In a Deeply Problematic 2012 Judgment, Bombay High Court Held That Copyright Registration is Mandatory for Maintaining an Action for Infringement

As Professor Joshua Sarnoff eloquently noted on this Blog, copyright is first and foremost an assertion by the creator. This being so, registration of a copyright is not mandatory for maintaining an action for infringement. Indeed, to quote Prashant, the principle that registration of a copyright is not mandatory is one of the holy sacraments of the Berne Convention.

It is with great dismay, therefore, that we recently found out about a deeply problematic 2012 judgment
from the Bombay High Court (Nagpur Bench) (“Court”), later affirmed by the Supreme Court. The judgment essentially turns the law qua the registration of copyrights on its head, inasmuch as it holds that registration of a copyright is the condition precedent to claiming relief for copyright infringement.

The view espoused by the Court is not only an aberration in the jurisprudence developed by Indian courts on the issue of copyright registration, but also appears to rest on a very tenuous legal foundation for the reasons that I shall outline in this post.

The facts of the case are fairly straightforward and need not detain us for purposes of the present post. The gravamen of the dispute revolves around a software developed by the defendant (I am using the positions occupied by the parties in the infringement suit for the sake of simplicity) for the purpose of automatic preparation of income tax returns, online validation of returns submitted and allied purposes.

After finding out about the use of this software, the plaintiff filed a civil suit as well as instituted criminal proceedings against the defendant, arguing that the software developed by the latter was an imitation of the plaintiff’s software and hence constituted copyright infringement.

To buttress this submission, the plaintiff began pointing out to the Court the points of similarity between the two pieces of software. At this juncture, the defendant argued that the plaintiff did not have any copyright registration qua the software which it claimed was copied.

Since the plaintiff could not dispute this factual position, it argued that registration of copyright is not a precondition to claiming relief for infringement. The defendant, on the other hand, argued that registration of a copyright is mandatory. Against this backdrop, the Court was called upon to decide this issue.

Before moving on to the Court’s analysis, it would be apposite to quote Section 44 of the Copyright Act, 1957 (“Act”) which deals with the registration of copyrights. Section 44 reads as follows:

“There shall be kept at the Copyright Office a register in the prescribed form to be called the Register of Copyrights in which may be entered the names or titles or works and the names and addresses of authors, publishers and owners of copyright and such other particulars as may be prescribed.”

Reasoning and holding of Court:

The Court sided with the defendant, holding that registration is mandatory for claiming relief for infringement. It grounded this conclusion in 3 sets of provisions under the Act.

First, it relied on Section 50-A which states that the content contained in the register of copyrights must be published in the official gazette. In light of the fact that only information qua registered copyrights would thus be published in the official gazette, the Court viewed this as an indicator of the legislative intent to make registration mandatory.

Second, Section 51 of the Act outlines the activities that constitute copyright infringement. Reasoning that a person cannot be held liable for infringing something about whose existence he doesn’t even know, the Court held that the unstated premise underpinning Section 51 is that the copyright concerned must be registered. If this were not so, held the Court, a defendant could be held liable under civil or criminal law for engaging in innocent infringement which could have never been the legislature’s intention.

Third, relying on Sections 63, 63-b and 64 dealing with punishment under criminal law for infringement of copyright, the Court held that it is well settled that penal provisions have to be construed strictly. This being so, the legislature could not have sanctioned the imposition of a punishment on a defendant who has no knowledge of the existence of copyright. Similarly, it held that registration of a copyright is vital for a police officer to be able to ascertain that a complainant filing a complaint is the owner of copyright before such officer takes cognizance of the complaint.

In sum, the approach adopted by the Court seems to be predicated upon its understanding of the deleterious consequences that would flow from a ruling that registration is not compulsory for succeeding in an action of infringement. More specifically, the primordial consideration dictating the Court’s conclusion appears to be that registration of copyright is the central tool to inform potential infringers and the public at large about the existence of copyright. This being so, the aforesaid three sets of provisions would be denuded of their vigour and rendered unworkable if registration was not held to be mandatory.

Pertinently, the plaintiff filed an SLP against the Court’s judgment in the Supreme Court. The Supreme Court dismissed the SLP, in a short order, but kept the question of law open for the future.

Flaws in judgment:

The fundamental fallacy that the judgment suffers from is that the Court wrongly arrogated to itself the power to decide what would be the most appropriate legislative framework to enable plaintiffs to enforce their copyright and to ensure that defendants are not held liable for copyright infringement, absent knowledge of the existence of the copyright. Put differently, instead of interpreting the provisions qua registration in the Act in accordance with their text and structure, the Court decided to interpret them in a way that would enable to arrive at what it viewed as the most desirable outcome.

This fallacy permeates the entire judgment. For instance, the Court uses this premise as the basis to hold that a defendant cannot be held liable for copyright infringement under civil law if it does not even know of the existence of the copyright. Similarly, it holds that no consequences can flow under criminal law against a defendant who is not even aware of the existence of copyright in a work that he is alleged to have infringed.

I am not delving into the question of whether, as a normative matter, making registration mandatory would be a desirable approach to follow. Suffice it to say that, as Prashant has noted, there are great arguments that can be made on both sides.

The more fundamental issue that the judge appears to have lost sight of is this: it is the legislature’s prerogative to decide which side of this debate it wants to side with and grant its imprimatur to in the shape of a law. If the legislature, in its wisdom, clearly decided that registration is not mandatory, it was not open to the Court to adopt a different view.

Indeed, as the Allahabad High Court held while ruling on this selfsame issue, the only object of registration envisaged by the Act is to inform the public about the existence of copyright. If the legislature wanted to make registration mandatory, it would have deployed language akin to Section 69 of the Partnership Act which spells out the consequences of a failure to register a firm. The legislature’s limited object in introducing Section 44 is clear from the statement of reasons relating to Section 44 which reads as follows:

“Under the existing law there is no provision for the registration of copyright. Such registration could furnish useful information to interested members of public………”

This being so, even if the Court thought that the legislature adopted the wrong view, it was obligated to give effect to that view. The judge would have done well to pay heed to Justice Cardozo’s famous admonition that a judge is: “not a knight errant roaming at will in pursuit of his own ideal of beauty or goodness.”

As the late American Supreme Court Justice Antonin Scalia once famously said: “But in this job, it’s garbage in, garbage out. If it’s a foolish law, you are bound by oath to produce a foolish result, because it’s not your job to decide what is foolish and what isn’t.”

Even if one were to adopt a more moderate position and believe that judge does have the power to interpret a provision in a purposive fashion in order to arrive at a conclusion consistent with the purpose underpinning its enactment, doing violence to the language of a provision in order to obtain a result deemed desirable is clearly not permissible. As a result, one hopes that the Supreme Court swiftly overrules this judgment, and sides with almost all other High Courts who have taken the contrary view, so as to ensure that the exercise of the legitimate rights of authors and creators is not rendered contingent upon compliance with a bureaucratic procedure.

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1 thought on “In a Deeply Problematic 2012 Judgment, Bombay High Court Held That Copyright Registration is Mandatory for Maintaining an Action for Infringement”

  1. Strange and ridiculous. BTW in Delhi we have inter alia the DB decision in the Microfibres case in which the subject is dealt with. So this strange Bombay decision does not bind us in Delhi.
    It is, in my opinion, erroneous to say that the Supreme Court “affirmed” this decision. Not only did the Supreme Court explicitly say that it was leaving the question of law open, but in any case there is a catena of Supreme Court decisions to the effect that a non-speaking order dismissing an SLP does not make anything res judicata (except, of course, qua the particular case).

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