Copyright

R.I.P. the Doctrine of First Sale & Privity in Contract – The Tale of the Publishing Industry & the Delhi High Court


 In 2 peculiar judgments, in the cases of John Wiley & Sons & Ors. v. Prabhat Chander Kumar Jain & Ors. CS (OS) No.1960/2008 and John Wiley & Sons v. International Book Stores & Ors. CS(OS) No. 2488/2008, the Delhi High Court has restrained the Defendants, from exporting low-priced Indian editions, which were bought from the Plaintiffs, to foreign markets such as the U.S.A. While the first case was contested and decided by Justice Manmohan Singh, the second case proceeded ex-parte and was decided by Justice Ravindra Bhat. Both cases were decided under the Copyright Act, 1957.

THE FIRST CASE – 17th May, 2010

(i) Facts: The Plaintiffs in this case, Pearson Education, John Wiley & Sons etc. who are foreign publishing houses (No. 1,3,5) and their exclusive licensees (No. 2,4,6) all of whom were subsidiaries, were in the business of selling low-priced editions of advanced educational books in the Indian sub-continent. There was a notable qualitative difference between the American edition and the Indian edition of the Plaintiff’s books in terms of quality of paper, printing and accompanying online features. The content however was same. The price difference between the Indian version and the U.S. version was substantial, upto 150 U.S. dollars for some editions. The Defendants, cunning Indian businessmen that they were, setup a website, to sell the low priced Indian editions to customers in the U.S.A. The Plaintiffs therefore filed the present lawsuit in India to shut down the Defendant’s business and website.

(ii) Previous litigation between both parties: Apart from the Indian law suit, the Plaintiffs also filed a lawsuit against the Defendants in the United States District Court, Southern District of New York (S.D.N.Y). A search of the SDNY’s docket reveal’s that the Plaintiffs, collectively, have pursued and won several such actions against defendants in identical fact situations. I was initially under the impression that the Defendants in such actions would have succeeded in the U.S.A. under the ‘first sale doctrine’, spelt out in Section 109(a) of the U.S. Copyright Act, 1976. As per this provision of law once a person has bought a lawfully produced copy of a copyrighted work, he is free to further sell or dispose that copy without the permission of the copyright owner. However as clarified by the SDNY court in the identical case of Pearson Education & Ors. v. Vinod Kumar & Ors. No. 1: 07 – CV – 9399, the first-sale doctrine does not extend to works manufactured outside the U.S.A. Therefore a low-priced edition manufactured in India will not be protected by U.S. law. The Defendants in the present case did not contest the American lawsuit against them and instead settled with the Plaintiffs by agreeing to not indulge in any such activities in the future. The Indian action however continued as the Defendants decided to put up a fight.

As a normal practice I usually summarize the arguments put forth by both the parties. However, given the nature of the wholly meritless arguments put worth by the Plaintiffs’ counsel, I’d much rather skip the exercise this time around. The Defendants however put forth some note-worthy arguments.

(iii) The Delhi High Court’s judgment: In this judgment the Delhi High Court surprisingly disregarded the applicability of the first sale doctrine within India when it restrained the Defendants from exporting the books bought from the Plaintiffs. The judgment tries to give several different reasons for coming to this conclusion. I’ve dealt with the main contentions below:

(a) The terms of the licensing agreement between the Plaintiffs are binding on the Defendant: This convoluted judgment starts of with an entirely misguided attempt to establish a case of copyright infringement on the basis of the licensing agreements between the Plaintiffs.

In order to establish this the judgment discusses the nature of the agreement between the Copyright Owners (Plaintiffs No. 1,3,5) and the Exclusive Licensees (No. 2,4,6) and how the licensing agreement extended to circulation of the copies only within the Indian territory and no further. The judge then delves into a wholly unnecessary discussion on Sections, 19,19A & 30 of the Copyright Act, 1957 in order to establish that territorial licensing agreements for copyright are recognized by the law. He however fails to distinguish that these licensing agreement pertain only to the right of publication and not necessarily to the right to circulate copies already in the market. In paras 75-80 of the judgment, it is argued by the Judge that the terms of the licence are binding not only between the Plaintiffs but also any person who subsequently purchases the book i.e. to say that the Defendants would be bound by the terms of the licensing agreement between the Plaintiffs and that by selling the books in territories not covered by the licensing agreement the Defendant would be infringing the copyright of the Plaintiffs as defined in Section 51 of the Copyright Act since he would in fact be violating the licensing agreement between the Plaintiffs! (para 75)

This is a patently wrong interpretation of the law especially since the doctrine of privity in contract makes it amply clear that a contract is binding only on the parties to the contract and not on any third party.  The terms of the licence between the Plaintiffs are not binding on the Defendants unless the Defendants have expressly agreed to the terms of the licence, as would have happened in a software licensing agreement, when the customer clicks on the ‘I agree’ button. Even then it is not certain that the transaction would have been characterized as a licence and not as sale. We’ve discussed one such case here. In the absence of an express agreement between the Plaintiffs and the Defendants, the latter is bound by only the rights and exceptions as understood under the Copyright Act, 1957.

(b) The Doctrine of First Sale: Ideally the Plaintiff’s case should have been dismissed on the grounds the Defendant’s activities were perfectly legitimate under the First Sale Doctrine. As already explained above, under the first-sale doctrine, once a person has bought a lawfully produced copy of a copyrighted work, he is free to further sell or dispose that copy without the permission of the copyright owner. Section 14 of the Copyright Act, 1957 recognizes the First Sale Doctrine with respect to literary works. In relevant part Section 14 states by virtue of having a copyright the owner of such copyright would have the sole right “to issue copies of the work to the public not being copies already in circulation”. This is followed by an Explanation which states that “For the purposes of this section, a copy which has been sold once shall be deemed to be a copy already in circulation”. The copyright owner is therefore allowed to control the terms of only the first sale and no sale beyond the first sale. Therefore copies already in circulation can be further ‘issued’ by the subsequent owners of those copies. The subsequent owners however are bound by the other conditions of the Copyright Act i.e. they cannot reproduce copies of the books. ‘Grey markets’ i.e. second hand book stores are legitimate only because of the first sale doctrine.

In this particular case the Delhi High Court held that the first sale doctrine was applicable only qua the exclusive licensees (i.e. No. 2,4,6) and not the owners (1,3,5) who will continue to have a cuase of action against the Defendants!!!! (para 100) It is inconsequential as to whether a copy of the work has been sold by the licensee or the owner. The only criterion is whether the copy of the work has been legitimately sold i.e. as long as the licensee is duly authorized by the owner, the sale is valid and the doctrine of first sale will kick in.

The judgment further states “The purchaser after purchasing from the exclusive licensee cannot by claiming the principle of exhaustion or extinguishment of rights defeat the rights of the owner. This is the only harmonious interpretation possible by invocation of doctrine of first sales in the present case.” This is a prima facie wrong conclusion and is not substantiated by any cogent reasoning, especially since the judgment very conveniently avoids an in depth analysis of Section 14 which expressly provides for such a right.

The Judgment instead pointlessly meanders around discussing the principle of international exhaustion and regional exhaustion as understood in various Indian, American and English precedents. A discussion on international and regional exhaustion is wholly and completely irrelevant for the purposes of this case. International and regional exhaustion are relevant only in a factual scenario where the goods are being imported into the country and not exported. If anything, this is a subject for an American Court dealing with the import of these copies into the U.S.A.

THE SECOND CASE – 20th May, 2010

The facts in this case are identical to the case above. Since the defendants did not put in an appearance in this case there was no discussion on the doctrine of first sale and exhaustion. The Court instead just analysed all of the evidence that was put forward by the Plaintiff during the ex-parte trial and came to a conclusion that the Defendants were violating the copyright of the Plaintiffs. The Court therefore granted the reliefs prayed for by the Plaintiffs along with Rs. 3,50,000 towards damages. The reason that I find this judgment surprising is because of the fact that Justice Bhat has delivered, last year, an excellent judgment in the case of Warner Bros. v. Santosh wherein he extensively discussed the doctrine of first sale, exhaustion of rights etc. In fact this judgment was discussed extensively by Justice Manmohan Singh in his judgment.

Conclusions: The defendants would do well to appeal this judgment and have it set aside. Having said that I have a word of advice for the gentlemen advising these publishing houses. Although exports may not be banned under the Copyright Act, 1957, it is possible to restrain exports under Section 29(6)(c) of the Trade Marks Act, 1999 i.e. as long as John Wiley, Pearson Education are registered trademarks in India and as along as these trademarks are fixed on the books aimed at the export market, it will be possible to seek an infringement for trademark infringement. Of course they cannot avail of these provisions if their trademarks are not registered.

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

27 comments.

  1. Rajiv

    Prashant, the books in questions are clearly marked as low priced editions on the cover page itself AND they contain the restrictive terms-FOR SALE IN INDIA…ONLY”

    The defendants purchase the books with the notice and restrictive terms from the Plaintiffs. The Court, therefore, correctly interpreted the notice terms in favor of the plaintiffs.

    As regards your contention for contract law and the martyred snail, the doctrine of caveat emptor is being applied here. The defendants purchased the books from the plaintiffs with the notice.

    Reply
  2. hAr$h

    @ Prashant- Brilliant analysis!

    @ Rajiv- I think the terms “FOR SALE IN INDIA ONLY” are only for the first sale, and not the subsequent sales. Right after first sale, doctrine of first sale comes into play and it can be sold anywhere in the world.

    Reply
  3. Mahendra Singh

    Dear Prashant,

    I am yet to read these judgements but disagree with you when you say that there is no agreement between the purchaser (defendants) and book publisher (Plaintiffs). As rightly pointed out by Rajiv, Indian low cost editions carry on their covers bold letter warnings like “FOR COPYRIGHT REASONS THIS BOOK CANNOT BE SOLD OUTSIDE INDIA”; “INDIAN EDITION. NOT FOR EXPORT” “NOT FOR SALE OUTSIDE INDIA”, etc. A more detailed notice appears on the copyright page of such editions. The foreign licensor contractually ensures that the Indian publisher puts such notices on the Indian reprints. A purchaser therefore has prior notice of the terms of sale and has the option not to buy the book. In this respect, he is no different from a person who buys software online and clicks on “I Agree.” When he buys the book, he becomes bound by this license obligation contractually imposed by the copyright owner. He is free to resell the book in India under the First Sale Doctrine but not outside. The judge’s reasoning may have been flawed but the order is good nevertheless.

    The Customs Act contains provisions for confiscation of prohibited goods and covers both imported and exported goods. In recent years, numerous export consignments of Indian low priced editions have been seized at the publishers’ behest who aren’t badly advised at all!

    Reply
  4. Prashant Reddy

    Hi Rajiv,

    I’m sure you’ll agree with me when I say that there is a difference between a sale and a licence. The essential difference between a sale and a licence is that the seller cannot control the use of the item that has been sold while in a licencing agreement he can in fact control the further use of the item.

    It is therefore quite a contradiction when you state that it is a sale with ‘restrictive terms’.

    Further I doubt whether restrictive covenants can be read into an implied contract between a seller and purchaser of a book. In my opinion a restrictive covenant can operate only in the case of a written contract wherein both parties have expressed their consent to the restrictive covenant.

    Therefore a mere notice on the book that it is intended for only domestic sale is insufficient. Further the very fact that the publisher himself has deemed the transaction to be a sale is indicative of the fact that he cannot control the further terms of the use of the copy, provided that it is not in contravention to the Copyright Act, 1957.

    Warm regards,
    Prashant

    Reply
  5. Prashant Reddy

    Dear Mahendra,

    Thank you for your comment. For the first part of your comment I would like to refer to you to my response to Rajiv, above.

    Also there is huge difference between a software licensing agreement and a book purchase. In a software licensing agreement the purchaser is expressly agreeing to be bound by the restrictive covenants when he click’s the ‘I agree’ button. That is not the case in the purchase of a book.

    Further there is also a dispute on whether EULA ‘End User Licensing Agreement’ for software can even be characterized as a licence. A link in my post points to an American judgment which has stated that the nature of an agreement has to be determined from its content and not the title. In the case of an EULA the Court was of the opinion that it was a sale and not a licence.

    In regards your point on the Customs Act, I agree that Section 11 of the Act provides the CBEC to seize even exports, provided that it notifies the same. As far as I am aware the CBEC has notified only imports as ‘prohibited’. There are no rules notifying export as prohibited. Therefore if Customs is seizing exports it is illegal and must be stopped, unless of course you’re aware of Rules which prohibit export.

    Looking forward to hearing from you.

    Best Regards,
    Prashant

    Reply
  6. Anonymous

    A very interesting post Prashant.

    Mahendra: Are we saying that the sale of the book is coupled with a contractual obligation of not to resell the book outside India. If so be the case, how it be encompassed under Copyright Act?

    Reply
  7. Anonymous

    Dear Prashant,

    I think you missed one of the major points in the whole case which dealt with the ‘right of distribution’ of a copyright owner.

    I think Hon’ble Judges in both the matter appreciated that the defendants act of exporting the Low Price Editions outside India where they were not available (read circulated/published by the copyright owner) was really infringing the exclusive right of distribution of the Plaintiff to distribute the books outside India. And I think this is why Bhat, J distinguished the present case from that of Warner Bros case (since the books so to say where not circulated outside India).

    Reply
  8. Rajiv

    Hi Prashant,

    I am totally in agreement that a sale is different than a license but before I discuss the issues you raised, consider for a moment whether a manufacturer honors a warranty or voids a warranty for a product when the product is not used for its normal intended use. (Example, whether a washing machine is used to sharpen a knife).

    In this case, you seem to suggest two things: i. the Plaintiff No. 2 (P#2) passed a title better than what it received; and ii. that the defendant was a third party beneficiary of the contract between P#1 and P#2.

    Here the defendants purchased the goods with the restrictive term and the term (for sale in India… only…) and the term tagged along with the product. There is no contradiction because P#2 passed upon the best title it had-that is the title with the restriction.

    An implied contract is where a contract exists by virtue of meeting of minds, rather than by words. eg. a patient goes to a doctor expecting to be cured and the doctor expecting to be paid for services rendered. Here it is an express contract. Seller gives title and possession of goods to buyer upon payment. Here it is an express contract.

    You mentioned that “a restrictive covenant can operate only in the case of a written contract wherein both parties have expressed their consent to the restrictive covenant.” This might be incorrect because both real estate laws (zoning/height restriction) and consumer laws (a product to be used for its intended use) provide that restrictive covenants run with land and product respectively. There is no need for these to be expressly agreed upon between the parties-rather they are understood.

    The defendants are not a beneficiary of the contract between P#1 and P#2. Unlike Donoghue, neither P#1 nor P#2 have a duty of care to the Defendants because the defendant is using the product in a way that is not intended and clearly has been excluded by the plaintiffs.

    Therefore, in my opinion, the restriction notice on the text book is sufficient.

    Best regards,
    Rajiv

    Reply
  9. Anonymous

    going through the blog i was also bogged by the same concerns expressed by Rajiv and Mahendra…however after going through the counter arguments i still don’t fully understand how the ‘restrictive covenant’ is not applicable to the defendants herein.. can a buyer (Defendants herein) have more rights than the seller (Indian Publishers herein who were authorised to make the sale/distribute the books only in India)?

    Reply
  10. tushar

    Dear Prashant,

    Awesome post and very nice comments. However, I’m not sure about intellectual property but in real property law one cannot pass on a better title than one originally possessed and when it comes to a license the seller may lay down conditions for my use but may not necessarily be able to control it; You are right of course that in a sale there can be no rights restricting the purchaser generally speaking, which would make the ‘sale’ of such books a mere license and not a sale, and if that is the case then the order restraining the defendants from ‘selling’ the books abroad would be right. But then again I’m speaking from the point of view of Real Property Law. Please clarify if my point of view holds good in case of Intellectual Property Law.

    Regards,

    Tushar

    Reply
  11. Prashant Reddy

    Dear Anon (3:43 PM)

    Under Section 14 of the Copyright Act, the owner has a right only to issue the copies for distribution. That is only ‘distribution right’. Can you identify any broader distribution rights in the Copyright Act? In my opinion the owner of copyright does not have any further rights to control how the already issued copies are further sold or re-sold in the market. The subsequent purchaser is then controlled only by the provisions of the Copyright Act. It is only owners of cinematograph works who are provided with extra rights such as rental rights.

    Prashant

    Reply
  12. Prashant Reddy

    Dear Rajiv,

    In the case of a warranty there are two different transactions in play. One is the sale of the product and the warranty itself is a contract for service for which you are paying the seller.

    In regards the analogy you draw to zoning laws and consumer laws and the implied restrictive covenants therein, I completely agree with you. Going by your analogy you will have to find a provision in statutory law which provides for such a prohibition against further re-sale. The analogies that you draw are in regards statutory rights and not contractual rights. Therefore your arguments hold merit only if you can prove such a right exists under the Copyright Act, 1957. I completely disagree with you on the point that implied contracts can carry any restrictive covenants not already implied in the statute.

    Prashant

    Reply
  13. Prashant Reddy

    Dear Anon (12:29 AM) & Tushar,

    The transaction over here is between a licensor (the Indian publisher) and Defendant. There is no transfer of title from the owner of copyright to the licensor, instead the licensor is acting as an agent of the owner when he sells the book to the Defendant. The title in copyright would transfer only if there was an assignment deed between both parties.

    If the owner of the copyright or the licensor wants to impose restrictive covenants they will have to necessarily enter into a written, explicit contract with the Defendants and such a contract must expressly mention that the book is not for re-sale.

    In absence of such a contract or a licence the Defendant is bound only by the Copyright Act. Therefore unless you can identify a provision in the Copyright Law which forbids resale you cannot stop the resale of the book.

    Regards,
    Prashant

    Reply
  14. Anonymous

    Dear Prashant,

    Copyright can both be assigned and licensed. Both assignment and licensing can be done for the whole wide world or for specific territories. Therefore, one could effectively release/publish one’s work for sale and distribution in a particular territory through assignment/ licensing while protecting its right under other territories at the same time.

    What is relevant in this case was that the Low Price Edition books were never “issued for circulation” by the Plaintiffs in territories other than Indian sub-continent. The right to publish them in other territories was reserved by the Plaintiffs through their right to control distribution which is part of its copyright. I think that is why court held that Defendants violated Plaintiffs copyright.

    This would not have been the case had the LPEs been available for sale in territories beyond Indian sub-continent. In that case the LPEs would have already been circulated in those territories.

    ANON @ 3:43 pm

    Reply
  15. Prashant Reddy

    Dear Anon (3:43 PM),

    I am aware that copyright owners can geographically restrict their markets.

    I also agree that the LPE’s were never ‘issued for circulation’ by the Plaintiffs in territories other than the Indian sub-continent. Copyright however is a territorial law. If the books were being ‘issued for circulation’ in another market then in that case a cause of action lies in the other market. In such a case the cause of action arises only in the country importing the books i.e. the U.S.A.

    How does jurisdiction arise in India?

    Prashant

    Reply
  16. J. Sai Deepak

    Hi Prashant,
    I agree to an extent with your point on Section 29(6) of the Trademarks Act because it refers to exports. In fact, I discussed this with Shouvik earlier this week; a broader issue was the subject of discussion. The question being, can a defendant in a case such as the one discussed in your post take the plea that since the impugned goods were never meant to cater to the Indian market, there could no question of infringement?

    This question was raised to understand if export qualifies as an infringing act under the Patents Act, Trademarks Act and Copyright Act.The Trademarks Act, on the face of it, renders the question moot by making an explicit reference to export as “use of the trademark” in Section 29(6).

    As far as the Patents Act is concerned, export is possible only under two situations (at least for now): the first one where the defendant imports it into India and then exports it, the second where he manufactures it in India and exports it. Since both importation and manufacture fall within the rights of the patentee, the exporter would be liable for infringement. However, as far as importation is concerned, that is again subject to the interpretation of Section 107A(b).

    As far as the Copyright Act is concerned, export is not explicitly dealt with (similar to the Patents Act). Therefore, one may take a line of argument similar to the Patents Act. If a defendant imports or reproduces the copyrighted work for the purpose of export, he could be guilty of infringement. Here one may need to take a look at Section 51(b)(ii) of the Copyright Act. Would export of a copyrighted work after its first sale be covered under this provision as prejudicially affecting the owner of the copyright? I am not sure, but I just thought the issue needs to be addressed from this angle too. I think that it may not amount to infringement under this provision for the following reasons:

    1. All the instances covered under Section 51 pertain to “infringing copies”. A copy which has undergone first sale is not an infringing copy insofar as the rights of the copyright owner in India are concerned.

    2. I am with you when you say that our Act endorses territorial exhaustion, in the sense that the impugned copy must be an infringing one with respect to the market it is sold. This is borne out from the judgment of the Delhi High Court in Penguin Books v. India Book Distributors (1984) which has been cited in the Warner Bros judgment of Justice Bhat.In that case, Penguin Books instituted the suit because import of copies to which they were exclusively licensed adversely affected their rights of distribution. Similarly in this case which your post discusses, the Plaintiffs are owners in India and the Copyright Act only protects their rights and interests within India. Therefore, if their rights in another jurisdiction are affected, they have to seek a recourse in that jurisdiction, and not in India.

    CONTINUED AND CONCLUDED IN THE NEXT COMMENT

    Reply
  17. J. Sai Deepak

    But that said, one may still invoke Section 29(6) of the TM Act to restrain the defendants IF section 29(6) is to be interpreted to the detriment of the right of a third party to distribute a book which has undergone first sale. Interestingly, it would be akin to restraining a third party or a member of the public from reproducing a book in which copyright no longer subsists due to expiry of the term of copyright, on grounds that the trademark in the work title still survives AND therefore, if a third party has to reproduce the book, he is forced to seek a license from the TM owner (who is the erstwhile copyright owner) to reproduce the book.

    In other words, in both of these situations, where copyright no longer subsists either on account of first sale or expiry, trademark rights are used to perpetuate some form of monopoly which may be used to hinder meaningful use of rights available to the public or a third party upon divestation of copyrights. To put it in a patent sense, since a technical drawing is an artistic work under the copyright Act, one may use the copyright subsisting in it to prevent third parties from manufacturing the invention it represents despite the expiry of a patent on the invention (where the specification contains the same drawing).

    Although, since the law does not address these situations where the rights seem to “overlap” in a way, one may have to go with the assumption that they are meant to act without convergence and hence survive independent of each other. However, since the last hypothetical involving patents and copyrights seems to border on the extreme, i am thinking why shouldnt one apply a similar argument in instances involving both copyrights and trademarks.

    Bests,
    Sai.

    Reply
  18. J. Sai Deepak

    Dear Prashant,
    i went through Section 29 to understand its relevance to the discussion here. Section 29 only contemplates use of a registered trademark with respect to goods or services of a defendant in a manner which causes or is likely to cause confusion. In the cases discussed here, the defendants do not use the trademark with respect to their goods and services, they merely export goods of the Plaintiffs after first sale. So I dont think such export is the same as export as contemplated under Section 29(6)(c). Section 29(6)(c) refers to affixation of a registered trademark to the ggods of the defendant which are meant for export and such affixation would rightly infringe the rights of the registered owner because the mark may have cross-border reputation which our Act acknowledges.

    In fact, if the defendants were to sell the same copies of the Plaintiffs which have undergone first sale under their own (defendants’) trademarks, that would be a fraud on the public.

    The long and short of it is that export rights of works which have undergone first sale do not seem to be available to copyright owners directly or indirectly.

    Bests,
    Sai.

    Reply
  19. Anonymous

    Dear Prashant,

    At the outset I must confess that I was lucky enough to be present in the Court while this matter was being argued. So, I got a ‘better view’ about what the judge had in his mind and exactly what the lawyers argued.

    Regarding jurisdiction of the Delhi Court, Mr. Rohtagi argued on 2 points:

    1) Under Sec 62 of the copyright act the Delhi court had jurisdiction since the Plaintiffs carried on business in Delhi;

    2) The Delhi court had jurisdiction since all the Defendants resided/carried on business in Delhi and since the cause of action, i.e. “actual infringing act of export” took place in Delhi.

    Also, Delhi High Court earlier in Penguin Books Ltd. V. India Book Distributors, AIR 1985 Del 29, had the occasion to briefly deal with copyright owners right to assign partially/fully horizontally and vertically.

    ANON @ 3:43 pm

    Reply
  20. Anonymous

    Dear Prashant,
    At the outset I must confess that I was lucky enough to be present in the Court while this matter was being argued. So, I got a ‘better view’ about what the judge had in his mind and exactly what the lawyers argued.
    Regarding jurisdiction of the Delhi Court, Mr. Rohtagi argued on 2 points:
    1) Under Sec 62 of the copyright act the Delhi court has jurisdiction since the Plaintiffs carries on business in Delhi;

    2) The Delhi court has jurisdiction since all the Defendants reside/carry on business in Delhi and since the cause of action “actual infringing act of export” took place in Delhi.
    Also, Delhi High Court had earlier in Penguin Books Ltd. V. India Book Distributors, AIR 1985 Del 29, had the occasion to briefly deal with copyright owners right to assign partially/fully horizontally and vertically.

    ANON @ 3:43 pm

    Reply
  21. Prashant Reddy

    Hi Sai,

    In re your first two comments: phew! exhaustive! 🙂

    I think we are pretty much in agreement on those points.

    In regards your third comment on Section 29. I would like to point you to Section 29(4) which does not need confusion as a requirement. This section instead works on the dilution principle.

    Section 29(6)(c) defines when are a person ‘uses’ a mark.

    Section 30(3) allows TM owners to segregate their markets. It has so far been used in a Samsung case to stop parallel imports – the question is whether it could extend to exports?

    What if we were to combine all three actions and plead for restraining exports on the grounds that the defendants were diluting the trademarks since there was a huge quality difference in the books used in India and the book sold in the U.S.A?

    Cheers,
    Prashant

    Reply
  22. Prashant Reddy

    Dear Anon @ 3:43 PM

    Thank you for your confession! 🙂

    In regards point 1 I have no disagreement.

    But in regards point 2 I would like to point out to you that my entire argument is that there is no cause of action in India because of the first sale doctrine. Unless exports were expressly barred in the Copyright Act there is no possibility of barring the same. The cause of action arises in the U.S.A. and only that country can take up a plea of copyright infringement.

    Warm Regards,
    Prashant

    Reply
  23. J. Sai Deepak

    Hi Prashant,
    True, Section 29(4) does not require confusion, dilution is sufficient. But i would think that it refers to dilution of the mark in India by an act of the defendant committed in India.

    If the act of the defendant dilutes the mark in the US, the Plaintiff should still have an actionable claim in the US, but not in India I think.

    Bests,
    Sai.

    Reply

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