribunal created under a special enactment. In deciding when such an injunction could be issued, the Court relied on the principles of Modi. So perhaps there is authority for bringing in PIL concepts in issues of domestic civil jurisdiction.

    It’s worth a shot I’d say… about even chances that a Court will accept this. Especially if this argument were to be made in a case of patent harassment (and I am not saying that every juridical advantage to P amounts to harassment of D) a Court may well buy it.

    (Sorry for being a bit low on citations; I am not in India and have no access to the reports for a few days. Again, my practice area is not related to the subject-matter of the Madras decision, so I just read the decision cursorily. Will update my thoughts once I am able to read the judgment again.)

    Regards,

    AAC.

    Reply
  6. AvatarKruttika Vijay

    Dear AC and AAC

    Upon receiving your comments (extensive comments, might I add), I decide to do a little bit of extra reading and would admit that I may have read the statute slightly wrong.

    I still believe that when you read a statute you have to primarily refer to that statute when you decide the jurisdiction. But upon reading the provision, I think I may have been wrong in saying that the CPC can only be invoked if all the situations of the TM act do not fit in. However, I still believe that the CPC cannot superscede the statute.

    Thank you for all your comments. I hope this clarifies what I am trying to say now.

    Reply
  7. AvatarAnonymous

    Kruttika,

    First of all I should appreciate your intellectual honesty in accepting that your initial views may have to be modified and/or clarified.

    Note that I agree with you that the CPC will not generally supersede the specific Act. I agree with this which is why I said in my last comment that not every juridical disadvantage amounts to undue harassment. Nonetheless, I believe that Courts should have the convenience of refusing to hear a case for the reasons I mentioned in my earlier comment. Undoubtedly, this discretion must be exercised sparingly and for strong reasons. That does not mean that the discretion itself does not exist.

    Regards,

    AAC

    Reply
  8. AvatarAnonymous

    “All in all, quite an interesting discussion. And it is also interesting to see the sudden rushing of cowards to this blog. I most definitely do welcome the phenomenon.”

    Credit goes to AC, who despite being heavily (and sometimes unduly) sarcastic in his comments always makes a strong point.

    Regards,

    AAC.

    Reply
  9. AvatarAnonymous Coward

    @Kruttika
    Like a ping-pong ball I go from your “still believes” to your “I admits”. But upon a second reading things seem clearer. So, to answer you question: yes, I think where you stand now is reasonably apparent to others.

    @AAC
    Thanks Comrade AAC for the credit.
    Also, I have heard of (and cited in law school exams) Modi Entertainment, though haven’t read the case. Given how interesting the argument is, I might get down to reading it (and that Madras HC case you’ve mentioned) sometime next week, time permitting.

    Reply

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