Bharat Law House Vs. Wadhwa and Co. Pvt. Ltd. and ors. - Court Judgment

Excerpt:
the case discussed the whether the claim of the publisher that the book was original work of scholars, had amounted to deception and exaggeration under section 13 and 14 of the copyright act, 1957 - the size of the book had been changed - it was held that the claim of the publisher could be termed as exaggeration, but the same could not be termed as deceptive - thus the same had not amounted to infringement of copyright or deceptionthe case discussed the factors to be kept in view, in order to grant temporary injunction under order 39 of the civil procedure code, 1908 - in order to grant interim injunction, three factors need to be established namely, existence of prima facie case, the balance of connivance and also that whether such interim injunction would cause irreparable injury - in the present case, as per the evidence on record, no infringement of copyright was found - thereforee, it was ruled that injunction would not be granted - - so far so good, but the dispute which have arisen between the parties is that according to the plaintiff, the defendants 1 & 2 were publishing 26thedition of the indian penal code in such a fashion as to give an impression that it is a lawyers' edition of commentary on the indian penal code rather than a students' edition as it originally stood and thereby the copyrights of the plaintiff were being infringed by misrepresentation that the book to be published by the defendants is intended for lawyers' use and the said 26th edition of indian penal code is being deliberately passed off as lawyers' edition for use by the lawyers and not by the students and is a colourable imitation of the classiclawyers' edition of the indian penal code in the name of law of crimes and consequently the suit for permanent injunction and accounts and this interim application under order xxxix rule i of the code of civil procedure. ..and it has also been mentioned therein that the same 'can be had of book sellers throughout india, pakistan,burma and ceylon'.it has also been urged by the learned counsel for the plaintiff that it has been mentioned in the jacket that the indian penal code is a legal classic' and 'it is the most original, authentic, dependable. but it would be wrong and unsafe to work, on that hypothesis m disposing of this application. mary vakil would show that the plaintiff very well knew of the terms of settlement and compromise between defendants 1 &. 2 and mrs. i would like to advert to the question of enlargement of the size of the book. (7) from my discussion it emerges that defendants 1 & 2 have a right to publish an enlarged edition of indian penal code by rallanlal and have the liberty to change its size and also the price and enlarge the contents thereof and this is precisely what is sought to be done by these defendants in bringing out 26thedition thereof. (8) once this court conies to the contusion that the plaintiff has failed to establish a prima facie case, balance of convenience would lie in favor of non-grant of ad-interim injunction rather than in grant thereof otherwise irreparable injury is likely to occasion to the defendants.mahesh chandra, j. (1) by this order i propose to dispose of fa. 7181186 file under order xxxix rule i read with section 151 of the code of civil procedure, for grant of ad interim injunction restraining the defendants, their agents, servants, dealers, representatives or nominees from printing, binding, publishing, offering for sale or selling, dispatching the 26thedition of indian penal code by rattanlal and dhirajlal and to recall back the stocks of the said book sold in delhi and outside and surrender the same to the plaintiff and also i.a.no. 516187 filed under order xxxix rule 4 read with section 151 of the code of civil procedure by defendants 1 & 2for vacating 'the ad-interim ex-parte injunction issued on 2 9/12/1986 and the dismissal of application i.a. 7181186.i have heard the learned counsel for the parties and have gone through the file and after giving my considered thought lo the matter before me i have come to the following findings.(2) the facts giving rise to these i.as are that the plaintiffhad filed a suit for permanent injunction and accounts against defendants 1 to 4 and i.a. 7181186 for ad-interim injunction was filed in the said suit and m. k. chawla, j. vide orders dated29th december 1986 had restrained the defendants, their agents and servants from dispatching the 26th edition of the indian penal code by rattanlal dhirajlal to any dealer or offering them for sale and in consequence this fresh i.a. 516/87 has been, filed by defendants 1 & 2.(3) it is settled law that in granting or not granting ad interim injunction three factors have to be kept in view, namely,the establishment of a prima facie case, the balance of convenience between the parties, and whether if the interim injunction is not issued will cause irreparable injury to theapplicant. the position could be no different in cases of infringement of copyrights and passing off. thus, in order to entitle the ad-interim injunction it would be necessary in the first instance for the plaintiff to establish that it has got apnea facie case and let us now consider if it has one.(4) the admitted case of the parties is that the copyright with regard to books, namely, law of crimes (lawyers' edition), indian penal code, the law of torts, indian evidenceact, the code of criminal procedure, and the criminal cases of bombay high court written by late rattanlal ranchoddas vakil with late dhirajlal thakore vested in one mrs. marym. r. vakil by reason of consent terms dated 15/07/1980in bombay high court in petition no. 576175 and said mrs.mary vakil granted a license in regard to above-mentioned first five publications to defendant no. 2 on 6/10/1980but some disputes arose between them which resulted in civil suit no. 2182 being instituted in the court of district judge,nagpur, by defendant no. 2 which in turn resulted in a compromise/consent decree recorded on 12/07/1984 whereby defendant no. 2 acquired complete rights with regard to fourbooks, namely, indian penal code, law of forts, indian evidence act and the code of criminal procedure while the fifth book law of crimes (lawyers' edition) continued to vest exclusively in above-mentioned mrs. mary vakil, that in between the, plaintiff had negotiated and entered into an agreement dated 8/10/1982 with above-said mrs. mary vakil for exclusive sale and transfer of all rights including copyrights with regard to above-mentioned law of crimes which agreement was later on supplemented on 5/02/1986and now the plaintiff is proposing to publish 23rd edition of the law of crimes while defendants 1 & 2 are publishing 26thedition of the indian penal code. so far so good, but the dispute which have arisen between the parties is that according to the plaintiff, the defendants 1 & 2 were publishing 26thedition of the indian penal code in such a fashion as to give an impression that it is a lawyers' edition of commentary on the indian penal code rather than a students' edition as it originally stood and thereby the copyrights of the plaintiff were being infringed by misrepresentation that the book to be published by the defendants is intended for lawyers' use and the said 26th edition of indian penal code is being deliberately passed off as lawyers' edition for use by the lawyers and not by the students and is a colourable imitation of the classiclawyers' edition of the indian penal code in the name of law of crimes and consequently the suit for permanent injunction and accounts and this interim application under order xxxix rule i of the code of civil procedure. the contention of the defendants on the other hand is that the 26th edition of the indian penal code by rattanlal is being published in exercise of the rights transferred to them by mrs. mary vakil by agreement above-mentioned and without infringing any copyrights of he plaintiff or in any manner passing it off as lawyers' edition and it has been prayed that the interim injunction should be vacated and the application of the plaintiff should be dismissed.(5) it would be appropriate to tension at the very outset that the learned counsel for the plaintiff has conceded at the bar that he has no dispute with the rights of defendants 1 & 2to publish enlarged edition of the indian penal code by rattanlal. it has further been conceded by him that so far as the text of the 26th edition of the indian penal code by rattanlal being published by the defendants is concerned, he has no complaint and the same tits in within the agreement betwenmrs. mary vakil and defendant no. 2 and the said contents do not infringe upon the. copyrights of the plaintiff. even otherwise a photostat copy of the said compromise has been filed by the defendants and a perusal of page 7 thereof would show thatmrs. mary vakil had transferred to defendants 1 & 2 all her rights of further 'publications, reprinting, revision, printing,publishing, distribution, advertising, selling in india and abroad' which also includes 'the rights to revise, enlarge, abridge, adapt,translate or modify' in respect of the four books including the indian penal code (students' edition). the main thrust of submission of the leaned counsel for the plaintiff is that in bringing out 26th edition of the indian penal code the defendants have changed its size from demi to royal and also raised the price to rs. 180 and furthermore the jacket of the26th edition has also been given such a shape as to suggest that it was meant for the lawyers rather than for the students and thus the rights of the plaintiff have been infringed and attempt by the defendants in passing off has been made. the learned counsel for the defendants has drawn my attention to deed of assignment dated 12/07/1984 whereby mrs.mary vakil had transferred her copyrights to defendants1 & 2 in the indian penal code and my attention has been drawn in this behalf to para 4 of the said deed whereby defendants 1 & 2 had been transferred and conferred 'the rights to revise, enlarge, abridge and shorten for shorter editions, summarise, adapt, translate or modify' the said indian penal code'. he has similarly drawn by attention to para 8of the said deed whereby 'use of paper, printing, reprinting,publishing, advertising, binding, fixation of price, pre-publication price, number of copies to be printed or reprinted, get up,use of particular paper or print, revision of further editions,of translations and adaptations, abridgements etc.' were left' to the entire descretion of defendants 1 & 2. certainly once these rights have been transferred and conferred and assigned to the defendants it would- be difficult for the plaintiff to find fault with the action of the defendants in bringing out the 26thedition of the indian penal code in the form, shape, get up and at the price it is proposed to by them. all this is being done by the defendants in exercise of the rights vesting inthem. as regards the contention of the learned counsel for the plaintiff that the original students' edition of the indian' penal code was intended for only the students, the learned counsel for the defendants has drawn my attention to an advertisement in the bombay law reporter, volume liv, regard to 20th edition of the said book wherein it has been mentioned that 'it will be useful to the bench and the bar.........' and it has also been mentioned therein that the same 'can be had of book sellers throughout india, pakistan,burma and ceylon'. it has also been urged by the learned counsel for the plaintiff that it has been mentioned in the jacket that the indian penal code is a legal classic' and 'it is the most original, authentic, dependable........' , its vast readership that covers judges, lawyers, police officers, administrators,law teachers and academicians, students, research scholars' and monumental work' and as such it is likely to confuse thereaders. i am 'afraid the mere user of these words in advertising their book would not tantamount to either passing off or infringing copyrights of the plaintiff. might be it is an exaggeration but that by itself does not lead us to the conclusion that it infringes the copyrights of the plaintiff.furthermore keeping in view the fact that these books are to be read by persons no less than judges, lawyers police officer, administrators, law teachers and academicians, the possibility of their being misled or deceived too far fetched and cannot be .accepted. similar is the position with regard to mention of the book in one of the advertisements as 'a great hook of great authors', or 'most prestigious publication' or 'must for everyone concerned with criminal law and-justice'. soling as the defendants are doing what is lawful for them lender the agreement with mrs. mary vakil it would be difficult to accent that th defendants, are passing of theirbook. as that of the plaintiff of they are infringing the copyrights of the plaintiff. this also has been urged that there are different channels of distribution of 'he two books but reference to advertisement in volume liv of the bombay law reporter would show that even a students' edition was channeled through books sellers throughout india, pakistan and ceylon and consequently this ground also does not held muchwater. the learned counsel for the plaintiff has further submitted that real apprehension is that alter putting this26th edition in royal size a the market the defendants would also put a dimidiation in the market. but it would be wrong and unsafe to work, on that hypothesis m disposing of this application. it may be mentioned here that the learned counsel for the plaintiff has not been able to invite my attention to any place where any reference has been made to the 'law of crimes' by rattanlal in this book or m the advertisements or publicity of this book. a. perusal of the agreement entered into between the plaintiff and mrs. mary vakil would show that the plaintiff very well knew of the terms of settlement and compromise between defendants 1 &. 2 and mrs. mary valal andthe plaintiff has entered into that agreement in 1986 with his eyes open as regards the rights of the defendants in the indian penal code and he cannot now have any came for complant.(6) from whichever angle 1 consider the matter before mei do not find either any probability of deception or passing of in the act of the defendants publishing 26th edition of the. indian penal code. i would like to advert to the question of enlargement of the size of the book. there has developed further cases law on the indian penal code and consequently some enlargement of the size is bound to take place and with the enlargement of size and the rise in cost of paper and print'ng the price is also bound to go up and cease queasy no fault can be find with the acts of the defendants on that score either. it may be mentioned here that books ob legal subjects have to be considered on different footing than the other general books and unless a book on legal subject is up-to-date with latest case law it would fetch practically no market and would not be acceptable to even the students of law much less to- other person? concerned with administration of justice including the lawyers fraternity. teraserver new edition of a legal work would necessarily be an enlarged edition if it has to find acceptability of its read's. in these circumstances, if the contents of 26th edition of indian penal code by rattanlal swell, it is bound to result in the change in the size and format and also the price thereof and consequently plaintiff can have no ground to assai the publication and sale of 26th edition of the indian penal code by rattanlal being brought out by defendants 1 & 2. judicial notice can be taken of the fact that cost of printing, editing as also cost of paper have gone up considerably since the publication of25th edition of indian penal code by rattanlal and consequently there is nothing abnormal in the rise in the price thereof and no fault can be found the published price of the 26th editionthereof.(7) from my discussion it emerges that defendants 1 & 2 have a right to publish an enlarged edition of indian penal code by rallanlal and have the liberty to change its size and also the price and enlarge the contents thereof and this is precisely what is sought to be done by these defendants in bringing out 26thedition thereof. copyright is the exclusive right to do and to authorise others to do and restrain others from doing certain acts in relation to a literary work which, inter alia, in dudes work son legal subjects and nothing would be accepted as infringement of this right if what is sought to be done by the defendants isin exercise of a similar right vested in them under a contract of assignment with the person who possesses that right. it would be no infringement of copyright when the defendan: has been conferred a right to bring out further editions whether in enlarged form or otherwise? and assignee of a copyright work has the right to publish the work as he pleases. more so when there is no express or implied term controlling the form of publication. strange as it may appear, the assignor in this case i.e. mrs.maiy vakil has not been imp leaded as a defendant in this case which indicates that the plaintiff does not challenge her, right to assign the copyright in the indian penal code to defendants1 &. 2. where the plaintiff does not implead the assignor as aparty and does not challenge the assignor's right to assign copyright of a particular book in the manner he has done it, it would not be open to the plaintiff to restrain the defendants-assignee from reproducing or republishing that books so long as the assignee does so within the framework of the assignment agreement, more so when the assignor happens to be the same person who has assigned similar copyrights in respect of some other book to the plaintiff. there could be no passing of either unless the thing said to be passed off resembles the thing for which it is being passed off. it cannot be accepted that in the instant case only the plaintiff has a right to publ-'sh books in royal size. there is nothing to suggest that the plaintiff has registered design either in his favor of the book jacket. there can be no dispute that copyright is transferable by assignment and defendants 1 & 2have been assigned copyrights in respect of the indian penal code by rattanlal by mrs. mary vakil and to the knowledge ofthe plaintiff. in consequence, it cannot be prima facie accepted that the act of defendants 1 & 2 aims at deception or mis-representation much less passing off and, thereforee, it would be difficult to hold that the plaintiff leas established any prima facieses in its favor.(8) once this court conies to the contusion that the plaintiff has failed to establish a prima facie case, balance of convenience would lie in favor of non-grant of ad-interim injunction rather than in grant thereof otherwise irreparable injury is likely to occasion to the defendants. the defendants must have already invested a considerable amount in preparation of the 26th edition and its advertisement and if the ad-interim injunction already granted is permitted to continue farther it would result inconsiderable loss to the defendants which may .even entail loss of reputation in failing to bring out the promised monumental work. in view of my discussion and findings above, i hold that the plaintiff is not entitled to the ad-interim injunction prayed for and the application i.a. 7181/86 is liable to be dismissed and consequently i.a. 516^87 deserves to be allowed.(9) it would be appropriate to mention here that my observations above are solely for the purposes of disposal of these 1. as.and have no bearing on the merits of the case which would be decided on the evidence led before the court.(10) for my discussion and findings above, i.a.7181186 is dismissed and the ad-interim, injunction already granted vide orders dated 29th december 1986 is vacated anil consequentlyi.a. 516187 is allowed. no order as to costs.--- *** ---