It all started with an order dated 28.03.2008 passed by the Commissioner of Customs (Export), JNCH, Nhava Sheva, in the matter of AMI International v. Commissioner of Customs (Export), MANU/CM/0028/2009, confiscating 626 cartons of Printed Books that were being consigned from Mumbai by a company named M/s Ami International, to the Ethiopian Ministry of Education. On examination, it had been found that the books under export were not original books, but photocopies of the same (as many as 23 different titles, no less!) bound in book form.
Despite being asked by the customs authorities to produce the details of copyrights of the books under export and to furnish license from the copyright owners, permitting such photocopying, M/s Ami International failed to do either. However, the latter did state of having procured a tender from the Ethiopian Ministry of Education, through an agent to photocopy various titles of books for the purpose of use in libraries of
On further enquiry, the Customs Authorities discovered that the copyright for one of the books rests with M/s Prentice Hall of India Pvt. Ltd., who claimed that the export of the said goods by any other person is violation of their right and, therefore, they requested detention of the books attempted to be exported. Subsequently, a Show Cause Notice was issued by the Customs Authority to M/s Ami International proposing confiscation of the goods in question and also proposing imposition of the penalty, on the grounds that M/s Ami were in violation of Sections 51(a) and (b) of the Indian Copyright Act, 1957 and therefore, export of said photocopies were prohibited by Sections 11(2)(n) and 11(2)(u) of the Customs Act, 1962 and hence the said consignment ought to be confiscated under Section 113(d) of the 1962 Act. The Commissioner adjudicated in accordance with this view, following which an appeal was lodged by M/s Ami before the Customs, Excise and Service Tax Appellate Tribunal. The appellants raised several contentions, not all of which were without merit, viz.
(a) that the Customs Act cannot apply to violation of Section 51 of the Copyright Act,
(b) that under the Copyright Act, only violation of Section 53 has been extended as a prohibition under Section 11 of the Customs Act,
(c) that there is no provision prohibiting alleged illegal export of infringing works in the Copyright Act similar to Section 53 thereof that prohibits importation of infringing work,
(d) that before invoking Section 51, the Commissioner ought to have framed issue and recorded finding whether Copyright subsist or exist in the impugned works, for which Sections 13, 16, Chapters V & IX etc of the Copyright Act are required to be considered,
(e) that the Commissioner is not an authority to adjudicate either violation of Section 51 or the issue whether Copyright exist or subsist in the work and that a Custom Officer has only the power to confiscate goods, which are declared prohibited goods and not adjudicate and declare prohibition and
(f) that there is no violation of the Section 51 of the Copyright Act, 1957, as Reprography does not constitute infringement.
In support of their contentions, the appellants relied on cases like B.K. Dani v. State of M.P. reported in 2005 -Crlj-0-876, 2005 (TLS) 1404631, Commissioner of Central Excise, Jaipur v. Pukharaj Moondra MANU/CE/0236/2001 and Penguin Books Ltd. England v. India Book Distribution MANU/DE/0402/1984 as well as commentaries such as “Law Relating to Intellectual Property” by Dr. B.L. Wadhera, Fourth Edition (page 320).
A.K. Srivastava, Member of the Tribunal, held that the Commissioner should make comprehensive reference to the competent authority in the Copyright Act giving full facts of the case and details of all the 23 photocopied books in question and take appropriate action as per law on receipt of the clarification from him in this regard. Regarding the legal issues raised, he held that since said issues had not been raised by the appellants before the Commissioner, in the absence of any finding of the Commissioner, he cannot reach at a conclusion regarding the same and hence remanded the matter to the Commissioner for de novo decision.
As has been said, the points raised by the appellants do not seem entirely devoid of merit. The question as to the jurisdictional capacity of the Commissioner in particular is one of considerable importance. One can also wonder as to whether the Commissioner can adjudicate issues regarding his own jurisdiction, as the Tribunal has obviously directed him to do in an extension of the well-known kompetenz-kompetenz principle prevalent in arbitration. Having said that, it is obviously an event to bring hope to the advocates of stronger intellectual property regime, since it paves the way for better enforcement of copyright law in particular with the invaluable help of an agency that has hereinbefore remained neutral about the same.
p.s. The author is grateful to Ashly Vasu of Manupatra and thanks the same on behalf of Spicy IP members for drawing attention to this interesting (but neglected so far) case.
