Copyright – The Need for Registration?

The Copyright Act, 1957 (hereinafter referred to as “the Act”) deals with the law relating to copyright and the works in which copyright subsists, the rights of a copyright owner, the remedies of a copyright owner in case of infringement, registration of copyright etc. Now, whilst in the case of trade mark law and the law relating to patents, the respective statutes are explicitly clear that infringement can only be of a registered trade mark and of a patent granted under the Patents Act, 1970 respectively2, the Act does not so clarify in express terms. This aspect of registration of copyright and whether or not the same is mandatory in order to avail the benefits of copyright and the remedies provided under the Act has been the subject matter of several judgments, some of which will be discussed in this article. This question has now come to the fore in the light of a recent judgment3 of the Bombay High Court, which has held that registration of copyright is necessary to avail of the remedies provided under the Act.

Hence, in order to address this question, I would like to draw attention to the broad scheme of the Act and the relevant provisions thereof, followed by some judgments on the issue and thereafter, my thoughts on the law as prevailing currently and on the said recent judgment of the Bombay High Court.

Statutory provisions

The Act was enacted to amend and consolidate the law relating to copyright. The Act comprises of 79 sections spread subjectwise over 15 Chapters. For the purposes of addressing the query at hand, it would be necessary to consider the provisions of Chapter III, Chapter X and Chapter XI of the Act. Chapter III of the Act deals with works in which copyright subsists and nature of rights therein. In this regard, reference may be had in particular to section 13 of the Act which provides for, inter alia, works in which works copyright subsists as also in which works copyright does not subsist. Section 14 provides that copyright means the exclusive rights stated therein whilst section 16 provides, inter alia, that no person shall be entitled to copyright or any similar right in any work otherwise than and in accordance with the Act.

The subject of registration of copyright is dealt with in Chapter X of the Act. Section 44 provides that there shall be kept at the Copyright Office a register to be called the Register of Copyrights in which may be entered the names or titles of works and such other particulars as may be prescribed. Section 48 provides that the Register of Copyrights shall be prima facie evidence of the particulars entered therein. Section 50A provides that every entry made in the Register of Copyrights shall be published.

It may also be relevant to note that Chapter XI deals with infringement of copyright and section 51 provides, inter alia, that doing of any act by any person, the exclusive right to do which is conferred by the Act upon the owner, without the licence of the owner would be an infringement of copyright. Copyright is also infringed by allowing for profit any place to be utilised for communication of a work (which is infringing) to the public. Copyright is also infringed when a person offers for sale etc. an infringing copy of the work.

Thus, on a plain reading of the statute, it would be evident that u/s. 13 of the Act, copyright subsists in certain works. Section 13 of the Act makes no qualification as to the need for registration for a copyright to subsist. Similarly, section 51 of the Act does not talk of infringement of a registered copyright but only lays down that if any person without licence does any of the acts which only the owner of the copyright is granted the exclusive right to do, then such person would infringe the copyright.

At this juncture, it may also be relevant to point out that under the Berne Convention for the Protection of Literary and Artistic Works, to which India is a signatory, a provision is made that enjoyment and the exercise of the rights recognised therein shall not be subject to any formality4. This clause was one of the foremost reasons why the United States which has traditionally required registration of copyright did not become a signatory to the said Berne Convention for a very long time. It may be noted that even today, several countries continue to have certain formalities imposed within their legal framework but in such a manner so as to avoid falling foul of their treaty obligations.

In the light of the aforesaid statutory background, attention is invited to two contradictory judgments of the Bombay High Court on this issue. Both judgments have been passed by bench comprising of a single judge.

The first judgment is in the case of Asian Paints vs. Jaikishan Paints and Allied Products reported in 2002 (4) MhLJ 536 wherein His Lordship the Honourable Mr. Justice Vazifdar has inter alia, held as under,

“Registration under the Copyright Act is optional and not compulsory. Registration is not necessary to claim a copyright. Registration under the Copyright Act merely raises a prima-facie presumption in respect of the particulars entered in the Register of Copyright. The presumption is however not conclusive. Copyright subsists as soon as the work is created and given a material form even if it is not registered (See Buroughs (I) Ltd. vs. Uni Soni Ltd. 1997 (3) Mh.L.J. 914). Thus even if the plaintiffs work was not registered, the plaintiff having established that it had created the same prior to the defendant, mere registration by the defendant of its work cannot defeat the plaintiff’s claim.”

En suite, attention is invited to a recent judgment of His Lordship the Honourable Mr. Justice A. B. Chaudhary in the case of Dhiraj Dharamdas Dewani vs. M/s Sonal Info Systems Pvt. Ltd. reported in 2012 (3) MhLJ 888, wherein it has, inter alia, been held as under,

25.    Thus careful survey of the above provisions of the Copyright Act, 1957 to my mind clearly denotes that in the absence of registration u/s. 44 of the Copyright Act by the owner of the copyright it would be impossible to enforce the remedies under the provisions of the Copyright Act against the infringer for any infringement u/s. 51 of the Copyright Act. Thus, I answer point No. 1 in the affirmative.”

Thus, as on date, there are two contradictory views of co-ordinate benches of the Bombay High Court. It must, however, be appreciated that the second judgment has been passed in ignorance of the first in as much as Justice Chaudhary records in his judgment that there does not appear to be a Bombay judgment on the issue and hence, he is required to answer the same. Had the earlier judgment been brought to his notice, he would have been bound by the earlier judgment and even then if he had disagreed with the view, the right course would have been to refer the judgment to a larger bench of the High Court5.

It would also be relevant to note that since the earlier judgment in the case of Asian Paints6 was not brought to the notice of the later Bench, it could be urged that the judgment in Dhiraj Dewani’s7 case is per incuriam and hence, not a binding precedent. The Supreme Court has explained that “Incuria” literally means “carelessness” and that in practice per incuriam is taken to mean per ignoratium8.

Concluding remarks

Even though the Bombay High Court has recently held that registration of copyright is compulsory, it may be appreciated that the High Courts of Delhi9, Calcutta10, Madras11, Kerala12, Allahabad13 and Madhya Pradesh14 have respectively held that registration of copyright is not compulsory or mandatory. The Orissa High Court15 appears to be the only other Court which has taken the view that registration of copyright is compulsory.

Thus, it would be evident that the question of compulsory registration of copyright appears to be a vexed issue on which different High Courts seem to have taken different views over the years.

Without addressing the views already taken by the various High Courts, I would like to address the aspect of whether or not there ought to be a need for registration of copyright generally. It may be appreciated that copyright (taking the view of majority High Courts) is a form of intellectual property that subsists from the moment it is created and requires no registration or formal notice. This is different from the procedure either under trade mark law or law relating to patents or law relating to geographical indications etc. all of which require registration in order to enable their owner to claim statutory remedies.

The idea behind registration is the aspect of notice. Registration tends to amount to notice to the world at large, since if something is noted in a register, it would be possible for people to inspect the same and learn of the different rights being claimed by people. However, with respect to copyright law such a system appears to be optional (taking the view of majority High Courts). Thus, as has been high-lighted in the recent judgment in Dhiraj Dewani’s16 case, there could be instances where the alleged infringer may not even be aware of the rights of a person claiming copyright in his work.

A possible answer to this issue lies in the fact that, at a very basic level, copyright law seeks to prevent copying. The Act grants certain exclusive rights to an owner with respect to his work for example in case of a literary work, the owner has the exclusive right to reproduce the work, issue copies, perform the work etc. Hence, in order for infringement to be established, it would be necessary to show that the work being complained of is a colourable imitation or substantial reproduction of the original work. On the other hand, if there has been no copying even if there be similarities, there cannot be an infringement17. Thus, a person who seeks to copy a work must make due enquiry before doing so. Of course, even in such a situation where a person is bona fide interested in copying a work and is even willing to take a licence, if required, in the absence of the details being entered in an official register, it may not be possible for him to know whether the copyright protection for the work has expired or the details of the owner whom he may wish to approach for a licence etc.

This aspect of details of a work being unknown is even more acute in today’s modern era of cyberspace. Articles and other materials are regularly sourced over the internet but often these articles are not identified as to which is their country of origin or whether they are the subject matter of copyright or who is the owner thereof etc. Hence, in such cases even if a person were willing to bona fide approach a copyright owner for a licence, there could be no means for ascertaining the details of the owner. Some of the works available online may also have expired their term of copyright, but in the absence of a database such as a Register where all such details can be verified, it is almost impossible for people to even bona fide use such works. This results in the non-dissemination or non-communication of works, on account of lack of relevant material, which is against the public good.

Copyright law whilst protecting authors and owners must also recognise the rights of the general public to access such work and hence, must make provisions whereby adequate knowledge of the status of works and their owners is available to the general public, to enable them to access the work and/or obtain appropriate licences as may be necessary.

Hence, it may be necessary considering the advances in technology and the vast materials now available, to consider some amendment to the legal system to ensure the maintenance of proper details with regard to copyrighted works. In this regard, my suggestion would be a hybrid of the present system where under copyright subsists as soon as the work is created, but that the same must be compulsorily registered thereafter so as to provide adequate notice to all concerned.

17    Feist Publications, Inc. vs.Rural Telephone Service Company (1991) 499 U.S. 340 wherein the United States Supreme Court, inter alia, held that “To establish infringement, two elements must be proven (1)    ownership of valid copyright, and (2) copying of constituent elements of the work that are original.”