Once Positive Action Is Taken By Copyright Holder For Infringement, Action Challenging Groundless Threat Of Legal Proceedings Would No Longer Survive- Karnataka HC

A Karnataka High Court Bench of Justice V Srishananda has observed that once positive action is taken by the copyright holder of infringement, action under Section 60 challenging groundless threat of legal proceedings would no longer survive.

In that context, the Court relied on the case of M/s Mac Charles (I) Ltd., vs. M/s Indian Performing Rights Society Ltd., and said that, "the decision relied on by the counsel for respondents rendered by the Hon’ble Apex Court in the case of M/s Mac Charles (I) Ltd., supra, makes it clear that, “when once the positive action is taken by the copyright holder of infringement, action under Section 60 would no longer survive in view of proviso to Section 60”. Therefore, this Court is of the considered opinion that the grounds urged in the appeal memorandum are hardly sufficient to allow the plaintiff to continue with the suit in O.S.No.617/2013 at Bengaluru by setting aside the impugned Order, whereby, suit of the plaintiff came to be rejected under Order VII Rule 11(d) of CPC." 

Counsel Satyanand BS appeared for the appellant, while Senior Counsel Dhyan Chinnappa, along with others, appeared for the respondents.

In this case, the plaintiff filed a suit under the Copyright Act against the defendants, alleging that the defendants, who claimed to be a Copyright Society, were making aggressive demands for licenses and issuing threatening notices to establishments playing pre-recorded music. The plaintiff contended that they were not engaged in such activities and had no need to obtain licenses from the defendants. Despite this, the plaintiff obtained a license under protest to avoid harassment.

The defendants filed an application to dismiss the suit, arguing that a similar suit was filed by them in the High Court of Delhi, making the Bengaluru suit redundant. The trial court accepted this argument and dismissed the suit, invoking Order VII Rule 11(d) of the Code of Civil Procedure. The plaintiff appealed, asserting that the Delhi suit did not preclude the Bengaluru suit and should have been continued. 

The Karnataka High Court perused the material on record and framed the following issues:

i) Whether the filing of the suit by the defendants in C.C.(O.S.)No.616/2013 on the file of the High Court of Delhi would act as a positive action whereby the alleged empty threat has come to an end resulting in terminating the proceedings initiated in O.S.No.617/2013 on the file of the XVIII Additional City Civil Judge at Bengaluru City (CCH-10)?

ii) Whether the impugned Order is suffering from legal infirmity and perversity and thus calls for interference by this Court?

Subsequently, the Court observed that, "since a separate suit is filed by the defendants, after suit came to be filed by the plaintiff in O.S.No.617/2013 on 19.01.2013 at Bengaluru, the said suit filed by the plaintiff at Bengaluru would not be maintainable. In other words, right of the plaintiff to initiate action under Section 60 of the Copyright Act, 1957 would automatically terminate, in view of the positive action taken by the defendants in filing CS(OS) No.616/2013 on 02.04.2013 on the file of High Court of Delhi, whereby, proviso to Section 60 of the Copyright Act, 1957, comes into play."

In light of the same, the Court held that the appeal was meritless and subsequently dismissed it 

Cause Title: M/s Chancery Pavilion v. M/s Indian Performing Rights Society Ltd. & Ors.

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