2.0 License.
2.1 Beginning on the Effective Date, and remaining in effect for the Term of this Agreement,
the Artist hereby grants to the Company, a non-exclusive, transferable, sub-licensable,
royalty-free, worldwide license to use the Designs and the Intellectual Property
provided by the Artist as it sees fit, to, including, but not limited to, make, have made,
use, import, export, offer for sale and sell Products.
2.2 Nothing in this Agreement shall be construed (expressly or by implication) as granting or
conveying to the Company, or as otherwise creating, any licenses or other rights or
interests in or to any Intellectual Property and/or Designs owned or controlled by the
Artist other than the specific licenses to the Intellectual Property and Designs that are
expressly granted under this Agreement.
2.3 The Artist agrees that to the extent any of the Intellectual Property and/or the Designs
are used as part of the Products, such Products shall, to the extent permitted by law, be
a "work made for hire" within the definition of Section 101 of the Copyright Act (17
U.S.C. § 101), and shall remain the sole and exclusive property of Company.
3.0 Ownership of Intellectual Property and Designs.
3.1 The Artist shall retain sole and exclusive ownership of all rights, title and interest in and
to the Intellectual Property and/or the Designs, subject to the licenses granted to
Company under this Agreement. The Artist shall also retain all rights under and to the
Intellectual Property and/or the Designs that are not expressly granted to the Company
and shall have the right to grant further licenses to third parties with respect to such
retained rights.
3.2 The Artist shall be solely responsible, at its own expense, for all aspects of the
prosecution, maintenance, enforcement and defense of all applications and
registrations that are included in the Intellectual Property and/or the Designs. The
Artist’s rights and responsibilities in that regard shall include sole and final decision
making authority with respect to all such matters (as determined by the Artist in his or
her sole discretion).
3.3 In the event that the Artist decides not to pursue, or to abandon or otherwise cease to
maintain, any part of its Intellectual Property and/or the Designs in any country or
countries (“Abandoned IP”), it will notify the Company about such Abandoned IP
within twenty-four (24) hours. Upon receipt of such notice, the Company shall have the
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option, exercisable by providing written notice to the Artist within thirty (30) days, to
purchase the Abandoned IP for a sum not to exceed one US dollar ($1).
3.4 The Company is under no obligation to notify the Artist of any third party actions which
may constitute infringement of the Intellectual Property and/or the Designs, or if any
third party initiates actions seeking to invalidate or contest the enforceability or validity
of any of the Intellectual Property and/or the Designs, unless otherwise specified herein.
4.0 Artist Representations and Warranties. Beginning on the Effective Date, and remaining
in effect for the duration of this Agreement, the Artist makes the following
representations and warranties.
4.1 The Artist represents and warrants that he or she is fully authorized and empowered to
enter into this Agreement, and that his or her performance of the obligations under this
Agreement will not violate any agreement between the Artist and any other person,
firm or organization or any law or governmental regulation.
4.2 The Artist represents and warrants that the Designs and Intellectual Property and any
other materials and content produced in connection with the Designs do not infringe on
or violate the legal rights of any third-party.
4.3 The Artist represents and warrants that he or she is more than eighteen (18) years of
age and not otherwise incapacitated at the time of this Agreement.
4.4 The Artist represents and warrants that the Artist has complied with all applicable laws
in the manufacture, and/or obtaining of, the Designs and Intellectual Property.
5.0 Compensation.
5.1 The Artist shall receive as complete compensation for the license set out in this
Agreement, a percentage, agreed upon between the parties, not to exceed twenty
percent (20%) of all sales made by the Company of Products incorporating and/or
utilizing the specific Designs and/or the Intellectual Property of the Artist.
5.2 Compensation shall be paid by the Company on a monthly basis as agreed upon
between the parties.
5.3 The Artist shall receive no compensation for the sale of Products incorporating and/or
utilizing the Designs and/or the Intellectual Property of other artists by the Company.
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5.4 The compensation set out in this Section 5 of the Agreement is subject to change, by the
Company, at any time pursuant to notice from the Company.
6.0 Confidential Information
6.1 Company and the Artist understand and agree that in connection with the negotiation
and performance of this Agreement, each party may have had or have access to or may
have been or be exposed to, directly or indirectly, private or confidential information of
the other party, including, but not limited to, trade secrets and any other information
that the receiving party reasonably should know is confidential (“Confidential
Information”). Each party (on its behalf and on behalf of its subcontractors, employees
or representatives, or agents of any kind) agrees to hold and treat all Confidential
Information of the other party in confidence and will protect the Confidential
Information with the same degree of care as each party uses to protect its own
Confidential Information of like nature. Notwithstanding anything contained herein to
the contrary, Confidential Information does not include any information that (i) at the
time of the disclosure or thereafter is lawfully obtained from publically available sources
generally known by the public (other than as a result of a disclosure by the receiving
party or its representatives); (ii) is available to the receiving party on a non-confidential
basis from a source that is not and was not bound by a confidentiality agreement with
respect to the Confidential Information; or (iii) has been independently acquired or
developed by the receiving party without violating its obligations under this Agreement
or under any federal or state law. This Section shall supersede any previous agreement
relating to confidential treatment and/or non-disclosure of Confidential Information;
provided, however, that any information disclosed pursuant to that earlier agreement
shall be deemed to be Confidential Information and protected under the terms of this
Agreement as if this Agreement had been in place at the time of such disclosures. The
Confidential Information will not, without the prior written consent of the other party,
be disclosed to any third party, except that the receiving party may disclose the
Confidential Information or portions thereof to (a) its directors, officers, employees,
agents and representatives on a need-to-know basis, or (b) as may be required by law,
applicable regulation or judicial process, provided, however, that if the receiving party is
required to disclose such Confidential Information under this Section, the receiving
party shall promptly notify the disclosing party of such pending disclosure and consult
with the disclosing party prior to such disclosure as to the advisability of seeking a
protective order or other means of preserving the confidentiality of the Confidential
Information. Neither party shall use any Confidential Information received from the
other party except as may be necessary in its performance under this Agreement. The
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parties acknowledge that unauthorized use by a party of the other party’s Confidential
Information will diminish the value of such information and that breach of this
obligation may cause irreparable harm and entitle the non-breaching party to seek
injunctive relief to protect its interest herein, in addition to any other monetary or other
remedies it may be entitled to hereunder.
7.0 Liability.
7.1 The Company shall not be responsible for any costs incurred by the Artist in furtherance
of this Agreement or otherwise, such as, licensing fees and/or equipment fees. All
services under this Agreement shall be performed at the full expense of the Artist.
7.2 EXCEPT WITH RESPECT TO THE PARTIES’ INDEMNIFICATION OBLIGATIONS, NEITHER
PARTY SHALL BE LIABLE TO THE OTHER FOR ANY SPECIAL, INDIRECT, INCIDENTAL,
PUNITIVE, OR CONSEQUENTIAL DAMAGES ARISING FROM OR RELATED TO THIS
AGREEMENT, INCLUDING BODILY INJURY, DEATH, LOSS OF REVENUE, OR PROFITS OR
OTHER BENEFITS, AND CLAIMS BY ANY THIRD PARTY, EVEN IF THE PARTIES HAVE BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THE FOREGOING LIMITATION APPLIES
TO ALL CAUSES OF ACTION IN THE AGGREGATE, INCLUDING WITHOOUT LIMITATION TO
BREACH OF CONTRACT, BREACH OF WARRANTY, NEGLIGENCE, STRICT LIABILITY, AND
OTHER TORTS.
8.0 Disclaimer of Warranty.
8.1 THE WARRANTIES CONTAINED HEREIN ARE THE ONLY WARRANTIES MADE BY THE
PARTIES HEREUNDER. EACH PARTY MAKES NO OTHER WARRANTY, WHETHER EXPRESS
OR IMPLIED, AND EXPRESSLY EXCLUDES AND DISCLAIMS ALL OTHER WARRANTIES AND
REPRESENTATIONS OF ANY KIND, INCLUDING ANY WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, TITLE, AND NON-INFRINGEMENT. COMPANY
DOES NOT PROVIDE ANY WARRANTY THAT OPERATION OF ANY SERVICES HEREUNDER
WILL BE UNINTERRUPTED OR ERROR-FREE.
9.0 Indemnification.
9.1 The Artist agrees to indemnify, hold harmless, and defend the Company, its officers,
directors, successor, assigns, agents and employees, from any and all claims, demands,
suits, actions, proceedings, costs, damages, expenses (including reasonable attorneys’
fees and costs), and/or losses of any kind arising out of or resulting from any claims that
(a) the Artist breached any representations and warranties made in this Agreement, (b)
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the Artist breached or allegedly breached its confidentiality obligations hereunder, and
(c) claims relating to the Artist’s Intellectual Property, Designs, or any other materials
provided by or made available by the Artist. The Artist’s obligations are conditioned
upon the Company: (i) giving the Artist written notice of any claim, action, suit and
proceeding for which the Company is seeking indemnity; (ii) granting control of the
defense and settlement to the Artist; and (iii) providing, at the Artist’s expense,
reasonable assistance in the defense or settlement thereof. In any event, the Company
shall have the right to participate, at its own expense, in the defense or settlement of
any claim, action, suit and proceeding that is the subject of an indemnification
obligation. If any settlement results in any ongoing liability to, or prejudices or
detrimentally impacts Company, and such obligation, liability, prejudice or impact can
reasonably be expected to be material, then such settlement shall require the
Company’s written consent, which consent shall not be unreasonably withheld.
10.0 Duration, Scope and Severability.
10.1 This Agreement shall take effect immediately, and shall remain in full force and effect
indefinitely (the “Term”), or until terminated pursuant to this Section 10 of the
Agreement.
10.2 The Company may terminate this Agreement for any reason upon two (2) dayswritten
notice to the Artist. Either party may terminate this Agreement for cause immediately
upon notice to the breaching party.
10.3 This Agreement, and any accompanying appendices, duplicates, or copies, constitutes
the entire agreement between the Parties with respect to the subject matter of this
Agreement, and supersedes all prior negotiations, agreements, representations, and
understandings of any kind, whether written or oral, between the Parties, preceding the
date of this Agreement.
10.4 This Agreement may be amended only by written agreement duly executed by an
authorized representative of each party.
10.5 If any provision or provisions of this Agreement shall be held unenforceable for any
reason, then such provision shall be modified to reflect the parties’ intention. All
remaining provisions of this Agreement shall remain in full force and effect for the
duration of this Agreement.
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10.6 No modifications to this Agreement shall be binding upon the Company without the
express written consent of the Company.
10.7 This Agreement shall not be assigned by either party without the express consent of the
other party.
11.0 Governing Law and Jurisdiction.
11.1 This Agreement shall be governed by and construed in accordance with the laws of -
[JURISDICTION] without reference to any principles of conflicts of laws, which might
cause the application of the laws of another state/country. Any action instituted by
either party arising out of this Agreement shall only be brought, tried and resolved in
the applicable courts having jurisdiction in [JURISDICTION]. EACH PARTY HEREBY
CONSENTS TO THE EXCLUSIVE PERSONAL JURISDICTION AND VENUE OF THE COURTS,
HAVING JURISDICTION IN THE [JURISDICTION].
12.0 Waiver of Rights.
12.1 A failure or delay in exercising any right, power or privilege in respect of this Agreement
will not be presumed to operate as a waiver, and a single or partial exercise of any right,
power or privilege will not be presumed to preclude any subsequent or further exercise,
of that right, power or privilege or the exercise of any other right, power or privilege.
IN WITNESS WHEREOF, the Parties, intending to be legally bound, have each executed this
agreement as of the Effective Date.
[Please note that the above agreement is just a sample agreement for understanding and
should not be used as a template for all types of licensing agreements]
4.12 COPYRIGHT INFRINGEMENT
W hen you order a Mickey Mouse cake for your kid's birthday, chances are that bakery
which makes them could be hauled up for copyright infringement of Walt Disney's
characters.
Copyright infringement is becoming a serious issue these days. It is no longer having that casual
attitude, where the manufacturers decide to look the other way when fake products, carrying
their logo are finding their way into the market. Walt Disney is one of the few companies that is
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actually sitting up and taking notice of this. A couple of years ago, two leading chains, Kids
Kemp in Bangalore and Sheetal in Mumbai, were investigated and lead to an out-of-court
settlement, ranging from INR 5-10 crore, according to sources.
Recently, a wholesaler in Kolkata was arrested for 'importing' colorful towels with the bright
and lively images of Donald Duck, Minnie Mouse, Pluto or Little Mermaid. "These towels come
in from China and are sold for about INR 25 whereas a genuine Walt Disney license holder like
“Bombay Dyeing” would be retailing a similar towel for INR 250 onwards.
Infringement of copyright must relate to a protected work. There must be some connection
between the original work and the alleged infringement work. In relation to literary, dramatic,
musical or artistic works an infringement will be established if there is a substantial part of the
copyright work reproduced and considering comparing the alleged infringing work against the
copyright work. What also needs to be addressed is the issue of quality rather than quantity. If
a person authorises another person to perform an infringing activity then that first person will
be also liable for infringement.5
If the infringement is shown to be innocent then the copyright owner cannot seek damages
although it may be entitled to an order for account of profits. On the other hand, if an
enterprise can establish a flagrant infringement of its copyright then it may be able to obtain an
order for ‘additional damages’. For these reasons the use of appropriate copyright notice and
letters of demand are an important step in enforcing copyright.
4.13 DEFENCES
I t is worth noting that not all copying of a substantial part of a copyright work will be
unlawful. The Copyright Act 1957 sets out a range of defences to an action for infringement
of copyright including research and study or criticism or review. In respect of computer
programs, the copyright will not be infringed if a person:
/ makes back-up copies of the software;
/ develops inter-operable products by exercising one of the copyrights;
/ copies to correct errors that prevent the original software from operating; or
/ exercises those copyrights in the course of security testing computer systems of which
the original software is a part: see s. 43 (1) (ab) of the Indian Copyright Act, 1957.
5. W.R. Cornish and David Llewelyn, Intellectual Property: Patents, Copyrights, Trademarks
and Allied Rights, Sweet & Maxwell; 5Rev Ed edition (4 Sep 2003)
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This criterion has been laid down in John Richardson v.Flanders [1993] FSR 497.
4.13.1 LIMITATION PERIOD
T he Copyright Act provides that the limitation period is six years from the date on which
the infringement took place.
4.13.2 GROUNDLESS THREATS
A person who has received a groundless threat of infringement of copyright can obtain a
declaration, injunction or recover damages. This is provided under section 60 of the
Copyright Act, 1957.
4.13.3 CUSTOMS SEIZURES
I t is open to the enterprise to request Customs to seize any articles which may constitute
infringement of the enterprise’s copyright, as provided under section 55 and 58 of the
Copyright Act. The customs has the power to seize and destroy infringing articles.
4.14 WHAT ACTS DO NOT CONSTITUTE COPYRIGHT
INFRINGEMENT – THE EXCEPTIONS?
T here are three exceptions to the copyright infringement rules, which allow one to
reproduce another's work without obtaining a license or assignment of rights:
FAIR USE: This is a doctrine which permits the reproduction of copyrighted material for a
limited purpose of teaching, reviewing, literary criticism and the like. Without the “fair use”
doctrine, books and movies could not be reviewed and colleges and high schools would not be
able to study works by people like Arthur Miller. This is also how television programs such as
The Daily Show are able to use copyrighted material in their commentary. "Fair use," however,
is determined on a case-by-case basis.
PUBLIC DOMAIN: This refers to works which are no longer covered by copyright law. For
example, the song “The Star-Spangled Banner” can be performed without ever paying license
fees to anyone because the copyright has expired.
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NON-COPYRIGHTABLE WORKS: Copyright infringement cannot occur when someone uses
material that cannot be protected by copyright, such as facts or ideas. However, if someone
puts a bunch of facts into the form of a book (e.g. The Farmer’s Almanac), copying all or part of
that book would constitute
4.15 COPYRIGHT: PIRACY IN INDIA
T he world today has entered into an era of instant communication. A person sitting in the
remotest corner of India can enjoy live performance taking place in the faraway places
like America or Africa, thanks to electronic (parallel) media. Telephone and fax have
made it possible to communicate oral or written messages across the globe within seconds. The
computer-aided communication technologies such as E-Mail and Internet have added
altogether a new dimension to today's communication process by making it more speedy,
informative and economical. The ways through which different types of information can be
communicated have also undergone a sea change. These days a film song can be put in or
accessed by a single device along with a textual message and even a painting. While all these
have made communication among people more effective and efficient both in terms of time
and cost, they pose the greatest threat to the copyright world. Modern communication
channels, being intensively relying on a variety of copyrighted products, are liable to be pirated
in large scale, if adequate precautions are not exercised.
Copyright is the right given by law to the creators of literary, dramatic, musical and a variety of
other works of mind. It ordinarily means the creator alone has the right to make copies of his or
her works or alternatively, prevents all others from making such copies. The basic idea behind
such protection is the premise that innovations require incentives. Copyright recognizes this
need and gives it a legal sanction.
The origin of copyright had a link with the invention of printing press by Gutenberg in the
fifteenth century. With the easy multiplying facility made possible by the printing press, there
was voluminous increase in the printing and distribution of books which, in turn, led to
adoption of unfair practices such as unauthorized printing by competing printers.
Though piracy was born by the end of the fifteenth century, it was only in 1710 the first law on
copyright in the modern sense of the term came into existence in England. The law which was
known as `Queen Anne's Statute' provided authors with the right to reprint their books for a
certain number of years. The 1710 law was confined to the rights of authors of books only, and
more particularly the right to reprint. It did not include other creative works such as paintings,
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drawings etc. which also by that time became targets of piracy, in addition to other aspects
relating to books (e.g. translation, dramatization etc.) To overcome this problem a new
enactment namely `Engravers Act' came into existence in 1735. There followed a few more
enactments in the subsequent periods and ultimately Copyright Act 1911 saw the light of the
day.
Developments in this regard also took place in many other advanced countries, notably among
them being France, Germany and the USA. In France a copyright decree was adopted in 1791
which sanctioned the performing right and another decree of 1793 established author’s
exclusive right of reproduction. In Germany authors rights were recognized by a Saxon Order
dated Feb 27, 1686. In America the first federal law on copyright, the Copyright Law 1790
provided protection to books, maps and charts6.
In 1957, the Copyright Act came out having its aim to check the unauthorized exercise of
copyright (i.e. copyright infringement) both a criminal and a civil offence. In addition to this, the
Act prohibits the violation of the performers’ right, the broadcast reproduction right, and the
moral rights of authors. Further, a sound recording/video films, when published, must display
the name and the address of the person who has made the sound record, the owner of the
copyright, and the year of its first publication (under Section 52A of the Act); failure to mention
these items is a criminal offence.
In some renounced international judgments like The Authors Guild Inc. v. Google Inc.7, District
court grants Google’s summary judgment motion, holding that Google’s scanning and indexing
of copyrighted books for its Google Books project is transformative, non-infringing fair use8.
In DuckHole Inc. v. NBCUniversal Media LLC9, District court awards attorneys’ fees and costs in
copyright infringement action involving plaintiff’s claim that defendants’ Animal
Practice infringed its treatment PETS, where plaintiff’s principal was intellectual property law
attorney yet proceeded with claims despite lack of substantial similarity10.
Mr. Anil Gupta and Others V Mr. Kunal Dasgupta and Others11 (3rd June, 2002):
It is the case of the plaintiff that in the year 1996, plaintiff conceived the idea of producing a
reality television programme containing the process of match making to the point of actual
6 Taken from STUDY ON COPYRIGHT PIRACY IN INDIA, 7TH EDITION
7 USDC, S.D. New York, November 14, 2013
8 Available at http://www.jdsupra.com/legalnews/ipentertainment-law-weekly-case-update-27431/ accessed on
30.11.2013
9 USDC, C.D. California, October 25, 2013
10 Available at http://www.jdsupra.com/legalnews/ipentertainment-law-weekly-case-update-27431/ accessed on
30.11.2013
11 2002 PTC (25) 1| 2002 IVAD Delhi 390, AIR 2002 Delhi 379
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spouse selection in which real everyday ordinary persons would participate before a TV
audience. Learned senior counsel for the plaintiffs has contended that plaintiff devised a unique
and novel concept for a TV show in which it would be the prerogative of a woman to select a
groom from a variety of suitors. The plaintiff decided to name the concept 'Swayamvar'
knowing that a large number of people would associate the name with the idea of a woman
selecting a groom in public fora and that would create the necessary instantaneous recall and
recognition of mythological swayamvar in the minds of a large number of people and give the
program a head-start. The aforesaid concept titled 'Swayamvar' was disclosed in early 1997 by
the plaintiff to his wife. Plaintiff applied for registration after developing the concept as a
literary work under the Copyright Act. The work was registered and a certificate was issued in
favor of the plaintiff on 17th December, 1997. Some of the essential elements of the
programme as contained in the copyright concept note were to the following effect:
1. A real life entertainment program about a real life situation.
2. A half-hour long, proposed studio-based television show, also flexible enough and
capable of being shot outdoors for longer stretches of time.
3. Providing the thrill of matchmaking.
4. Specifically, providing a platform for marriageable girls to select a spouse from an array
of suitors.
5. Parents of the girl and suitors to be associated with the entire process.
6. The participating eligible men to be selected/short-listed by the producers prior to the
show.
7. Producers will ensure that there is no duplicity or foul play.
8. Mediation by a mature, articulate, vibrant anchorwoman.
9. Empowerment of women by promoting secular and progressive spouse selection.
It is the case of the plaintiff that the plaintiff also approached Doordarshan about the real life
reality TV show revolving around marriages in early 2000. It is the case of the plaintiff that
another meeting was fixed for 30th October, 2000 at the defendants' office at Mumbai where
plaintiff went with his wife and son and from the other hand there was the defendant and their
newly appointed Head of Programming. In the said meeting, plaintiff handed over to defendant
a letter dated 28th October, 2000 which contained proposal for five programmes including
'Swayamvar'. The said letter also accompanied a brief concept note containing the essential
details and proposed format of 'Swayamvar'. After the said meeting defendants asked the
plaintiff to give a detailed presentation at the earliest. The plaintiff also imparted some strict
conditions on the above mentioned letter which was highly confidential and under strict
conditions:
1. Increase in show duration from half an hour to a one-hour format.
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2. Introduction of high value rewards, prizes, gifts, etc. in the form of 'Streedhan'.
3. Creation of devices such as games and situations, rituals connected with marriage, to
heighten audience/viewer involvement and interest.
4. Selection process using matrimonial bureaus, web sites, dial-in in addition to direct
applications.
5. Video tests and grooming of participants, designer costumes, etc. in line with popular
trends.
6. Promotion and marketing of 'Swayamvar' as India's first ever reality TV show.
7. How to handle reservations of the potential participants including option of opting out
anytime during the show.
8. The show limited to the engagement.
After that the plaintiff saw an article in the financial Express, Mumbai Edition, dated 18.7.2001
titled 'Camera, Lights, Shehnai!’. SONY TV to play Matchmaker. The said article informed that
defendant no.2 was due to launch a big budget reality show which would provide a platform for
matchmaking. The report indicated that it would be like a Swayamvar or a marriage bureau on
Television. It is the case of the plaintiff that this article and other article which appear
subsequently in the newspaper as well as internet uncannily replicate the information
confidentially disclosed by the plaintiff to the defendants during their meetings and
presentations. When the plaintiff came to know in August, 2001 that defendant is going to
launch a TV reality show 'Shubh Vivah', plaintiff wrote a letter dated 7.8.2001 to the defendant
to clarify as to what this reality show Shubh Vivah was and then a legal notice was sent to the
defendant dated 13.8.2001. The defendant replied the said legal letter by stating that what
they are making was not a copy of Swayamvar and also took the stand that they have made the
plaintiff aware in their meeting held on 30.10.2000 that defendants were in the process of
producing a programme based on the same theme.
One of the contentions was that the copyright was for creative, unique and novel TV reality
programme to conduct a real life matchmaking show by giving girls the opportunity, with
mediation by an anchor person, to choose a husband of their own choice from a line-up of the
suitors in the presence of parents in the studio. The plaintiff had sought copyright in developed
production of his concept and the format of his unique match making show which was brought
to the attention and domain of the defendants first in August, 1998 and again in October and
November, 2000. It was contended that the proposed TV programme of the defendants Shubh
Vivah launched by defendant according to Times of India, Delhi Edition dated 31.8.2001 gives
the following primary characteristics:
1. A Studio based reality television show.
2. On the subject of match making.
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3. Providing a platform to young women to choose a spouse from a short list of potential
suitors.
4. Mediation by a celebrity anchorwoman.
5. Involvement of parents of the girl and suitors.
6. Enabling selection of spouse through various devices.
7. Rewarding the couple after Swayamvar is concluded.
8. Selection process through matrimonial bureau, etc.
9. Empowerment of women through giving her power of selection.
10. Giving of gifts to the engaged couple as 'Streedhan'.
It was then contended that taking the plaintiffs' time and developed concept of real life TV
show of spouse selection and subsequent reproduction of the same in the format of proposed
TV show by the defendants titled Shubh Vivah amounts to infringement of plaintiffs' copyright.
It was contended that when plaintiff has submitted its programme proposal for consideration,
the same was done on the understanding that the broadcaster will either accept it or reject it.
Therefore, the defendants by using the said information imparted to it in strict confidence by
the plaintiff breached the confidence reposed by the plaintiff in them. The essential
confidential aspects of the plaintiff's concept and programme which were not in public domain
or common knowledge according to counsel for the plaintiff are as follows :
(a) Reality TV - this in itself was unique because it had not happened before;
(b) Spouse selection, and not merely matchmaking (i.e. marriage, not just a dating show).
(c) One person would have the power to select, not both.
(d) That it would be the woman deciding, which is a role reversal?
(e) Adoption of the name 'Swayamvar' for instant recall and recognition, however with
fundamental differences from the notion of a 'swayamvar' as familiarized to the
populace through epic like 'Ramayana' and 'Mahabharata' namely - .
i) In these stories, swayamvar is confined only to 'raj samaj' or royalty.
ii) The selection was based on the fulfillment of a predetermined task, such as an
act of bravery, hence there was no 'choice' vested in the woman in the strict
sense.
It was contended that by mis-appropriating the concept of the plaintiffs' programme of
Swayamvar and announcing of the making of the programme on similar lines, the defendants
have inflicted huge losses and damage to the commercial potential of the plaintiffs programme
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by luring away potential advertising sponsors. Plaintiff had contended that plaintiff has made
out a prima facie case for grant of injunction because if once plaintiff has submitted a scenario
or concept for TV reality show in case of breach of confidence the defendants should be
restrained from showing Shubh Vivah till the plaintiffs launch their firstever reality show on
Doordarshan. It was contended that balance of convenience is also in favor of the plaintiffs and
if defendants are allowed to telecast their TV serials Shubh Vivah which has been pirated from
the concept developed by the plaintiff; it would amount to robbing of plaintiff of its novelty.
Mr.Sibal has contended that novelty/originality in an idea can be derived from the application
of human ingenuity to well known concepts.
Supreme Court observed that,
There can be no copyright in an idea, subject matter, themes, plots or historical or legendary
facts and violation of the copyright in such cases is confined to the form, manner and
arrangement and expression of the idea by the author of the copyrighted work.
Where the same idea is being developed in a different manner, it is manifest that the source
being common, similarities are bound to occur. In such a case the courts should determine
whether or not the similarities are on fundamental or substantial aspects of the mode of
expression adopted in the copyrighted work. If the defendant's work is nothing but a literal
imitation of the copy-righted work with some variations here and there it would amount to
violation of the copyright. In other words, in order to be actionable the copy must be a
substantial and material one which at once leads to the conclusion that the defendant is guilty
of an act of piracy.
Where the theme is the same but is presented and treated differently so that the subsequent
work becomes a completely new work, no question of violation of copyright arises.
Where however apart from the similarities appearing in the two works there are also material
and broad dissimilarities which negative the intention to copy the original and the coincidences
appearing in the two works are clearly incidental no infringement of the copyright comes into
existence.
In R.G. Anand V M/S Delux Films & Others12 it was observed by the Supreme Court that Where
the same idea is being developed in a different manner, it is manifest that the source being
common, similarities are bound to occur. In such a case the courts should determine whether
or not the similarities are on fundamental or substantial aspects of the mode of expression
adopted in the copyrighted work. If the defendant's work is nothing but a literal imitation of the
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12 1978 AIR 1613, 1979 SCR (1) 218 4
copy-righted work with some variations here and there it would amount to violation of the
copyright. In other words, in order to be actionable the copy must be a substantial and material
one which at once leads to the conclusion that the defendant is guilty of an act of piracy.
In Wander Ltd. & Anr. v. Antox India P. Ltd13, The Honorable Supreme Court observed that, "The
interlocutory remedy is intended to preserve in status quo, the rights of parties which may
appear on a prima facie case. The court also in restraining a defendant from exercising what he
considers his legal right but what the plaintiff would like to be prevented, puts into the scales,
as a relevant consideration whether the defendant has yet to commence his enterprise or
whether he has already been doing so in which latter case considerations somewhat different
from those that apply to a case where the defendant is yet to commence his enterprise, are
attracted."
In Colgate Palmolive (India) Ltd. V Hindustan Lever Ltd.14, the honorable court decided that It
was contended that defendants have made many episodes whereas the plaintiff has yet to
commence making any episode and, therefore, interlocutory injunction cannot be granted
against the defendants.
Therefore, the court had restrained the defendants, theirs agents from transmitting or enabling
the transmission by television of the programme entitled 'Shubh Vivah' or any other
programme or transmission whatsoever having its subject or theme of match making for a
period of four months from the date of the order. If the plaintiffs are not in a position to
transmit on television its programme entitled 'Swayamvar' within a period of four months,
defendants shall be at liberty to transmit its programme Shubh Vivah after expiry of four
months. In case the plaintiff launches its programme 'Swayamvar' within a period of four
months from the date of the order, the defendants are further restrained from transmitting or
showing or exhibiting or televising its programme 'Shubh Vivah' or any other programme having
its subject or theme of match making for a further period of two months. This further period of
two months is given so that the plaintiffs will have a head start by televising its episodes for two
months. Nothing said in this order shall be an expression of opinion on the merit of the case.
Furthering the cause of copyright, in Section 57 of the Indian Copyright Act, 1957 the provision
relating to moral rights are described. The section is as follows:
“Author's special rights. Independently of the author' s copyright, and even after the
assignment either wholly or partially of the said copyright, the author of a work shall have the
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13 1990 (Supp) SCC 727 5
14 (1998) 1 Comp LJ 171 MRTPC
right to claim the authorship of the work as well as the right to restrain, or claim damages in
respect of,-
any distortion, mutilation or other modification of the said work; or
Any other action in relation to the said work which would be prejudicial to his honor or
reputation.
The right conferred upon an author of a work by sub- section (1), other than the right to claim
authorship of the work, may be exercised by the legal representatives of the author:”
In Amar Nath Sehgal V. Union of India, the Delhi High Court upholds the moral right of an
author in its landmark judgment for the first time. And the court also awarded 5 lacs rupees as
damages. The government was also asked to do the needful for the author as the court directs.
Amar Nath Sehgal is a much renounced artist and sculpture who created a mural in the lobby of
Vigyan Bhawan at Delhi on the direction and order of the appropriate authority. In spite of
much representation to the appropriate authority the mural was not restored. After that the
plaintiff filed a suit against the appropriate authority under Sec 57 of the Copyright Act, 1957
claiming for a permanent injunction from restraining the defendants from further distorting,
mutilating and damaging plaintiffs property and damages to be paid.
The Court termed the Moral rights as the soul of the author’s works. “The author has a right to
preserve, protect and nurture his creations through his moral rights. A creative individual is
uniquely invested with the power and mystique of original genius, creating a privileged
relationship between a creative author and his work.”
The language of the Section 57 makes it possible to legally protect the cultural heritage of India
through the moral rights of the artist. “Intellectual property and knowledge are interconnected.
Intellectual property embodies traditional thought and knowledge with value addition. Thus,
physical destruction or loss of intellectual property has far reaching social consequence.
Knowledge which has grown with it is also lost.”
The Court held that the plaintiff has a cause to maintain an action under Section 57 of the
Copyright Act, 1957 even though the copyright in the mural stands vested in the defendants. It
was further held that the defendants have not only violated the plaintiff's moral right of
integrity in the mural but have also violated the integrity of the work in relation to the cultural
heritage of the nation. The Court ordered the defendants to return to the plaintiff the remnants
of the mural permanently with no rights vesting with the defendants henceforth and ordered
the defendants to pay damages with costs.
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Copyright protection is strong and effective enough to enable an author to effectively
commercialize the products of his labor to the exclusion of others. The protection extent not
only to the Copyright as understood in the traditional sense but also in its modern aspects.
Thus, online copyrighted materials are also adequately protected, though not in clear and
express term. To meet the ever increasing challenges, as posed by the changed circumstances
and latest technology. The existing law can be so interpreted that all facts of copyright are
adequately covered. This can be achieved by applying the purposive interpretation technique
which requires the existing law to be interpreted in such a manner as justice is done in the fact
and circumstances of the case. Alternatively existing law should be amended as per the
requirement of the situation. The existing law can also be supplemented by the newer ones,
specifically touching and dealing with the contemporary issues and problems.
4.16 ‘ENFORCEMENT IS A PART OF IP MANAGEMENT’
A nyone who has had the experience of dealing with the court systems would think twice
before approaching a court for any litigation. Any lawyer, who guarantees that he
would win a case for the enterprise, should stop practicing law. Litigation in almost all
jurisdictions of the world, requires time, patience and to top it all, money. But if litigation is
handled more cautiously and is a part of the enterprise’s business objective, then it is highly
recommended.
The average number of litigation cases filed in India as a percentage of the number of rights
registered in respect of patents, trademarks and designs for the period 1996 - 2004 was
approximately 0.04 per cent. A similar figure for the United States in 1988 was approximately 1
per cent15. One of the reasons for this low percentage could be that infringement of IP rights is
not prevalent across businesses, but there are insufficient statistics to determine whether this
is so.
It is an accepted fact that because of the reason mentioned above, some IP owners get
discouraged from actively enforcing their rights. But we should not come to the conclusion that
all owners behave in the same manner. There is a silent majority of IP owners who enforce their
IP rights without having to file a court document or step into the witness box. In many respects
it is these business organisations that are maximising their IP enforcement strategy.
15 Kevin G Rivette and David Kline, Rembrandts in the Attic, Unlocking the Hidden Value of Patents, Harvard
Business Review, p 47.
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The importance of enforcement of IP as part of IP management and supporting of IP
commercialisation cannot be doubted. Not only must an enterprise be confident that it can
enforce its IP rights but it may wish to be proactive and drive its business objectives by seeking
out infringers. As with many other aspects of managing a business, the trick is to find the
balance.
4.17 COMMON ISSUES CONCERCING ENFORCEMENT
E ach of the pieces of legislation in India relating to IP rights address in some degree, the
aspects of enforcement of those respective IP rights. Here are some common themes.
4.17.1 UNAUTHORISED EXERCISE OF MONOPOLY RIGHTS
E nforcement of Intellectual Property is all about maintaining the enterprise’s monopoly
position or competitive advantage over its competitors. In this respect it is exercising the
fundamental economic right to ensure that no other person/enterprise takes advantage
of the effort that it took to acquire those rights. On every occasion where there are
alleged infringing acts it is a case of studying the alleged infringing act and comparing it against
the monopoly rights that are held by the enterprise. Only after comparing the infringing act
should the enterprise take the next step on how to deal with the infringer. Generally the best
and easiest option is filing a complaint in the court. There are other ways to handle such
infringing acts apart from filing a court case. This would be discussed in the coming pages.
4.17.2 DEFENSIVE ACTION
E ach and every piece of IP legislation sets out various defences to infringement actions.
This is the second step in analysing the prospects for the enterprise enforcing its rights.
For these reasons use of disclaimers and notices becomes very important.
4.17.3 OPPOSING THE GRANT OF REGISTRATION
I n relation to the forms of IP that involve a formal registration process there is an
opportunity for a competitor to oppose the grant of registration to the enterprise. This
enables a competitor to delay the grant of IP rights to the enterprise. Of course, there are
rules which preclude parties from running frivolous actions. However, IP has become so
intricate and complex that it would be rare for a court to conclude that an argument posed by a
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competitor was frivolous or lacked substance. A competitor, like the enterprise itself, is entitled
to its day in court.
Now, if we see this in relation to patents, the information which is presented in opposition
proceedings is not guaranteed to be kept confidential.
In these circumstances the enterprise is left with a dilemma, and here two important questions
arise:
1) Should it bypass the hearing and take the case straight to court because the court will
have the power to suppress the release of confidential information?
2) Alternatively, does the enterprise proceed with the opposition without submitting the
relevant information? and thereby suffer the risk that it may lose the opposition
proceeding because critical information was not presented.
4.17.4 CHALLENGING THE REGISTRATION
I t is open to the defendant in IP enforcement proceedings to challenge the validity of the IP
rights asserted by the enterprise. In relation to registered forms of IP this can involve
lodging a counter-claim that the registration should be revoked on the basis that the
relevant criterion for registration has not in fact been met. This has been of particular
concern in relation to patents until recent amendments. The threat of IP rights being lost in the
heat of battle adds to the complexity of enforcement of IP rights. An enterprise may find more
value in being able to assert the right rather than following through with an actual action or
proceeding. This is because, in many cases, letters of demand are sufficient to achieve an
acceptable outcome. Often this depends on the muscle that the enterprise is able to flex.
4.17.5 INTERNATIONAL ISSUES
T he true opportunity for catching the ‘big fish’ from commercialisation of IP lies in
penetrating the international markets. Not only is it often complex and costly to secure
IP rights in those markets, it is also complex and costly to enforce those IP rights in those
jurisdictions. Each country is entitled to rely upon its own sovereignty and its own laws. If
foreign IP rights are being infringed by an overseas competitor, the Indian enterprise is faced
with the dim prospect of litigating in another jurisdiction that is unfamiliar and also the fear
that the foreign courts might be hostile towards Indian enterprises. One more important aspect
which must be kept in mind is that countries such as the United States and countries in Europe
are significantly more expensive than India. Finally international IP enforcement is often
undertaken in the context of having to fight against an established competitor. It is relatively
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rare for Indian IP owners to hold a strong market position in overseas markets. Enforcing those
IP rights in those overseas markets will often entail having to litigate against a competitor who
already has a competitive advantage and who can enjoy significant advantages by using its
financial muscle to delay the litigation and manipulate the court system.
4.17.6 EXPERTISE OF COURTS
I f an enterprise is going to make a sacrifice to litigate to enforce its IP rights it will want
confidence that the judge hearing the matter understands not only IP law but is able to pick
up the technicalities involved in this highly specialized field of law. The Indian legal system
does not enjoy a special division devoted to IP rights. Although the Judicial Academy is
seeking to establish specialist areas, the allocation of judges to hear IP matters has not
traditionally been undertaken on the basis of expertise. This can be compared with the position
in the United States where a particular court was established in order to deal with IP issues and
litigation because the Federal Government recognised the importance of an IP system for the
growing economy.
4.17.7 PRECEDENT VALUE
I n order to proceed with the enforcement action, the enterprise must consider in
determining whether the marketplace in which the enterprise conducts business take note
of such an action? Or whether to proceed with an enforcement action is the precedent
value that the litigation will bestow? Of course this is a double-edged sword for the
enterprise. A success in the action may be enough to drive infringers and competitors away
from the market. The failure may see the collapse of its business together. For this reason, it is
imperative that the enterprise thoroughly assesses its IP enforcement strategy in the context of
its whole business. Where stakes are this high the IP advisers for the enterprise will usually
recommend the advice of senior barristers. Senior counsel experienced in IP litigation are
usually worth their weight in gold (and often there is a fair amount of weight). They bring to
bear on the decision process a wealth of experience in arguing the same or similar cases before
the courts and in particular the relevant judges on a regular basis. They will not only be able to
add value to determining prospects of success but also, as is the case with most litigation, be
able to greatly assist in determining the appropriate time to settle and the terms of such
settlement.
4.17.8 INSURANCE: DEFENSIVE AND OFFENSIVE
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I t will be evident from the above discussion that cost plays an important part in the strategy
for IP enforcement. To some degree this risk can be transferred in part by taking out
offensive and defensive IP insurance. This insurance itself has a cost and its usefulness
needs to be weighed against the perceived risk of IP enforcement having to occur.
4.17.9 ALTERNATIVE DISPUTE RESOLUTION
E nforcement of IP rights inherently raises the spectre of litigation. For those
entrepreneurs unfortunate enough to have encountered litigation the risks, in terms of
results, time and cost, are embedded in their memory. The drawbacks associated with
litigation have fostered alternative mechanisms to resolve disputes such as mediation
and arbitration and it is now common to find a standard clause in contracts requiring the
parties to at least attempt some form of ADR before resorting to litigation.
Mediation, which typically entails a mutually respected independent person facilitating a
settlement, will only succeed if all participants in the dispute are truly open-minded about
resolving the dispute. It is surprising to hear about the number of disputes which were referred
to a mediator that were not resolved by mediation because resolution short of a judicial
or1arbitral decision would not meet one party’s, objectives. Arbitration is-often criticised as
‘being as risky as normal litigation because of the uncertainty of the result and the costs
involved. Despite this, arbitration can be a useful mechanism where the source of dispute is a
technical rather than legal matter, and where the’ dispute relates to an international contract.
In the latter circumstance it is common for the parties to invoke the arbitration or conciliation
rules declared by the United Nations Commission on International Trade Law (UNCITRAL) or the
rules of the International Chamber of Commerce (ICC).
4.17.10 REMEDIES
E ach form of IP legislation sets out the remedies that are open to an enterprise for
successfully enforcing its IP rights. Those remedies include a right to be paid damages or
an account of profits (to be elected by the plaintiff) as enshrined under Section 111 of
the Patents Act, 1970. In addition, the owner of IP rights is able to seek interim and final
injunctions.
4.17.11 DAMAGES AND ACCOUNT OF PROFITS
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T he owner of IP rights who has established infringement of those rights must elect as to
whether to be compensated for that infringement by payment of damages or account of
profits. There is a doctrinal difference in these forms of compensation. Account of profits
is intended to prevent unjust enrichment to the defendant whereas damages is designed to put
the plaintiff in the same position as it would have held if the infringement had not occurred.
The difference in the amount of money that might be awarded by the court is hard to define.
Usually the plaintiff will seek to undertake an enquiry as to the profits that may have been
earned by the defendant.
4.17.12 ADDITIONAL DAMAGES
A t least in relation to infringement of copyright and EL rights the owner of the IPR will be
able to seek an order that the infringers pay ‘additional damages’ where the court is
satisfied that there has been a flagrant infringement of the IP rights. The ACIP Report
also calls for similar rights to be available for registered designs, patents and
trademarks.
4.17.13 INNOCENT INFRINGEMENT
S ome of the IP legislation limits the remedies available where the defendant can establish
that the infringement was innocent.
4.17.14 LIMITATION PERIODS
M ost of the forms of IP legalisation specify the periods within which an action for
infringement must have commenced (known as the ‘limitation period’). In all cases
the period is six years from the date in which the infringement occurred. A failure to
commence an action within that period means the right to enforce the IP rights in
respect of the alleged infringing act will be lost. The practical effect of such a significant delay in
enforcing IP rights is in most cases unlikely to be significant because the commercial imperative
has probably passed by.
4.18 LITIGATION STRATEGY
I f the task of managing the IP were to be considered a project then one of the foreseeable
phases of that project is the enforcement of IP rights. As with any project management
exercise it is appropriate, if not best practice, to reassess the overall project at significant
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milestones. This is certainly the case when an enterprise is at a stage of having to decide
whether to enforce its IP rights against a suspected infringer or not. In these circumstances the
enterprise should only proceed once it has taken stock of its risks in the context of its overall
business objectives. This entails considering the commercial, legal and, if relevant, political risks
in following through with an IP enforcement strategy. An analysis of risk entails being able to
identify the risks and this in turn relies upon the enterprise having obtained as much relevant
information as possible to help it identify and evaluate those risks.
The enterprise should obtain appropriate advice from an IP expert (which may include
barristers). The enterprise should have assessed, to the extent possible, the financial
implications of either winning or losing the case. The assessment should consider the impact
upon senior managers and staff because they will be required to assist in the preparation of the
case and to give evidence. Finally the enterprise needs to clearly understand the ramifications if
it were to win or lose the case.
All of these issues should be set out in an appropriate risk management plan which would
usually be prepared by its advisers. The enterprise should seek from its legal advisers a budget
for the conduct of the IP enforcement proceedings. The advisers to the enterprise should also
be able to specify the critical ‘break points’ in which an enterprise may seek to reassess its
position and, if thought appropriate, change tack. This may entail settling or not continuing
with the action.
I 4.18.1 A POSITIVE STRATEGY
f the enterprise wishes to implement an IP enforcement strategy that is proactive, it will be
usually seeking to achieve the following objectives:
# to prevent competitors from entering into the market for as long as possible; or
# to come out with a strategy to generate further licensing revenue.
The proactive IP enforcement strategy has been effectively implemented by Priceline.com
which obtained patents on its business methods like the reverse auction air tickets etc. and
took a giant corporation like Microsoft to court by challenging the patents held by Microsoft
and eventually settling the dispute in which Expedia (a Microsoft website) agreed to pay
royalties to Priceline (discussed later in this chapter).
Proactive IP enforcement strategy must fit with the business objectives of the enterprise.
Common elements include:
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· Identifying potential infringement: This entails establishing a process and culture within
the enterprise that facilitates the identification of infringement. This may be as simple
as staff noting counterfeit products being sold at the local fete and reporting that to
relevant key managers on Monday morning;
· Establishing an ‘aura’ for the guarding of IP of the enterprise: Many of the major
technology companies achieve a well-known position in the industry for being voracious
in protecting their IP. Clothing companies such as Nike and Reebok protect their brands
by taking similar stringent efforts. Of course, this needs to be undertaken in a balanced
fashion otherwise a strategy can have a negative impact. An example of this occurred in
the lead up to the 2000 Sydney Olympics when lawyers for the Olympic Committee sent
letters of demand to a small ship that had been using the word ‘Olympic’ as part of its
business name only to find that the letter of demand was waived on a national sports
television show in an unflattering manner;
· Searches of the IP registers to ascertain who is using similar technologies or brands: In
relation to patents, if the searches of the patents register reveal regular hits of the
enterprise’s technology it may give rise to potential infringement actions. If the
enterprise’s patent is regularly cited then it is probable that it is a fundamental piece of
technology which cannot be worked around. This presents a reservoir for licensing
opportunities.
“Several companies, including Texas Instruments, Intel, have established groups that approach
rivals to demand royalties on old patent awards. In many cases, they have been successful in
extracting license agreements and/or past royalties. For instance, Texas Instruments is
estimated to have netted close to one billion dollars annually from patent licenses and
settlements resulting from their general counsel's aggressive enforcement policy.”16
4.18.2 MAREVA INJUNCTION
A Mareva injunction is an ex-parte injunction17 that has the effect of freezing the assets of
a party pending further order or final resolution by the court.18 The Mareva injunction is
aimed at a specific defendant and not at his assets.19 It is to restrain him from taking his
16 Josh Lerner , The Patent System and Competition available at <http://www.ftc.gov/opp/intellect/lernerjosh.pdf>
17 An ex-parte injunction is an injunction which is granted without giving the other party a chance to be heard.
18 Mareva Injunction Definition, available at <http://www.duhaime.org/LegalDictionary/M/MarevaInjunction.aspx>
(accessed on 5th October, 2012)
19Ibid
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assets out of the court’s jurisdiction.20 If the defendant is not stopped from taking his assets out
of the Court’s jurisdiction then there is a possibility that plaintiff despite getting a judgment in
his favour would be left remediless.
For example, let us imagine a situation where a court of Country Q is not empowered to pass a
Mareva injunction. This means that a defendant can take his assets outside the Court’s
jurisdiction without any problem. A suit is filed by Mr. X (plaintiff), a resident of Country Q
against Mr. Y (defendant), a resident of country P. Mr. Y, being aware of the possibility that his
assets might be attached if he loses the case removes them from the Court’s jurisdiction to his
country P before the trial begins. The court at the conclusion of trial considers it necessary to
attach the assets of Mr. Y, the defendant, in order to give proper relief to Mr. X, the plaintiff,
and orders for the same. However, since the assets that are sought to be attached are now no
longer within the Court’s jurisdiction, having been removed earlier by Mr. Y, they cannot be
attached. And the Mr. X despite a decision in his favour cannot get his desired relief. Mr. X
cannot go to country P to get Mr. Y’s assets to get his desired relief. The judgment has no value
because it cannot be enforced. It is evident from this that allowing defendants like Mr. Y to take
away their assets or property from the Court’s jurisdiction gave scope for rampant abuse. For a
long time that the Mareva injunction did not exist, this abuse did take place. Foreign
companies, to evade possible adverse judgments, often removed their assets from the Court’s
jurisdiction before the trial.21 As a result, the plaintiff was left holding nothing more than an
empty judgment.22 So to prevent such irreparable harm to the plaintiff, the court, through an
ex-parte Mareva injunction, freezes the assets of the defendant. 23An ex-parte injunction
ensures that the defendant is not aware of the proceedings and this way, the plaintiff’s right to
a relief is protected. A Mareva injunction is like and akin to “attachment before judgment”.24 It
is also analogous to the remedy of injunction under Order 39, Rule 1 and 2.25
In India, the court is empowered to grant an attachment before judgment or a Mareva
injunction under Order 38, Rule 5 of the Code of Civil Procedure, 1908. Rule 5(1) states that if at
any stage of the suit, the court is satisfied that the defendant with the intent to obstruct or
delay the execution of any decree that may be passed against him, is about to dispose of, or
remove from the Court’s jurisdiction, the whole or any part of his property, then the court may
20Supra note 8
21Anonymous, The mareva injunction, available at <http://www.lawteacher.net/english-legal-system/essays/mareva-
injunction.php> (accessed on 5th October, 2012)
22Ibid
23Rite Approach Group Ltd v. Rosboron export,AIR 2007 Delhi 145
24Ibid
25Formosa Plastic Corporation Ltd.v Ashok Chauhan, MANU/DE/0259/1999
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direct the defendant to furnish security in a specified sum, and place at the court’s disposal the
property or equivalent value, as maybe sufficient to satisfy the decree. This indicates that two
essentials need to be met if the court is to grant a Mareva injunction under the Rule 5, Order
38. They are:
© The defendant is about to dispose of the whole or any part of his property26 and
© The disposal of property is with the intention of obstructing or delaying the execution of
any decree that maybe passed against him.27
The words obstructing or delaying the execution of any decree that may be passed against him
has been interpreted by the Apex Court to mean that before exercising the power under Rule 5,
Order 38, the court should be satisfied that there is a reasonable chance of a decree being
passed in the suit against the defendant.28
The Indian Courts have acknowledged that the Mareva injunction can be granted in India. In
Sundaram Finance Ltd. v. NEPC India Ltd29the Supreme court approved that the power to grant
an interim injunction extended to granting of a Mareva injunction in appropriate cases. The
Bombay High Court has also stated that the Mareva injunction, a well-known concept in English
law is recognized in India. 30
From the above it is established that one, the power of the Court to grant a Mareva injunction
exists in the Indian law and two, Indian courts acknowledge that it can be granted. Therefore,
now it is important to examine as to what the plaintiff has to show in order to get a Mareva
injunction passed in his favour.
A Mareva injunction is one type of temporary injunction. Therefore, the general criteria that
are taken into consideration by the Indian courts to grant a temporary injunction shall apply to
Mareva injunction as well. These criteria include the following-
Prima Facie Case - This means that the plaintiff must satisfy to the court that there is a bona
fide dispute, a strong case for trial which needs investigation and that if a decision is given on
the merits and facts of the case, there is a probability that the plaintiff would be entitled to the
26(Delhi) Uppal Engineering Limited Pvt. Ltd. v. Cimmco Birla Limited 2005 (2) ARBLR 404 (Delhi) at ¶12
27Ibid
28Raman Technology and Process Engineering Co. and Anr. v. Solanki Traders, (2008) 2 SCC 302 at ¶ 4
29[1999]1SCR89
30Ecohidrotechnika LLCVs.Black Sea and Azov Sea Production and Operating Administration of Shipping and Anr.,
2010(4) BomCR 785
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relief that he claimed.31 In other words, the plaintiff must show that he has a good arguable
case.
Irreparable Injury - The plaintiff must further satisfy the court that if the injunction prayed for is
not granted then he will suffer irreparable injury.32 And that there is no other remedy open to
him by which he can protect himself from the consequences of the apprehended injury.33
Balance of convenience - The third general criteria for a temporary injunction is proving that
the balance of convenience in the favour of the plaintiff. However an English case has held that
in the case of Mareva injunction, the third criteria is not see whether the balance of
convenience is in the favour of plaintiff but to examine whether it is just and convenient to
grant the injunction.34
In Abheya Realtors Private Limited v Ssipl Retail Limited & Another35 the Calcutta High Court
laid down specific criteria for granting a Mareva injunction and held that the claimant must
prove:
ü He must have a prima facie or good arguable case and
ü He must establish that the asset or assets within the jurisdictions were unlikely to
remain at the time when the judgement would be delivered and
ü Must show that as a result of the assets being taken out of the jurisdiction, he would
have no means to satisfy the decree
In Raman Technology and Process Engineering Co. and Anr.v. Solanki Traders36, the Apex Court
has held that in addition to a prima facie case, the plaintiff must establish that defendant is
attempting to remove or dispose of his assets with the intention of defeating the decree that
maybe passed. In Formosa Plastic Corporation Ltd.v Ashok Chauhan37 the court held that a
Mareva injunction can be granted to a plaintiff who has a proper claim in any case where there
are grounds for fearing that the defendant may defeat justice by transferring assets abroad or
by concealing them in the country. The court further stated that the purpose is to prevent a
31C.K Takwani, Civil Procedure 6 Eastern Book Company (2009) p. 331
32Ibid at p. 332
33Ibid
34Irish Response v. Direct Beauty Products,[2011] EWHC 37 (QB)
35 Available at <http://www.indiankanoon.org/doc/372105/>(accessed on 4th October, 2012)
36 (2008) 2 SCC 302
37MANU/DE/0259/1999
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defendant from dissipating or concealing his assets so as to make a judgment against him
worthless or difficult to enforce.
The above cases highlight that the criteria for granting of Mareva injunction is only developing
and that India has not yet developed specific criteria for the grant of Mareva injunction.38
While all cases do talk of a prima facie case being established and that the defendant must have
assets within the jurisdiction, factors beyond that have been subject to independent
interpretations of the court. Assistance with respect to this can be taken from foreign cases.
In the case of Dynasty Rangers v. SBSK Plantation39 the court laid down the following criteria for
the grant of a Mareva injunction- 1) A cause of action must exist at the time the order is to be
granted and the plaintiff must demonstrate a good arguable case; (2) the defendant must have
assets within the jurisdiction of the court; (3) the balance of convenience must be in favour of
the plaintiff being granted the injunction; (4) the plaintiff must establish that the defendant
lacks probity and that there is a real risk of dissipation of assets; and (5) there has been no
delay in applying for the injunction. Of the criteria mentioned above, determining what
amounts to a real risk of dissipation of assets has been extensively debated.40 The British Courts
have held that the plaintiff should through solid evidence show the risk of dissipating assets and
that prior conduct and unreliability of the defendant is good evidence to show this risk.41 What
form of evidence would be required in each case cannot be precisely laid down and it shall
depend on facts and circumstances of each case.42 In light of this, despite the fact that criteria
exist for the grant of Mareva injunction, the Indian Courts need to develop far more specific
criteria.
One point regarding the applicability of the Mareva injunction would like to be made. It has
been stated above that a Mareva injunction is targeted against a specific defendant. This raises
the question as to whether it shall also apply to anon-resident defendant whose assets are
within the jurisdiction of a particular court. Foreign courts have answered this question in the
affirmative. The Canadian Supreme Court in the case of Aetna Financial Services Ltd. v
Fiegelman43 has stated that the gist of a Mareva action is the right to freeze the assets of the
defendant when they are found within the jurisdiction of the court irrespective of the fact
at
38Mihir Naniwadekar, Mareva Injunctions revisited, February 18, 2011 available
<http://legaldevelopments.blogspot.in/2011/02/mareva-injunctions-revisited.html>(accessed on 4th October, 2012)
39Supra note 11
40Ibid
41Ibid
42Ibid
43[1985] 1 S.C.R. 2,Alsoavailable at <http://scc.lexum.org/en/1985/1985scr1-2/1985scr1-2.pdf>
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where the defendant resides.44In Rahman( Prince Abdul) v Abu Taha45, the English court held
that the Mareva injunction can be extended to both resident and non-resident defendants.
However, in India the position on applicability of Mareva injunction to a non-resident
defendant is not conclusive. The Supreme Court of India in the case of M.V.A.L Quamar v.
Tsavliris Salvage (International) Ltd. &Ors46, in its obiter discussed a judgment of the New
Zealand Supreme Court47 and an English case48 on this point.
In Black Clawson International Ltd. v Paperwork Waldorf Aschaffenburg49, the New Zealand
Supreme Court held that it had the jurisdiction to grant a Mareva injunction to a non-resident
defendant.50It stated that the old English procedure of foreign attachment was the perfect
respectable ancestry for this procedure.51 The court further held that granting a Mareva
injunction to a non-resident defendant was necessary if the court wanted to approach the
modern problems associated with the flexibility of the modern business.52 Explaining the
flexibility of the modern business the Court stated that in the present age vast amounts of
money could be easily transferred from one country to another in a matter of seconds as a
result of a phone call or a telex message.53 It relied on facts of reported Mareva cases and the
number of Mareva injunctions granted in London to highlight that the jurisdiction of Courts in
Mareva injunction to non- resident defendants was wholesome and a fulfilling need.54
In the English case, Rasu Marimata55, the court explained the reasons why Mareva injunction
should apply to a non-resident defendant. The court said that if a Mareva injunction was not
allowed then the plaintiff would be faced with a series of difficulties. The plaintiff would need
to take leave of the court to serve the non-resident defendant. After being served the
defendant would be given time to enter appearance from that date. The defendant on being
served would automatically, remove the assets out of the jurisdiction if he feels the case can
turn against him. If that happens, then the plaintiff will not be able to enjoy the fruits of his
judgment. Therefore, the court concluded that an injunction on an ex-parte basis could be
44Supra note 8
45 [1980] 1 WLR 1268
46AIR 2000 SC 2826
47Black Clawson Inter-national Ltd. v. Paperwork Waldhof Aschaffenburg, 1975 AC 591
48RasuMaritima case [1977] 3 All ER 324, 333-334
491975 AC 591
50AIR 2000 SC 2826 at ¶ 53
51Ibid
52Ibid
53Ibid
54Ibid
55[1977] 3 All ER 324
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granted in favour of the plaintiff in these situations. Granting this injunction caused little
inconvenience to the defendant as he could discharge it at any time on short notice.
Therefore, both these judgments were in the favour of granting a Mareva injunction against a
non-defendant. The Supreme Court of India in the M.V.A.L Quamar case expressed it inclination
to agree with these two decisions but since that was not the issue raised in the case, refrained
from expressly stating that it did agree.56
Therefore a Mareva Injunction suit can be filed where there is apprehension that the defendant
may remove the assets outside the jurisdiction of the court or may dissipate them before the
trial concludes. To ensure that none of this happens and the attachment does take place, the
plaintiff can file for a Mareva injunction.
4.18.3 ANTON PILLER ORDER
A n Anton Piller order is an interim order that allows a plaintiff to enter the defendant’s
premises to search and seize evidence, if any, without prior warning.57The fact that such
a search and seizure can take place without any prior warning indicates that this order
would most effective when it is issued ex parte. Thus an Anton Piller order is an ex parte ad
interim order.58 It is imposed on the defendant to restrain him from interfering with a search
and seizure that is conducted by the plaintiff.59These orders are often used together with
Mareva injunctions.60 The effectiveness of an Anton Piller order under the Act is highlighted
through the following example.
We consider a case under the Plant Varieties Act. Let us imagine a situation where a variety
registered under the Act is infringed through being sold by a breeder who is not registered
under the Act.61 The registered breeder of the variety is Mr X. He has registered variety ‘AZP’
under the Act. ‘AZP’ is being sold by a breeder, Mr. Y, who is not registered under the Act. Mr.
X becomes aware of this but to be successful in a suit of infringement he needs to make sure
that the variety being sold by Mr. Y, is ‘AZP and must collect any other evidence associated with
it. Such evidence can be collected by Mr. X if an Anton Piller order is issued in his favour against
Mr. Y. So, is Mr. X allowed to file for an Anton Piller order under the Act? Section 66(2) of the
56AIR 2000 SC 2826 at ¶ 54
57SauravBhowmik, Anton Piller and implementation against Software Piracy, March 2012 available at
<http://www.psalegal.com/upload/publication/assocFile/IPR&TechnologyBulletin-IssueXXI.pdf> (accessed on 6th
October, 2012)
58Bucyrus Europe Limited and Anr, vVulcan Industries Engineering Company Private Limited,2005(30)PTC279(Cal)
59Supra note 47
60Ibid
61Section 64(b), The Protection of Plant Varieties and Farmers’ Rights Act, 2001 available
at<http://agricoop.nic.in/PPV&FR%20Act,%202001.pdf>(accessed on 4th October 2012)
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Act empowers Mr. X to apply for an interlocutory order to preserve evidence, an infringing
variety or any other evidence. For preservation of evidence mentioned in this sub-section, first
it is necessary to collect that evidence. Thus, Mr. X can under the Act apply for an Anton Piller
order. This order would allow Mr. X to enter Mr. Y’s premises to search for the infringing
variety and if found, to seize that variety along with the other sales proceeds associated with it.
Such search and seizure would only help in the preservation of the infringing variety,
documents or other evidence as enumerated in section 66(2) of the Act. So we see that an
Anton Piller order can be extremely effective in possible infringement suits that would be filed
under the Act.
The concept of Anton Piller Orders originated in the English case of Anton Piller K.G. v.
Manufacturing Process Ltd., and Ors.62The court explained that an Anton Piller order was only
an order on the defendant, permitting inspection.63 It commanded him to permit entry.64It was
not equivalent to a search warrant.65The defendant was open to refuse to comply with the
order but he could only do so at his peril of further proceeding for contempt.66Also, plaintiff’s
agents could not use force in the face of defendant’s denial of permission.67 In other words,
great responsibility rested with the solicitor of the plaintiff to ensure that the order is carried
out meticulously with full responsibility for the defendant’s right.68 Explaining the purpose of
the order the Court held that this order was only passed to ensure that vital evidence in the
case was not destroyed and that justice was done between the parties.69 It was an order based
on equity that assisted the plaintiff to establish its case and to prevent the destruction of
evidence by the defendant.70
Courts in India have primarily treated Anton Piller orders as a form of injunctive relief.71 This
implies that all Anton Piller order applications shall be dealt under Order 39 of the Code of Civil
Procedure which deals with temporary injunctions and interim orders. It also means that
generally the plaintiff must show:
Ä A prima facie case
at
62 1976 RPC 719
63Anton Piller K.G. v. Manufacturing Process Ltd., and Ors, 1976 RPC 719, 726
64Ridgewood case, see Anton Piller Order Definition available
<http://www.duhaime.org/LegalDictionary/A/AntonPillerOrder.aspx>(accessed on 6th October, 2012)
65Supra note 53
66Ibid
67Supra note 54
68Supra note 53
69Ibid
70Supranote 47
71Ibid
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Ä Irreparable Injury
Ä Balance of convenience in his favour before such an order is granted
These 3 grounds have been explained in detail earlier in the note, in the part that deals with
Mareva injunctions. However, the specific criteria that the Indian courts have evolved with
respect to Anton Piller orders which, the plaintiff must show in order to get an order issued in
his favour, is as follows:
µ There is an extremely strong prima facie case against the defendant72
µ The damage, potential or actual, must be very serious for the plaintiff73 and
µ There must be clear evidence that the defendants have in their possession relevant
documents or things and that there is a real possibility that they may destroy such
material before an inter-application can be made.74
The first two conditions are normally satisfied through proof of title to intellectual property
rights and clear evidence of infringement.75 The third condition, likelihood that an infringer will
dispose of important evidence, is normally the crucial element of proof required to obtain an
Anton Piller order.76
Anton Piller orders have been recognized in India for over the past 20 years.77 In Hindustan
Pencils (P) Ltd. vs. India Stationery Products Co. and Anr78 , the Delhi High Court, citing Kerly in
Law of Trade Marks and Trade Names, stated that in extremely urgent cases an “Anton Piller”
order, for inspection of defendant’s premises without prior warning and discovery of his
records, maybe obtainable.79 Such an order was similar to the ex parte interloctury order to
take an inventory of article etc. passed in an ordinary suit.80In Mohit Bhargava v. Bharat
Bhushan Bhargava and Ors81 , the Apex Court held that an Anton Piller order could be issued
even if the property or person concerned is outside the jurisdiction of the Court.82The Delhi
72Supra note 47
73Ibid
74Supra note 47
75Viacom Ha! Holding Co. v. Persons Unknown, Available at <http://reports.fja.gc.ca/eng/2001/2001fc27974.html>
76Ibid
77Supranote 47
78AIR 1990 Del 19 ( This particular case has been cited over 98 times)
79AIR 1990 Del 19 at ¶13
80National Garments, Kaloor, Cochin VsNational Apparels, Ernakulam, Cochin, AIR 1990 Ker 119 at ¶ 7
81 (2007) 4 SCC 295
82Mohit judgment at ¶10 (In this case, the executing court which had passed the Anton Piller order lost jurisdiction over
the case at a later point of time. The person against whom the Anton Piller order was issued thus argued that this order
should fall to the ground. The Apex Court rejected this argument and held as stated)
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High Court in Autodesk Inc. and Anr v Mr. A.V.T. Shankardass and Anr83while dealing with
software piracy held that where the Court was satisfied that the party is not able to produce
the desired evidence for reasonable circumstances, it may assist a party by appointing a Local
Commissioner to get that evidence.84The Court stated that the objective of appointment of
Local Commissioner, in software piracy matter was to preserve and protect the infringing
evidence and not to collect it.85 The incriminating evidence could only be obtained from the
premises of the opposite party alone.86 And in the absence of an ex parte appointment of a
Local Commissioner, there was likelihood that such evidence may be lost, removed or
destroyed.87It further held that request for ex parte appointment of Local Commissioner was
intended to sub serve the ends of justice as it was imperative to have an element of surprise so
that the actual position is not altered.88Moreover, in cases of an action of infringement of
software and piracy, issuance of notice to opposite party regarding application for appointment
of Local Commissioner by Court take evidence and assess infringement was not mandatory.89
Thus, the Autodesk90case could possibly affect the manner in which an Anton Piller order may
be executed under the Act when such cases arise. All of this shows that an Anton Piller order is
a viable relief that can be claimed under the Act.
Therefore Anton Piller orders are particularly effective in cases of alleged trademark, copyright
or patent infringement. In order to obtain such an order, the applicant must prove that:
º it has a cause of action or has suffered damages;
º the offending party possesses specified documents or objects that constitute vital
evidence to substantiate the applicant's claim; and
º there is a well-founded belief that the evidence may be hidden, moved or destroyed
before the case comes to trial.
Anton Piller orders are often used together with Mareva injunctions, which are used to restrain
defendants from removing assets from the jurisdiction of the court. The genesis of the Anton
Piller order can be traced in India in the case of Anton Piller Vs Manufacturing Processes (1976)
RPC 719.
83 AIR 2008 Del 167
84Supra note 73
85Ibid
86Supra note 73
87Ibid
88Supra note 73
89Ibid
90Ibid
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A court would generally bestow an Anton Piller order only if the following three conditions are
fulfilled:
B existence of a strong prima facie case
B potential or real damages
B Presence of clear evidence must exist that the defendants have in their possession
incriminating documents or things and that there is a real possibility that they may
destroy such material before any proceedings inter parties can be made.
4.18.4 JOHN DOE ORDER
A John Doe order is passed against nameless/unknown defendant(s), who have allegedly
committed some wrong and whose identity cannot be ascertained by the plaintiff.91
These are used in situations where there is a great chance of infringement to take
place and if the plaintiff seeks out an individual infringer every single time, then there would be
a financial loss, loss of time, and other types of losses to the plaintiff. So a plaintiff applies for a
John Doe order to avoid delay in the process of justice due to anonymity of the potential
infringer or defendant.92 The court names the defendant as John Doe until such time the
defendant is identified.93 If after passing of this order, the plaintiff comes across an infringer,
then he can serve a copy of the same to the defendant/infringer and seek adherence.94 If the
defendant/infringer fails to comply with the order, then it can result in initiation of contempt
proceedings against him.95 It is however, open for the defendant to argue his case and prove its
innocence in a court of law.96
In another hypothetical example under the Plant Varieties Act. For example let us imagine a
situation where Monsanto comes into the Indian market with their registered variety ‘POQ’.
Owing to its popularity and quality, various people start producing or selling varieties, the
denomination of which is identical with or deceptively similar to denomination of registered
variety ‘POQ’. Monsanto is aware of the fact that such varieties are being sold or produced and
that infringement as per section 64(a) of the Act is taking place yet, it cannot do anything
because it is not aware of any specific infringer/defendant who is selling or producing the
variety ‘POQ’. To take care of this situation, Monsanto can get a John Doe order issued in its
91 Gowree Gokhale, Payal Chaterjee, Aarushi Jain, John Doe Orders: A Boon for IP protection, available at
<http://www.legalera.in/Front-Page/john-doe-orders-a-boon-for-ip-protection.html> (accessed on 7th October, 2012)
92 Ibid
93 Ibid
94 Ibid
95 Ibid
96 Ibid
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favour. This will be an order against all infringers/defendants whose identity is unknown to
Monsanto. And if Monsanto comes across an infringer/defendant, then Monsanto shall serve
the order to this particular infringer and seek compliance failing which the defendant can face
contempt proceedings.
The concept of John Doe orders can be traced back to the reign of England’s King Edward III
(1312-1377), when such orders were used to refer to unidentifiable defendant.97 A John Doe
order being an interim order, the court is empowered to grant such an order under Order 39
Rules 1 and 2 of the Code of Civil Procedure, 1908.98 Therefore principles that are applicable
for getting interim relief are applicable for obtaining a John Doe order as well.99 The plaintiff
must show
A prima facie case
Irreparable Injury
Balance of convenience in his favour before such an order is granted
These 3 grounds have been explained in detail earlier in the note, in the part that deals with
Mareva injunctions.
These orders have been recognized and passed in India. The first John Doe order was granted in
the case of Taj Television v Rajan Mandal100. The Court referring to the Canadian judgments of
Jackson v Bubels101 and Dukoff v Teronto General Hospital102 observed that the act of naming a
party is considered a mere misnomer and as long as the litigating finger is pointed at a
particular person, then the misnomer is not fatal.103 In Luxottixa Group Limited vs. Ashok
Kumar, the court passed an order against unknown counterfeiters restraining them from selling
and manufacturing of counterfeit optical eyewear bearing the famous trademark “RAY BAN”.104
The Delhi High Court also restrained unidentified persons from infringing labels, packaging
materials and artistic work of the plaintiff, who was engaged in the sale and manufacture of
cigarettes.105
97 Ibid
98 Ibid
99 Ibid
100 CS (OS) No. 1072/2002
101 28(1972) DLT.500 (B.C.C.A)
102 (1986) 54 O.R.50 (H.C.)
103 This was referred in ESPN Software India Private Limited vs. Tudo Enterprise, CS (OS) 384/2011
104 Supra note 82
105 Ardath Tobacco Company Limited vs. Mr. Munna Bhai & Ors., 2009(39)PTC208(Del).
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John Doe orders have been issued in India to check piracy and unauthorized transmissions as
well. In Satellite Singapore PTE Ltd. Vs. Star Cable Network and Ors, the Delhi High Court passed
orders prohibiting the respondents from broadcasting/using unauthorized signals of the
appellant for downloading/telecasting purposes during the Indian Premier League cricket
tournament.106 The court further allowed seizure of signal transmitting devices, if channels
were downloaded without proper authorization.107 The same trend was followed in ESPN
Software v Tudu Enterprises108. The plaintiff in this particular case apprehended unauthorized
cable transmission of his channel which was telecasting the ICC Cricket World Cup.109 As this
would lead to irreparable loss, damage, loss of subscription and advertisement revenues the
plaintiff filed for a John Doe order which was granted by the Delhi High Court.110 John Doe
orders have also been granted by other states. The District Court of Andhra Pradesh granted
one in 14 Rees Entertainment Pvt. Ltd. V P. Srinivasulu, for the movie Dookudu.111 The Bombay
High Court has also passed a John Doe order to Viacom 18 for the movie “Gangs of
Wasseypur”.112
John Doe orders were modified sometime around 2010 to be applied to the internet.113 The
only problem that arose out of this was that without any limitations as to how these orders
would apply over this very different medium, John Doe orders started being utilized by Plaintiffs
in an increasingly generalized fashions.114 To prevent any sort of copyright or other form of
infringement over the internet, instead of specifically targeting the URLs which contained the
unauthorized copy, John Doe orders for internet infringement started targeting all possible
sources of infringement en masse.115 One of the first cases in this regard was the John Doe
order granted to the producers of the movie Singham.116 They were apprehensive of the fact
that copies of the movie would be made and sold/distributed in form of DVDs/CD in the market
and/or shown on TV by cable operators.117 Apprehending huge financial losses and the fact that
106 Supra note 82
107 Ibid
108 CS (OS) 384/2011
109 Payel Chatterjee, What’s in a name... John Doe arrives in India, available at
<http://www.nishithdesai.com/Research/Article/IPBA%20paper.pdf> (accessed on 7th October, 2012)
110 Ibid
111 Apar Gupta, Access to this site has been blocked as per Court Orders, June 25, 2012, available at
<http://barandbench.com/brief/3/2528/access-to-this-site-has-been-blocked-as-per-court-orders> (accessed on 7th
October, 2012)
112 Ibid
113 Ibid
114 Ibid
115 Ibid
116 Supra note 82, also see Apar Gupta, Access to this site has been blocked as per Court Orders, June 25, 2012,
available at <http://barandbench.com/brief/3/2528/access-to-this-site-has-been-blocked-as-per-court-orders> (accessed
on 7th October, 2012)
117 Ibid
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such distribution would prevent movie goers from going to the theatre, the producers
contended for a John Doe order.118 The Delhi High Court, even though the film had not been
released, relying on the principles of Quia TImet passed a restraining order against all
defendants and other unnamed undisclosed persons from distributing, displaying, duplicating,
uploading, downloading or exhibiting the movie in any manner and infringing the copyright of
the plaintiff through different mediums without prior license from the plaintiff.119
Since a John Doe order has been passed on lines of a Quia Timet injunction, it is important to
point out what a Quia Timet injunction is. A Quia Timet Injunction is similar to a John Doe order
in the sense that it is passed against a defendant whose identity is unknown. However, the
difference is that, it is passed prior to when the infringement takes place. They are granted only
upon proof of imminent danger, threatened injury being practically irreparable and the
impossibility to protect the plaintiff’s interests in the event of injurious circumstances.120 How
such an injunction can apply in the context of the Act is illustrated above.
In the above stated example, let us further assume that Monsanto is planning to launch
another variety ‘POR’ in the market. However, in light of its experience with the registered
variety ‘POQ’ it is now apprehensive that when the variety ‘POR’ is introduced in the market,
then owing to the reputation, quality etc of Monsanto, various people may come up with
varieties, the denomination of which is identical or deceptively similar to that of variety ‘POR’.
In order to avoid this, Monsanto can apply for Quia Timet Injunction. Thus, we see that a Quia
Timet injunction may also be applicable.
While the scope of John Doe orders has been steadily increasing, there have been certain
judgments that have highlighted that such orders should be cautiously used. The Delhi High
Court in the case of Indian Performing Right v. Mr. Badal Dhar Chowdhry, held that the courts
should be extremely cautious in granting ‘John Doe’ orders.121 They must specify the extent of
applicability of such orders, the product or article concerned to which it relates to and the steps
that can be taken by the aggrieved party to enforce such order.122 With respect to
infringement over the internet, the Madras High Court in the case of Creative Commercials v.
Bharat Sanchar Nigam Limited123 held that the plaintiff is obliged to identify the particular URL
where the infringing copy has been kept and the block cannot extend to the entire website.
118 Ibid
119 Ibid
120 Fletcher v. Beazley (1884) 28 Ch.D. 688 at p. 698, available at Gowree Go hale, Payal Chaterjee, Airship Jain,
John Doe Orders: A Boon for IP protection, available at <http://www.legalera.in/Front-Page/john-doe-orders-a-boon-
for-ip-protection.html> (accessed on 7th October, 2012)
121 Supra note 82
122 Ibid
123 C.S No. 294/2012
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All of the above highlights that John Doe orders are granted extensively in the India. It has also
been pointed out how a John Doe order can be used under the Act. Thus it can be stated that in
case of infringement, it is a viable relief.
4.18.5 NORWICH PHARMACAL ORDER:
A Norwich Pharmacal order (NPO) requires a respondent to disclose certain documents or
information to the applicant. The respondent must be either involved or mixed up in a
wrongdoing, whether innocently or not, and is unlikely to be a party to the potential
proceedings. An NPO will only be granted where "necessary" in the interests of justice.124
Judicial order, in accessing further evidence if any and obtaining information critical to the
ongoing case, supplements the knowledge of the Court and thereby ensures transparency in
the proceedings. Norwich Pharmacal Order is one of the tools available to the applicant whose
significance is growing with judicial set-ups of different nations recognizing the import of
availability of such an option. When granted, Norwich Pharmacal orders compel pre-action
disclosure, typically by third parties.
The Order was founded in Britain, in an appeal in the matter of Norwich Pharmacal Company &
Others v Commissioners of Customs and Excise125. The reason behind underlying such orders
was stated by Lord Reid in paragraph 12 of the case:
“if through no fault of his own a person gets mixed up in the tortious acts of others so as to
facilitate their wrong-doing he may incur no personal liability but he comes under a duty to
assist the person who has been wronged by giving him full information and disclosing the
identity of the wrongdoers." In this case the applicants were aware that their patent was being
infringed by illegal importations, however they had no inkling as to who the importers were.
They sued the customs and excise commissioners. They further sought an order for disclosure
of their names and contact details, basing the claim on the equitable right to file a bill for
discovery, which was a cause of action seeking disclosure of information from the defendants.
Overlooking the long standing “mere witness” rule, the House of Lords noted that in the
absence of the entire information, the ultimate wrongdoer would never be brought to trial.
The Norwich Pharmacal jurisdiction is a means whereby a party may request the court to order
the disclosure of information where there has been or may have been wrongdoing by a third
124 Norwich Pharmacal orders: a quick guide retrieved from http://ld.practicallaw.com/0-211-3137 , last accessed on
22nd of October, 2012
125 [1973] 3 WLR 164
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party and where the information is required in order to seek justice in respect of that
wrongdoing. The jurisdiction originates in the field of patent law126 and was first and most
famously invoked in the context of national security in the Binyam Mohamed case.127
The Justice and Security Bill of the United Kingdom describes this jurisdiction in clause 13(1), in
the following terms—
"This section applies where, by way of civil proceedings, a person ("A") seeks the disclosure of
information by another person ("B") on the grounds that—
(a) wrongdoing by another person ("C") has, or may have, occurred,
(b) B was involved with the carrying out of the wrongdoing (whether innocently or not), and
(c) the disclosure is reasonably necessary to enable redress to be obtained or a defence to be
relied on in connection with the wrongdoing."128
Illustration:
Let us for instance say that a certain Mr. Hood, a man holding a position of paramount
responsibility is summoned by the head of the organization and is told that he’s been alleged of
lack of proficiency and misappropriation of the organization’s finance by an unidentified
person, and the director refuses to divulge the identity of the source. Consequently, Mr. Hood
is subject to a series of disciplinary hearings and is unable to disprove the charges slapped
against him as he is ignorant of quintessential information, the source. In such a situation, if an
order of this caliber is made available to Mr. Hood, by an understanding judiciary, the claimant
will be better placed to argue for his cause.129
The Canadian jurisprudence has willingly embraced and inducted the tool of NORWICH
PHARMACAL ORDER as a judicial endowment. In a matter before the Canadian Court, Glaxo
Wellcome PLC v. M.N.R130, the claimant, owner of a patented drug sought the disclosure of the
people violating its patent from the custom officials, which was rightfully granted to him.
126 Ibid.
127 This was a complex case in which there were six judgments at first instance (i.e., in the Divisional Court) and two
judgments in the Court of Appeal. The latter are authoritatively reported at [2011] QB 218, where the full reference to
the case is given as R (Mohamed) v Secretary of State for Foreign and Commonwealth Affairs (No 2) [2010] EWCA
Civ 65, [2010] EWCA Civ 158.
128 Justice and Security Bill [HL]: Norwich Pharmacal jurisdiction - Constitution Committee Contents, retrieved from
http://www.publications.parliament.uk/pa/ld201213/ldselect/ldconst/31/3103.htm#n4 on 22nd October, 2012
129 See P v. T [1997] 1 W.L.R. 1309
130 (1998), 162 D.L.R. (4th) 433
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SCOPE OF THE ORDER:
The Norwich Pharmacal order has been restricted in its scope to cover only tortuous offences,
as was observed by Sedley, L.J. in Interbrew v Financial Times.131 However, in Ashworth v
MGN132 the House of Lords in the voice of Lord Woolf, C.J. found no objection in expanding this
relief to criminal offences as long as the person seeking the order was a victim of the crime.
In Norwich Pharmacal the purpose of the information was to enable the applicant to
commence proceedings against the wrongdoer. This is no longer a prerequisite. The other
question that arose in respect to this order was whether a NPO can be made in one jurisdiction
in order to identify a defendant coming under another jurisdiction.133
The following years witnessed the widening of the ambit of the term “disclosure” and the
grounds for seeking the same. In Mitsui v. Nexen Petroleum134, Lightman, J. declared that a
Norwich Pharmacal order can be passed where “the claimant requires disclosure of crucial
information in order to be able to bring its claim or where the claimant requires a missing piece
of the jigsaw”. This judgment gave rise to the “missing piece of the jigsaw” test which was used
most recently in R. (on the application of Mohamed) v Secretary of State for Foreign and
Commonwealth Affairs.135
The Digital Economy Act of 2010 established by the UK parliament for regulation of digital
media envisaged the incorporation of the norwich pharmacal orders. the primary concern of
the law makers in this regard is not issuance of information but the subsequent handling of it.
The availability of such enforcement is a judicial respite since an option for obtaining further
information is in any case better than limited information. In India, the principle of Norwich
Pharmacal order’s has not been put to use so far since the concept is relatively new. However,
the Plant Variety Protection and Farmer’s Rights Act, with the enshrinement of section 66,
provides for various reliefs available to the plaintiffs on account of infringement of any of his
rights to market, distribute, import or export the varieties.136 The Norwich Pharmacal order is
an effective measure to ensure that the ultimate wrongdoer is put to trial. Under this order, if a
person is mixed up in a wrong, irrespective of his involvement being voluntary or obligatory in
2001 available
131 [2002] EWCA Civ 274
132 Ashworth Hospital Authority v MGN Ltd [2002] UKHL 29
133 See BSC v Granada Television [1981] A.C. 1096
134 [2005] EWHC 625 (Ch)
135 [2008] EWHC 2048 (Admin).
136 Section 2(c),The Protection of Plant Varieties and Farmers’ Rights Act,
at<http://agricoop.nic.in/PPV&FR%20Act,%202001.pdf> (last accessed on 22nd of October 2012)
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nature, is immaterial. The fact that he was involved is sufficient to bring him to action.
However, as has been mentioned earlier, a mere bystander cannot be brought to trial.
Illustration:
Let’s say Thiruma, a local farmer in Gujarat has learnt to cultivate rice by combining his
traditional knowledge and skills despite the paucity of water and has patented this technique. A
certain Ms. Chelluma comes to visit Thiruma from Rajasthan. Both being arid states, Chillum is
marveled by the technique and Chelluma sells this piece of information to her Sarpanch in
Rajasthan. Thiruma has filed a suit against Thiruma after learning that her village in Rajasthan is
now cultivating rice on the basis of his technique. He sues her, for infringement. He is aware
that someone bought the idea from Chelluma but his knowledge ends here. He now, by virtue
of Norwich Pharmacal order’s can compel Chelluma to handover the name of the person she
traded information with.
4.18.6 CEASE AND DESIST LETTER:
A cease and desist letter refers to an analogous demand letter, having no governmental
authority behind it but threatening legal action.137
Failure to take an action once it is apparent that there may have been an infringement
of the patent owner’s right could imply waiving of his right. The cease and desist letter usually
denotes that the use of the subject matter in question is the standalone right of the owner who
enjoys the right of exclusivity over it. It then describes how the alleged infringer has used the
prospective plaintiff’s right and demands that the alleged infringer ceases and desists the
further use of this property.138 Even if the cease and desist letter does not accomplish the
object of convincing the infringer to cease his or her actions, it nevertheless, provides an actual
notice of the patent, thereby, enabling the patent owner to recover the damages after the date
of the cease and desist letter was sent. 139
137http://books.google.co.in/books?id=35dZpfMmxqsC&pg=PA141&lpg=PA141&dq=cease+and+desist+order&sourc
e=bl&ots=k9tUZFogIa&sig=YNYFhApCmGbTWlFYW17SRs5Vqk&hl=en&sa=X&ei=fD2GUIq-J4PjrAeB-
YC4DA&ved=0CDsQ6AEwAg#v=onepage&q=cease%20and%20desist%20order&f=false accessed on 23rd October,
2012; See also, A Dictionary of Modern Legal Usage, Bryan A Garner, Oxford University Press
138http://books.google.co.in/books?id=LEzQiYQmPb8C&pg=PA70&lpg=PA70&dq=cease+and+desist+letter&source
=bl&ots=JlvInmC4Kb&sig=subhRl9qACq2o9VQYmPkw4nW2M&hl=en&sa=X&ei=FS6GUMPZFIzkrAeQ04GwC
Q&ved=0CDQQ6AEwAQ#v=onepage&q=cease%20and%20desist%20letter&f=false accessed on 23rd of October,
2012; See also, Protecting your company's intellectual property : a practical guide to trademarks, copyrights, patents &
trade secrets. Deborah E Bouchoux, AMACOM, 2001
139http://books.google.co.in/books?id=x4H0ulrSDIUC&pg=PA406&lpg=PA406&dq=cease+and+desist+order&source
=bl&ots=iYpKz_LUGa&sig=kcIRdHB60YMUxftJvtWQSmkAiCs&hl=en&sa=X&ei=fD2GUIq-J4PjrAeB-
YC4DA&ved=0CGMQ6AEwCA#v=onepage&q=cease%20and%20desist%20order&f=false accessed on 23rd
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In Dell Computer Corporation v. Arun Kumar and Ors., the plaintiff, an American who are
internationally recognized for their computer-related consulting, installation, maintenance,
leasing warranty and technical support services, have registered their trademark, both
internationally, as well as the their liaison with India. In March 2001, while flipping through
Yellow Pages, they encountered a company, Dell Technologies at Bangalore addressed through
its proprietor Arun Kumar, defendant No. 1. The plaintiffs sent a cease and desist letter, to the
defendant intimating them about the deception being meted out due to such an infringement
of exclusive right in the usage of the mark ‘Dell”. This triggered a series of telephonic
negotiations between the two, which however resulted in the initiation of a legal proceeding as
the defendant sought to obtain more money in order to drop the name “Dell” from his
company. The defendants however did not turn up, as a result of which it was an ex-parte
hearing. The Delhi High Court held that in the absence of concrete proof and evidence to the
contrary, the plaintiffs’ rights are to be restored.
In Exhort Sa And Ors. vs Bharat Shah And Anr.140, while deciding the jurisdiction of the plaintiff,
observed that “the cause of action for the present suit first arose in the month of November,
1993 when the defendant's attorneys addressed a cease and desist letter to the plaintiff”,
implying that the legal engine to restore the infringed right is restored as soon as such a notice
is sent.
In Mars Incorporated v. T. Raghulal and Anr.,141 the plaintiffs instituted a trial praying for a
permanent injunction against the defendants insofar as the use of goods under their trademark
is concerned. The Court held that the issue in question was not infringement of trademark but
the resentment of the plaintiffs for they were operating only in three states. The Court granted
an interim relief so the activities were compelled to be “ceased”, however not desisted.
In Sasken Communication Technologies Ltd. Vs. Mr. Anupam Aggarwal and Ors142, the
defendants were charged for the infringement of trademark under sections 11, 29(4) and 29(5),
as the defendants were using “Sasken”. Before instituting the proceedings, the plaintiff had
already sent a cease and desist notice to the defendants. The Court ruled in favour of the
plaintiffs and granted the order.
Therefore the cease and desist letter should address the following elements:
October, 2012; See also, The Securities Enforcement Manual, 2nd edition, Kirkpatrick and Lockhart Pretson Gates, Ellis
LLP.
140 2003 (26) PTC 461 Del
141 2009(40)PTC460(Del)
142 2009(41)PTC523(Del)
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It should specify the form of IP that is being infringed. In respect of registered IP this
includes identifying the registration details, which enables the recipient of the letter to
search the relevant register to confirm the IP rights that are being enforced.’
It should set out a description of the alleged infringing act including the date on which
the act was considered to have occurred.
It should clearly demand that the recipient of the letter cease to act in an infringing
manner and that if the recipient fails to do so then the enterprise may seek an
appropriate remedy from the court without further notice.
It would usually identify the nature of remedies available. It is also open to the
enterprise to place other demands upon the infringer which could be otherwise
obtained from a court including:
delivery up or destroying the infringing articles;
providing documentation of sales or other exploitation of the infringing articles.
It is usual to seek a response within a reasonable time frame from one to two weeks
although this will vary depending on the circumstances.
The IP adviser for the enterprise will most often issue a letter. There are two reasons for this: 1)
The IP adviser will be able to craft the letter in a manner which should avoid any reasonable
prospect of an action for unjustified threats. 2) A letter from a firm of lawyers sends a message
to the recipient that the enterprise is serious about protecting its IP rights and has already
taken advice on its legal position.
Before issuing the cease and desist letter it should be noted that a number of practical steps be
taken including:
Obtaining evidence of the infringing act: This may entail purchasing articles and
obtaining a statement from the individual who purchased the infringing article together
with any supporting documentation such as receipts. Photographs and videotape are
also useful evidence to have in support of the enforcement action in the event that the
enterprise wishes to obtain orders from a court;
the accurate details of the infringer should be obtained to the best of the ability of the
enterprise. This includes undertaking company and business name searches.
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The cease and desist letter should be sent by registered post to the infringer and by facsimile if
a fax number of the infringer is known. Depending on the urgency of the matter it may also be
appropriate to have the letter of demand personally delivered.
The effect of the cease and desist letter is significant. First, it protects the enterprise against an
order for costs where the plaintiff would have otherwise argued that it would have agreed to
the demands had it been notified to them prior to any court action. Second, if the infringer
repeatedly infringes the IP rights after receiving a letter of demand it would be evidence of a
deliberate intention to infringe those IP rights. This may be persuasive for a court in deciding
whether to grant an injunction or consider whether there has been a flagrant infringement that
would entitle the enterprise to additional damages. Third, it will also preserve the right of the
enterprise to elect to obtain the order for an account of profits because the infringer has been
made aware of the enterprise’s IP rights.
Of course there are quite often circumstances where the enterprise believes it must act with
great speed in order to preserve evidence of the infringing activity. By issuing a letter of
demand the infringer has an opportunity to destroy that evidence. In these cases it is possible
to apply to the court for an ex parte hearing where the enterprise can put its case and seek
injunctions and/or an Anton Pillar order that enables it to preserve such evidence. There are
particular rules concerning ex parte hearings and the issuing of Anton Pillar orders given the
draconian nature of them, which will be well known to the enterprise’s legal advisers.
Though Litigation is a very strong recourse which enterprises take to enforce their Intellectual
Property, but it should be the last resort. Preferable alternatives to Litigation should be 1) Cross
Licensing 2) Alliances 3) Royalty fee payments.
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