1989 C L C 2447
[ Karachi]
Before Mamoon Kazi, J
SHAKEEL ADILZADAH--Plaintiff
versus
PAKISTAN TELEVISION CORPORATION Ltd. and 2 others--Defendants
Civil Suit No. 9.17 of 1989, decided on 28th September, 1989.
(a) Copyright Ordinance (XXXIV of 1962)----Ss. 13, 14 & 15--Summary of the provisions.
(b) Copyright Ordinance (XXXIV of 1962)----Ss. 13, 14 & 15--Copyright can be assigned only by a written agreement--Where
copyright had not been specifically assigned, the Court can still draw its inference by
looking at the agreement--Mere circumstance that an author had been engaged by a
Publisher to write a book for remuneration would itself not vest the copyright in the
Publisher unless such an intention can be clearly gathered from the agreement--When
Court comes to the conclusion that the author has only given a licence to the Publisher
to publish the work, it will have to look into the agreement to determine the conditions
on which the same was given to the publisher.
(c) Civil Procedure Code (V of 1908)----OXXXIX, Rr.l & 2--Copyright Ordinance (XXXIV of 1962), Ss. 13, 14 & 15-Temporary injunction, grant of--Copyright--Allegation of infringement-Copyright
cannot be presumed and when action is brought before the Court by the plaintiff to
prevent infringement of Copyright the Court would grant an injunction only when the
right claimed by the plaintiff is clean--Conduct of plaintiff would also be one of the
relevant factors to be considered by the Court while granting or refusing an
injunction--Onus on the plaintiff to establish a prima facie case and clear title in the
copyright having not been discharged by him, grant of injunction was refused.
Sri Mangal and Co. v. Books (India) Pvt. Ltd. and others AIR 1973 Mad. 49; Khemral
Shrikrishandass v. Messrs Garg & Co. AIR 1975 Delhi 130; G.G. Harrap Co. Ltd. v.
Harbanslal Kalra AIR 1935 Lah. 282; Kamala Book Depot Ltd. v. Sourendrenath
Mukharji AIR 1935 Cal. 508; Lowudes v. Duncombe 47 ER 1134; Sanders v. Smith 40
ER 1100; Lewis v. Champman 49 ER 52; Andrew Sportisweeds v. William Mark Clark
47 ER 844; Edwards v. Cotton (1903) 19 TIR 34 and Messrs Mishra Bandhu Karvalave
v. Shivratanlal Koshal AIR 1979 Madh. Pra. 261 ref
(d) Copyright Ordinance (XXXIV of 1962)—
---S.15--Assignment of copyright--No particular form for such assignment is required
but the assignment must clearly be spelt out from the wording, which should also be
signed by the assignor or his duly authorised agent--Debit vouchers with Publisher duly
signed by the author not spelling out any assignment would not indicate that any
copyright had been assigned by the author.
Kamala Book Depot Ltd. v. Sourendrenath Mukharji AIR 1935 Cal. 508 distinguished.
Iqbal Kazi for Plaintiff.
A.A. Shareef for Defendant No.l.
S. Izhar Haider Rizvi for Defendant No.2.
Mobarak Ahmed for Defendant No.3.
ORDER
The plaintiff, by an interim injunction, seeks to restrain the defendants from publishing,
telecasting, producing, filming, marketing, exhibiting, selling, assigning or dealing with
novel `JANGLOOS' a literary work produced by the defendant No.2.
2. The facts of the case, as alleged in the Plaint are that in 1977 the defendant No.2,
who is a well-known novelist, had agreed to write in series a novel titled `JANGLOOS'
for the plaintiff's magazine published in Urdu language, known as `Subrang'. It was
agreed between the plaintiff and the defendant No.2 that for each instalment of the said
novel, the defendant would be paid a total consideration of Rs.3,000 which shall
amount to a sale and assignment of that part to the plaintiff thereby constituting the
plaintiff as the holder of copyright therein. It was further agreed between the parties
that the said story would not be published in any other magazine or by way of a novel
nor the story would be given to any film producer for making a film or to Pakistan
Television Corporation for telecasting the same thus assigning the entire copyright to
the Plaintiff.
3. Pursuant to the agreement the defendant No.2 submitted in all 42 instalments of the
said story to the Plaintiff out of which 28-1/2 instalments were published in the said
magazine of the plaintiff. The total consideration received by the defendant No.2 from
the plaintiff for the assignment of the said rights in the 42 instalments was Rs.1,26,000
for which receipts were duly issued by the defendant No.2, copies of which have been
filed with the plaint as Annexures `A1' to A-30'.
4. However, to a great surprise of the plaintiff, the defendant No.2 got the first volume
of novel `Jangloos' published in November, 1986, through the defendant No.3. The
Plaintiff protested about the same, but the defendant No.2 assured the plaintiff that till
the entire series of `Jangloos' were published in `Subrang' he would not publish any
other part of the said story nor give the same for film-making or telecasting. However,
on 1-9-1989 the Plaintiff came across a copy of the second volume of `Jangloos'
published by the defendant No.3, which was m violation of the said rights of the
Plaintiff resulting in loss to him.
5. The Plaintiff also came to know that the story of `Jangloos' was being televised. The
Plaintiff, thereafter, approached the defendant No.2 and tried to convince him that it would
be absolutely wrong for him to televise the novel without permission of the plaintiff
particularly when the defendant No.2 had received full consideration for the novel from the
plaintiff, however ,the defendant No.2 failed to settle the matter.
6. Thereafter, the Plaintiff was constrained to send an Advocate's notice, dated
24-8-1989 to the defendant No.l, but the defendant failed to respond to the said notice,
although a reply was received from the defendant No.2 denying that any right or
interest in the novel `Jangloos' had been assigned to the Plaintiff, and hence the suit.
7. The said allegations have been denied by the defendants in the respective
counter-affidavits filed on their behalf. According to the defendant No.2, no right in the
said novel or story had been assigned by the defendant to the Plaintiff, nor had the
defendant agreed that the story would not be published or telecast as alleged by the
Plaintiff. Although the receipt of the amount of Rs.1,26,000 by the defendant No.2
from the Plaintiff has not been denied, but the same, according to the defendant, had
not been paid to him as consideration for the said story but only as, a nazrana. However
,the Publication of 28-1/2 instalments of the story in the said magazine of the plaintiff
with permission of the defendant No.2 has not been denied.
8. According to the defendant No.l it was as far back as in 1983 that the said defendant
under an agreement with defendant No.2 took steps to telecast 'Jangloos'. Pursuant to
the said agreement, the defendant No.l in 1983 had started production for the purpose
of transmission and telecast of 'Jangloos' as a drama serial and the fact that the
defendant No.l was working on script of a pilot programme for telecasting the said
serial under an agreement with the defendant No.2 had received a wide publicity in the
national press throughout the length .and breadth of the country, but neither the
plaintiff himself nor anybody claiming on his behalf questioned the same in any
manner, or claimed to have any copyright in respect of the story. However, the drama
could not be telecast and the project on account of unavoidable reasons was
temporarily shelved. According to the defendant No.1 four episodes of drama serial of
'Jangloos' have already been telecast out of the 32 scheduled to be telecast. Once again
the proposed telecast of the drama serial received wide publicity through the national
press in April/May, 1989. The defendant No.l, has already made commitments to eight
various sponsors for televising the 32 episodes of the said serial and advance recording
of 13 episodes in normal course has already been completed. Consequently, according
to the defendant No.1 the issuance of injunction in favour of the defendant (sic.).
9. The case of the defendant No.3 is also not different from that of the other defendants.
According to the defendant, before the publication of the novel, 'Jangloos' in February,
1987, the defendant inquired from the Plaintiff whether the copyright of the novel had
been assigned to him by its author the defendant No.2, but the Plaintiff confirmed that
no such copyright had been obtained by him from the author of the said novel.
According to the defendant No.3, the novel was published by him after obtaining such
assurance from the plaintiff. The silence of the plaintiff for nearly three years after the
publication of the first edition of the novel, therefore, according to the defendant No.3,
clearly militates against his bona fides.
10. 1 have heard Mr. Iqbal Kazi, learned counsel for the Plaintiff and Mr.A.A. Shareef,
Mr.lzhar Haider Rizvi and Mr. Mubarak Ahmad, learned counsel for the defendants
Nos. 1, 2 and 3 respectively.
11. Although many issues have been raised by the learned counsel, but I would like to
deal with the basic issues first, viz. whether the Plaintiff has any copy right in the
story/novel 'Jangloos' and/or whether there was any agreement between the Plaintiff
and the defendant No.2, giving exclusive rights in respect of the said story to the
Plaintiff. If any of these questions is answered in the affirmative, then there will be no
difficulty in determining whether the defendants have infringed the Plaintiffs rights in
the said story.
12. The Copyright Ordinance, 1962 (hereinafter referred to as the 'Ordinance') which
governs all matters relating to copyright in Pakistan came into force on 27th February,
1987. "Copyright" is defined by section 3 of the Ordinance and copyright in the case of
literary, dramatic or musical work has been defined by clause (a) thereof as follows:-"3. Meaning of Copyright.--(1) For the purpose of this Ordinance,
Copyright" means the exclusive right, by virtue of, and subject to, the provisions of this
Ordinance-(a) in the case of 'a literary, dramatic or musical work, to do and authorise the doing of
any of the following acts, namely:-(i) to reproduce the work in any material form;
(ii) to publish the work;
(iii) to perform the work in public;
(iv) to produce, reproduce, perform or publish any translation of the work;
(v) to use the work in a cinematographic work or make a record in respect of the work;
(vi) to communicate the work by radio-diffusion or to communicate to the public by a
loudspeaker or any other similar instrument the radio diffusion of the work;
(vii) to make any adaptation of the work;
(viii) to do in relation to translation or an adaptation of the work any of the acts
specified in relation to the work in sub-clauses (i) to (vi)." Section 13 of the Ordinance
provides that "the author of a work shall be the first owner of the copyright therein.
Proviso (a) to Section 13 further provides that: "in the case of a literary, dramatic or
artistic work made by the author in the course of his employment by the proprietor of a
newspapers, magazine or similar periodical under a contract of service or apprentice
ship, for the purpose of publication in a newspaper, magazine or similar periodical, the
said proprietor shall, in the absence of any agreement to the contrary, be the first owner
of the' copyright in the work in so far as the copyright relates to the publication of the ,
work in any newspaper, magazine or similar periodical or to the reproduction of the
work for the purpose of its being so published, but in all other respects the author shall
e the first owner of the copyright in the work. Proviso (c), which is also relevant
provides that "in the case of work made in the course of the author's employment under
a contract of service or apprenticeship to which Clause (a) or Clause (b) does not apply,
the employer shall, m the absence of any agreement to the contrary be the first owner
of the copyright therein". Section 14 of the ;A Ordinance further provides that "The
owner of the copyright in an existing work of the prospective owner of the copyright in
a future work may assign to any person the copyright either wholly or partially and
either generally or subject to i limitations or either for the whole term of the copyright
or any part thereof'. j Section 14 is subject to two provisos and according to the first
one, in the case of the assignment of copyright in any future work, the assignment shall
take effect only when the work comes into existence. The second proviso fixes a period
of assignment and according to it, the same shall not be for a period of more than 10
years beginning from the calendar year next following the year in which the assignment
is made. However, an exception has been made in respect of cases where the
assignment is made in favour of Government or educational, charitable, religious or
non-profit institution. The proviso further provides that if an assignment of copyright in
a work is made in contravention of this proviso, the copyright in the work shall, on the
expiry of the period specified in this proviso, revert to the author, who may re-assign
the copyright in the work subject to the provisions of the Ordinance. Section 15 of the
Ordinance, which is most important for the purpose of the present controversy provides
as follows:-"15. Mode of assignment.--No assignment of the copyright in any work shall be valid
unless it is in writing signed by the assignor or by his duly authorised agent."
13. Referring to the provisions of the Ordinance referred to hereinabove, Mr. Iqbal
Kazi has vehemently argued that the entire copyright in the said book had stood
assigned by the defendant No.2 to the Plaintiff for which a substantial . consideration of
Rs.3,000 per month for each instalment had been received by the latter. Although it has
been very candidly conceded by the learned counsel that there was no formal
agreement between the defendant No.2 and the Plaintiff giving exclusive rights in the
said story to the Plaintiff, but according to the learned counsel, the thirty debit vouchers
(Annexures `A-1 to A-30') which were admittedly signed by the defendant No.2
acknowledging the receipt of Rs.3,000 for each instalment of the story from the
Plaintiff, constituted different agreements in writing to meet the requirements of section
15 of the Ordinance as no particular form for the agreement is visualised by section 15,
the only requirement being that the agreement should be in writing and assigned by the
assignor or by his duly authorised agent. The learned counsel has also referred to
various other documents, copies of which have been filed with the Plaint as Annexures
`C, D, E and F which according to him, supported his contention. Reliance has been
placed by the learned counsel on Sri Mangal & Co. v. Books (India) Pvt. Ltd. and
others AIR 1973 Mad. 49; Khemral Shrikrishnadass v. M/s. Garg & Co. AIR 1975
Delhi 130; G.G. Harrao & Co. Ltd. v. Harbanslal Kalra AIR 1935 Lah: 282 and
Kamala Book Depot Ltd. v. Sourendrenath Mukharji AIR 1935 Cal. 508.
14. In the case reported in AIR 1973 Mad. 49, their Lordships of the Madras High
Court
while interpreting similar provisions of the Indian Copyright Act as are contained in
section 15 of the Ordinance, held that no particular form of assignment of any
copyright in any work is required and it will suffice if the assignment can be culled out
in writing from some document and that the assignment has been authorised by the
author is evident from his signature or that of his authorised agent. In the case reported
in AIR 1975 Delhi 130; it was held that where work is done by an author for a
consideration for a publisher the copyright would normally vest in the publisher subject
to any contract to the contrary as provided in sections 17 and 18 of the Copyright
Ordinance, 1957 (enforceable m India). However, in 1968 Kar. L J 440 it was held that
the mere circumstance that the author had been engaged by a publisher to write a book
for a fixed remuneration does not warrant any legal presumption that the intention of
the parties was that the copyright should belong to the publisher. In the third case, cited
by Mr. Iqbal Kazi and reported in A.I.R..1935 Lah. 282; it was held that where a person
publishes a book, containing selections from another book, there is a prima facie case
to issue a temporary injunction. In AIR 1935 Cal. 508 the author sold to the publisher
the first edition of his new novel, consisting of 1,100 copies in twelve forms in double
crown size. Thereafter, the author arranged with another publisher to publish the same
novel as part of a collection of his novels. The only contested point before the Court
was the legal effect of the first agreement. The Plaintiff claimed that the collection
subsequently published was infringement of his rights and the author could not publish
the novel in any form at all until the whole of the first edition was sold. The defendant
contended that the author only sold a right to print and sale 1,100 copies in a particular
form and did not assign the copy right and that the author was entitled to publish the
novel alone or in a collection provided that he did not publish it in twelve forms in
double crown size. It was held that the sale of the first edition amounted to an interest
in the copyright until the last copy of that edition was sold. Until then the purchaser had
an exclusive right of copyright, at any rate, as far as the right to publish the novel in
any form is concerned, and that the defendant's action amounted to an infringement of
the plaintiffs' right.
15. Mr. AA. Shareef, learned counsel for the defendant No.l, on the other hand, has
invited my attention to the following decisions. In Lowudes v. Duncombe 47 E.R.
1134, it was held that the Court will not grant an injunction against a literary piracy
unless the title be clear. In Sanders v.Smith 40 E.R. 1100 injunction was refused to
restrain an alleged infringement of copyright where the conduct of the Plaintiff, in the
opinion of the Court, was calculated to induce the defendant to believe that the course
taken by them would not be objected to by the Plaintiffs. Similar considerations
weighed with the Court while declining injunction in Lewis v. Champman 49 E.R.52.
In Andrew Sportisweede v. Willisam Mark Clark 47 E.R. 844, it was held that the
Court should take into consideration in granting or withholding the injunction on which
side the balance of harm will preponderate. In Edwards v. Cotton (1903) 19 T.I.R. 34 it
was held that the agreement with the publisher, giving the publisher the exclusive right
of printing and publishing the excise and issuing the same in volume fofrm was a
publishing agreement only and not an assignment of the copyright. In Agarwala
Publishing House Khurja v. Board of High School and Intermediate Education U.P.
Allahabad AIR 1977 All. 9 it was held that copyright in respect of examination
question papers in absence of assignment under Section 18 (of the Indian Copyright
Act) or contract giving up the claim of the copyright, would belong to the paper-setter.
In another case reported as M/s. Mishra Bandhu Karvalave v. Shivratanlal Koshal AIR
1979 Madh. Para. 261 it was observed that in the case of a publishing agreement
between author and publisher, the most important pint to determine is whether any
copyright is to be vested in the publisher or whether a licence only is intended. In the
former case, the publisher will enjoy the full legal title to the copyright and will alone
be entitled to enforce the right against third parties. In the case of a licence, which in a
publishing agreement will normally be an exclusive licence, the grant is subject to
certain conditions and on their non-fulfillment, the licence is capable of being revoked.
It was further held that writing is essential when there is assignment of copyright.
16. The object behind giving the thumb nail summary of these cases is to highlight the
factors the Court has to take into consideration before granting an injunction when
infringement of a copyright is alleged. It follows from the above enumeration that
copyright can be assigned only by a written agreement. Even though copyright has not
been specifically assigned the Court can still draw its inference by looking at the
agreement. The mere circumstance that an author has been engaged by a publisher to
write a book for remuneration would itself not vest the copyright in the publisher unless
such an intention can be clearly ,f gathered from the agreement. In case the Court
comes to a conclusion that the author has only given a licence to the Publisher to
publish the work, it will have to look into the agreement to determine the conditions on
which the same was given to the publisher. However, copyright cannot be presumed
and when action is brought before the Court by the Plaintiff to prevent infringement of
copyright; the Court would grant an injunction only when the right claimed by the
Plaintiff is clean. The conduct of the Plaintiff would also be one of the relevant factors
to be, considered by the Court while granting or refusing an injunction.
17. Turning now to the documents relied upon by Mr. Iqbal Kazi the learned counsel
has first referred to a passage from Annexure `C' which is the preface written by the
defendant No.2 himself to volume I of the novel `Jangloos' it reads as follows:-"So, I thought that at least I may see that part of the novel which had already been
published in `Subrang', in the form of a book, when the second volume will be
published, one will have to wait for the future publications of `Subrang'. It cannot be
published before that time. Even for the third volume, readers will have to depend on
the performance of Shakeel Adilzadah (Plaintiff). I must clearly state that, the novel
will be first published in `Sabrang' and then only it will be published in the form of a
book."
Annexure `E' which is the next document referred to by Mr. Kazi shows that while
giving an interview to one Tahir Masood, the defendant No.2 had admitted the
publication of his novel `Jangloos' in Subrang' and acknowledged the receipt of full
consideration therefore. This has been further confirmed by the defendant No.2 in the
said interview given by him to weekly "Akhbar-e-Khawateen" (Annexure `F').
18. It may be pointed out that as far as the first contention of Mr. lqbal Kazi that there
is an agreement in writing in the present case, assigning copyright in the said novel to
the Plaintiff is concerned, no doubt, section 15 does not require any particular form for
such assignment but at the same time the assignment must clearly be spelt out from the
writing, which should also be signed by the assignor or his duly authorized agent. The
thirty debit vouchers referred to by Mr. lqbal Kazi, no doubt had been signed by the
defendant No.2, but nothing can be spelt out there from to indicate that any copyright
had been assigned by defendant No.2 to the Plaintiff. No doubt, it clearly appears from
the said vouchers that a consideration of Rs.3,000 per each instalment of the story was
received by the; defendant No.2 from the Plaintiff but the same is hardly sufficient to
render the debit vouchers as documents validly assigning the copyright as visualised by
section 15 of the Ordinance. Not only that the assignment of any copyright cannot be
spelt out from the debit vouchers, but nothing can be found therein to draw even an
inference in this respect. It appears that Mr. Iqbal Kazi was conscious of this flaw in the
case, as his argument m the alternative was that, even otherwise since the receipt of
consideration for the various instalments published in the Plaintiffs magazine was
admitted by the defendant No.2, the Plaintiff, in any case had an exclusive right to the
publication of the said story in his magazine and no right could be assigned in respect
thereof in favour of the defendants. Support for the contention has mainly been brought
from the case reported in AIR 1935 Cal. 508, reference to which has already been made
earlier.
19. No doubt, in this case it was held by the High Court of Calcutta that the sale of the
first edition of the book to the Plaintiff amounted to an assignment of interest in the
copyright until the last copy of that edition was sold but the facts of that case are
clearly distinguishable. In that case there was a written agreement between the author
of the book and the Plaintiff, which governed the respective rights and obligations of
the parties. In the present case, the absence of a written agreement has even been
conceded by Mr. lqbal Kazi himself as, all that he has relied upon arc the said debit
vouchers, which if I may say again so can neither constitute an agreement nor can they
be relied upon as substitutes for the same. However, even in the reported case it was
held that the right to exclusively publish the novel could not be further stretched to
deprive the defendant of the right to dramatise the novel (see observations on page 509
of the report). In the present case, what can be spelt out from the circumstances
enumerated above is that there was an oral agreement between the defendant No.2 and
the Plaintiff to publish the said story in the latter's said magazine for which the
defendant No.2 had received a consideration of Rs.3,000 for each instalment that was
to be published therein. The allegation made by the Plaintiff that there was a further
agreement assigning exclusive right in the story to the Plaintiff has been denied the
defendants. The defendant No.3 has gone to the extent of alleging that the novel was
published by him after obtaining assurance from the Plaintiff that he held no copyright
in the story. No affidavit-in-rejoinder has been filed by the Plaintiff to rebut the
allegations made in the respective counter-affidavits. Mr. Iqbal Kazi only stated at the
Bar that all the adverse allegations made in the counter-affidavits may be deemed to
have been denied by the Plaintiff. However, even if the same is accepted as denial of
the allegations contained in the respective counter-affidavits, the Plaintiff has placed
reliance only on the admissions allegedly made by the defendant No.2 in the preface to
the said novel and the respective interviews given by him to different magazines. No
doubt, the interviews alleged to have been given by the defendant No.2 have not been
denied by him in his counter-affidavit, but notwithstanding the alleged admissions
made by the defendant No.2 no agreement as alleged by the plaintiff can be inferred
there from. The onus is on the Plaintiff to establish a prima facie case. Such onus has
not been discharged as the Plaintiff has failed to establish a clear title in the copyright
which under such circumstances would be presumed to vest in the p defendant No.2.
On the other hand, it has been pointed out that the defendant 1 No.l has acquired rights
from the defendant No.2 to telecast the play based on the novel `Jangloos' and has
already made commitments with its various sponsors I to televise 32 episodes thereof.
According to the defendant No.l advance recordings in normal course of as many as
thirteen episodes of the play have so far been completed as pointed out earlier.
Consequently according to the defendant No.l, the grant of injunction in favour of the
Plaintiff would result into a very heavy financial loss to the defendant in view of the
aforesaid commitments already made by it with the sponsors. The interest of television
viewers is also to be taken into consideration as a number of episodes has already been
telecast. Mr.A.A. Shareef, learned counsel for the defendant No.l has further contended
that telecast of `Jangloos' has been receiving publicity since 1983, but no notice thereof
was taken by the Plaintiff. Moreover, according to the learned counsel, it was after
about three years of the publication of the first. part of the said novel that the defendant
No.2 as author thereof entered into an agreement with the defendant No.l for the
purpose of script writing with a view to its being telecast by the defendant No.l. As far
as the said contentions arc concerned, no doubt the Plaintiff's case is based on a fresh
cause of action but when there is no written agreement the Court can always draw its
inferences from the attending ,E circumstances and the conduct of the plaintiff would,
therefore, be relevant-Absence of a written agreement is also a factor, hard to overlook
because such transactions are normally governed by a written documents. In any case,
since the Plaintiff has failed to establish that there was even an oral agreement between
him and the defendant No.2 as alleged by him, giving exclusive rights in respect of the
story, `Jangloos' to the Plaintiff, the latter has failed to establish a prima facie case for
granting of injunction in his favour.
20. Mr. Izhar Haider Aizvi, learned counsel for the defendant No.2 has also raised
certain legal objections. The first relating to the jurisdiction of this Court to try the
present suit has been raised by a separate application filed under Order VII, Rule 11,
C.P.C. My attention in this respect was particularly invited to section 65 of the Act,
which vests the jurisdiction for filing suits or other civil proceedings regarding
infringement of a copyright in the District Court. The contention, therefore, was that
this Court cannot try the present suit. Mr. Iqbal Kazi, without going into the details of
the history of vesting this Court with jurisdiction on the original civil side, has referred
to section 2 of the Sind Civil Courts (Amendment) Ordinance, 1981, which substitutes
a new section 7 for the original one as follows:-7. Original jurisdiction of the Court of District Judge Subject to any law for the time
being in force, the original jurisdiction of the Court of the District Judge in Civil Suits
and proceedings shall without limit of the value thereof excepting in the Karachi
District where the original jurisdiction in civil suits and proceedings of the value
exceeding one lac of rupees shall be exercised by the High Court." Since the present
suit has been valued for the purpose of court-fees and jurisdiction at Rs.1,01,000 the
contention of Mr.Iqbal Kazi was that this Court has jurisdiction to try the suit.
However, since a separate application has been made in this respect, and in view of the
observations made by me here in above, it is not necessary for me to go into the
question of jurisdiction at this stage of the case. I would leave this question to be
decided subsequently. The said application made on behalf of defendant No.2 may be
registered and numbered by the office and put up for orders before the Court
21. An objection was also raised by Mr. Izhar Haider Rizvi in regard to limitation,
which was based on the provisions contained in section 14 to which I have already
referred in this order. However, it may be observed once again that it is not necessary
for me to go into the question in view of the aforesaid observations.
22. In the result, no case for grant of interim injunction against the defendants has been
made out and this application is dismissed.
M.B.A/S-485/K
dismissed.
Application
P L D .1985 Lahore 92
Before Ghulam Mujaddid Mirza and Sardar Muhammad,
JJ
PROF. YOUSAF SALIM CHISHTI AND 6 OTHERSPetitioners.
versus
GOVERNMENT
SECRETARY,
HOME
Respondents
OF
THE
DEPARTMENT
PUNJAB
AND
THROUGH
ANOIHER-
Writ Petition No. 1721 of 1982, decided on 9th August, 1984.
(a) Constitution of Pakistan (1973)
-- Art. 199-West Pakistan Press and Publications Ordinance (XXX
of 1963), Ss. 24(1) (j) & 39-Forfeiture of book for reason that it
contained material which was likely to create feelings of enmity, ill
-will and hatred between different sects of citizens of Pakistan
Author of such book, held, an aggrieved person and his writ
against order of forfeiture was therefore, maintainable
(b) Constitution of Pakistan (1973)
-- Art. 199-West Pakistan Press and Publications Ordinance (XXX
of 1963), Ss. 24(1) (j), 39 & 48-Forfeiture of publication-Right of
appeal before Tribunal though provided under .3. 48 of Ordinance,
1983 but no Tribunal was constituted at relevant time-Aggrieved
person, held, was not expected to wait till such tribunal was
constituted or to file a petition before a non-existing tribunal-Only
forum available to aggrieved person, was, therefore, High Court
under its constitutional jurisdiction.
(c) Copyright Ordinance (XXXIV of 1962)
-- Ss. 14 & 15-Government rewarding author for writing certain
book-No transaction regarding buying of copyright or manuscript
between author and Government ever took place-Procedure laid
down in Ss. 14 & 15 for assignment of copyright also not followed
Publication, held, did not become property of Government on
basis that author was rewarded by Government for writing such
book.
(d) Constitution of Pakistan (1973)
-- Art. 199-West Pakistan Press and Publications Ordinance (XXX
of 1963), Ss. 24(1) (j) & 39-Notification by Provincial Government
forfeiting book for reasons that it contained material which was
likely to create feelings of enmity, ill-will and hatred between
different sects of citizens of Pakistan-Only material placed by
Government on record was a reply/comments-Nothing substantial
was found on record from which it could be inferred that there
were good grounds, or for that matter Government took into
consideration certain portion of or passages from book which
justified impugned notification of forfeiture - Government had not
taken necessary precautions to state grounds referring to
objectionable passages and not complying with other legal
formalities-Author of book taking plea of mala fide-Held,
Government's decision to forfeit the book under S. 24(1)(j) of
Ordinance, 1963 was not final-In order to determine vires of
notification forfeiting book, action of Government was subject to
judicial review which became all the more necessary when
aggrieved party had taken plea of mala fide-Government was not
only to provide grounds but also to give an opportunity to author
to place his case before Government-Impugned notification
forfeiting book in absence of any specific grounds, was therefore,
without lawful authority and as such of no legal effect in
circumstances.
The Sangbad Newspaper and another v. The Province of East
Pakistan P L D 1958 Dacca 324 ; Mahmud Ahmad Abbasi v.
Governor of West Pakistan, Lahore P L D 1966 (W. P.) Kar. 383;
The Daily Ehsan's case P L D 1949 Lah. 282; Mahmud Ahmad
Abbasi v. The Administrator of Karachi P L D 1961 (W. P.) Kar.
129; Musawaat Ltd., Karachi v. Secretary Government of Sind,
Home Department P L D 1980 Kar. 71 and Sultan Muhammad v.
Government of West Pakistan through Home Secretary
(Government of W: Pak.), Lahore P L D 1976 Lah. 585 ref.
Muhammad Hayat v. The Crown P L D 1951 F C 15 and Syed
Saeed Hassan v. Pyar Ali and 7 others P L D 1976 S C 6
distinguished.
Irshad Ahmad Qureshi and Muhammad Ismail Qureshi for
Petitioners.
Advocate-General for Respondent No. 1.
Iqbal Mahmood Awan and Manzoor Elahi Gondal for Respondent
No. 2.
Dates of hearing :19th to 21st, 27th and 28th March, 1983.
JUDGMENT
GHULAM MUJADID MIRZA, J.-"The Punjab Government,
Home Department, vide their Notification No. 1-1/H-hPL-111/82,
published in the Punjab Gazette on 21st of April, 1982, forfeited
the book entitled "Tarikh-e-Tasawwaf", written by Professor
Yousaf Salim Chisti, edited by Dr. Muhammad Yousaf Goraya,
Director, Ulema Academy, Auqaf Department, Punjab, Lahore.
The reason was that the book contained material which was likely
to create feelings of enmity, ill-will and hatred between different
sects of the citizens of Pakistan within the meaning of clause (j) of
section 24(1) of the West Pakistan Press & Publications
Ordinance, 1963 (hereinafter referred to as the Ordinance).
This action by the Punjab Government was taken under section
39 of the Ordinance. All copies of the aforesaid book were
forfeited with immediate effect.
2. The aforementioned notification has been challenged by Prof.
Yousaf Salim Chishti (hereinafter to be referred as the author) and
six others by means of the present writ petition under Article 9 of
the Provisional Constitution Order, 1981, read with Article 199 of
the Constitution of Islamic Republic of Pakistan, 1973, on the
ground that it is without lawful authority and as such of no legal
effect.
The six other petitioners are-Abdul Raoof Farooqi son of Sher
Muhammad, Khateeb Jamia Masjid Noorani Qila Lachhman
Singh, Lahore; Muhammad Saeed-ur-Rehman Alvi, son of
Maulana Muhammad Ramzan, Editor, Weekly Khuddamuddin;
Khurshid Ahmad, Khateeb, Jamia Masjid Ma'Noor, Poonchh
House, Lahore; Mian Riaz-ul-Haq Farooq, Khateeb Jamia Masjid
Asbrafia, Chowk Sant Nagar, Lahore; Qari Maqbool-urRehman
son of Qari Muhammad Saeed, Incharge Madrissa AnwarulQuran, Tauheed Nagar, Lahore; and Mian Abdur Rehman son
of Maulana Muhammad Ibrahim (deceased), Khateeb, Jamia
Masjid Haji Rehmat Ullah, New Anarkali, Lahore.
3. After the admission of the writ petition, Markazi Adara Tahaffuz
Haquq Ahl-e-Sunnat (Registered), Pakistan, Lahore and one
Sahibzada Muhammad Saleem Hamad applied for being
impleaded as party to the proceedings. Former's request was
allowed subject to all just exceptions while in the case of latter,
counsel for the parties agreed for his being impleaded as
respondent. Both were impleaded as respondents 2 and 3,
respectively.
Thecmfter Allama Syed Mehmood Ahmad Rizvi and Muhammad
Abdul Haleem Qasmi filed C. M. 6 of 1982 and C. M. 7 of 1983,
respectively, for being impleaded as party to the writ petition. They
were not formally impleaded, but their counsel were heard.
I don't think, it is necessary to refer to all the interim orders.
However, I would like to mention orders dated 3-11-1982 and 2311-1982. On 3-11-1982, 1 was constrained to observe that the
Government was not taking the matter seriously because of lack
of interest on the part of the Office of the Advocate-General.
On 23-11-1982, I directed the learned counsel for the petitioner as
well as for the respondents to reformulate their contentions
because the Advocate-General entered appearance on the said
date. Even on 23-11-82, no written statement was filed on behalf
of the Government. I, therefore, directed the Advocate-General to
file the written statement within a fortnight.
The petitioners' case is that Professor Yousaf Saleem Chisti is the
author of the book. The remaining petitioners claim to be religious
scholars. They are busy in the sacred duty. of imparting Islamic
education to the masses. When they came to know of the
impugned action of the Government, they were shocked.
Therefore, they joined the author as petitioners.
According to the petitioners, the purpose of the book is to
introduce to the Islamic Ummah as to what is meant by
"Tasawwaf". With this in view, the author has given the history of
Islamic "Tasawwaf" and non-Islamic. According to the author, the
former is for spiritual uplift of mankind and communion with
Almighty Allah, whereas the latter suffers from number of
weaknesses and shortcomings.
While dealing with "Tasawwaf", the author has taken care and
caution to remain within the limits of Holy Qur an and teachings of
Prophet Muhammad (peace be upon him).
The teachings of Qur'an and Sunnah have been divided into
following:
(1) Iman Bil Ghaib, i.e.
(a) to believe in the existence and oneness of Allah with all His
Powers, Authority and Potentials;
(b) to believe in the existence of Angels
Revelation
and the system of
(c) to believe in the truth of all the revealed Books of Allah;
(d) to believe in the truth of the Messengers of Allah; and
(e) to believe in the day of Reckoning, life hereafter, the Heaven
and Hell. This aspect of "Din" is commonly known as "llam-iAqaid"
or "Ilam-ul-Kalam"
(2) Noble Deeds This section covers the vast field of practical life
of man in this world and lays stress on Prayers, Fastings, Haj,
Zakat, Jihad, Fair dealings with other people and provides
guidance for man in his economic, social as well as international
life. This part of Islam is the subject of Fiqah.
(3) (i) Love with Allah and the desire to see Him;
(ii) Love with the Holy Prophet; and
(iii) Inculcation of spiritual and mental qualities like Tawakkal,
Ihsan, Ikhlas and Sabar. This has been described as Tazkiya-iIkhlaq by some authors. This category of the Islamic injunctions is
the subject-matter of Tasawwaf.
After dealing with the aforesaid three sections, the petition deals
with as to what happened when Islam spread over the world and
different Muslim States came on the map of the world. This
widened the scope of preaching of Islam. Some of the scholars
took one particular section out of the three mentioned above,
while others attended to other categories according to the
circumstances and need of the hour. This led to the creation of
separate schools of thought. Scholars and Fuqhas dealt with the
first two sections referred to above, whereas it were Sufia who
took upon themselves the task of purging the human soul by
means of different methods and for this matter they made sure
never to cross the limits laid down by the Holy Qur'an and
Sunnah.
The petitioners claim that credit goes to Sufia and Mashaikh in not
only reforming the society of their time but also to lay down
guidelines for the future. Those provide food for spiritual thought,
peace to human soul and road to salvation. This can be attained
through Zikar, Mujahida, Riazat and Maraqbat. For the services
rendered by the Sufia the Muslim Ummah shall remain indebted to
them for all times to came.
The petitioners claim that the author has written this book keeping
in view the above-mentioned background. He has paid tributes to
the Sufia-i-Ikram.
Learned counsel appearing for the petitioners drew my attention
to page 6 of the book where the author has expressed his view
about Taswwaf in the following words:
Thereafter my attention was invited to page 100 of the book where
the author has given two categories of Tasawwaf as under :
Now I proceed to deal with the contentions raised by the learned
counsel for the petitioners.
The first submission was that nowhere in the book the author has
been disrespectful to any Muslim Saint. According to the learned
counsel, on completion of the manuscript the same was handed
over to the Auqaf Deptt. It was edited by Dr. Muhammad Yousaf
Goraya, Director of Ulema Academy, Government of Punjab,
Lahore, who took no objection to any part of the book.
The manuscript was also shown to Maulana Muhammad Bakhsh
Muslim, a well-known scholar of Brelvi school of thought. He went
through the manuscript. Maulana made certain suggestions by
way of additions, alterations and subtractions. Those were duly
incorporated in the book. The book was then sent to the Press.
Learned counsel submitted that the book was liked by all schools
of thought as a result of which the author was paid rich tribute by
renowned scholars. In support of this he drew my attention to
certain cuttings and extracts from different newspapers and
journals (Annexs. `A' to `H'). I have taken note of those but I don't
think it is necessary to reproduce or mention those.
The sum and substance of all. of this was that the learned counsel
tried to establish that there was no legal justification to order
forfeiture of the book.
Learned counsel further submitted that there was no material in
the book which was or is likely to create feelings of enmity, ill-will
and hatred between different sects of citizens of Pakistan.
It was argued that while deciding as to whether the book came
within the mischief of section 24(1)(j) of the Ordinance, the Court
must read it as a whole in fair, free and liberal manner and not in
narrow-minded or sectarian way. Reliance in this respect was
placed on The Sangbad Newspaper and another v. The Province
of East Pakistan (P L D 1958 Dacca 324) and Mahmud Ahmad
Abbasi v. Governor of West Pakistan, Lahore (P L D 1966 (W. P.)
Kar. 383).
While dealing with the legal aspect, the learned counsel submitted
that the impugned notification was arbitrary. Respondent No. 1 did
not mention any ground(s) so as to bring the case of the
petitioners within the mischief of section 24(I)(j).
It was submitted that the author was not given any notice to the
effect that the book contained any objectionable passages so as
to attract the aforesaid provision of the Ordinance. In support of
this contention, the learned counsel relied on the case of The
Daily Ehsan (P L D 1961 (W. P.) Kar. 129). Reliance was also
placed on Mahmud Ahmad Abbasi v. The Administrator of Karachi
(P L D 1949 Lah. 282).
Learned counsel also took up the plea of mala fide and argued
that the author has been subjected to uncalled for discrimination.
There are other books in the market on the similar subject, which
are really objectionable and which come within the purview of
section 24(1)(j). These are in the knowledge of the Government
yet no action has been taken with regard to them. In this
connection, the learned counsel drew my attention to Annexures
`J', `K', °L' and `M'.
Another point urged was that the action in this case had been
taken by certain Officers of the Home Department, who were not
competent to do so. The matter was never brought to the notice of
the Governor. The impugned notification, as such, is ab initio void.
The learned counsel submitted that the Advocate-General should
not now be permitted to bring to the notice of this Court the
grounds justifying the forfeiture of the book.
Concluding his arguments, learned counsel for the petitioners
submitted that while tracing the history of Tasawwaf the author
has given references of renowned Sufia-i-Ikram. Most of the time
he has dealt with the historical events dealing with the lives, works
and services rendered by the Sufia-iIkram for the service of
humanity. It was submitted that so far as the author and his views
were concerned, he has been very respectful to those noble
personalities. It was submitted that the author himself was a
humble devotee of Hazrat Data Ganj Bakhsh Ali Hajveri
(Rehmatullah Eleh). In such circumstances, the question for
forfeiture did not arise.
The respondent No. 1 did not submit any written statement in
spite of the fact that the Advocate-General was asked to do so.
They only filed written reply/comments under the signature of the
Advocate-General.
The learned Advocate-General raised number of preliminary
objections. His first objection was regarding misjoinder of the
parties. It was next contended that the petitioners had no locus
stand to file the writ petition.
It was further submitted that subject to the aforesaid two
objections, the petitioners, if still aggrieved, had an adequate and
efficacious remedy, which was right of appeal provided under
section 48 of the Ordinance.
I would like to deal with these objections straightaway. The first
objection has some force but not to the extent that the petition is
to be dismissed on account of this, the reason being that
petitioner No. 1 is the author of the book. He is certainly an
aggrieved person. As such, he ,A has a right to come to this Court. So
far as the other petitioners are concerned, I don't think they are either
necessary or proper party. They are there to provide moral support to
petitioner No. 1. Therefore, their names shall stand deleted from this
petition.
No doubt, the Ordinance provides right of appeal under section 48, but
so far no tribunal has been constituted. The, petitioner is, therefore, not
expected to wait till the tribunal is constituted or to file a petition before
a non-existing tribunal. The only forum available to him is High Court.
The learned Advocate-General laid emphasis on his next
contention, which was that the book had been purchased by the
Government. It was the Government property. The Government,
as such, were well within their right to do whatever they liked. He
said that the Government were fully competent to pass any order
they deemed fit. Hence the impugned notification was intra vires.
The Advocate-General placed on record a photo copy of the letter
signed by the Legal Advisor, Riaz Keyani, for Administrator of
Auqaf, Punjab, Lahore addressed to the Advocate-General which
is to the following effect:
The Auqaf Department purchased the manuscript of the book
`Tarikh Tasawaf' written by professor Yousuf Saleem Chishti for a
sum of Rs. 5,000, which was duly paid to the Author. The Author
has, therefore, got nothing to do with the book as it is the sole
property of the Auqaf Department."
Learned counsel for the petitioner vehemently denied this
assertion. He submitted that no such transaction ever took place
between the author and the Government. As a matter of fact, the
Government paid Rs. 5,000 to the author as reward for writing the
book. He further submitted that in case the Government had actually
purchased the book then they had to go through the procedure laid
down in sections 14 and 15 of the Copy- right Ordinance of 1962, which
deal with assignment of copyright and mode of assignment,
respectively.
This stance of the Advocate-General is preposterous. In case the
Government were the owner of the book then question of
forfeiture did not arise. Hence there was no need of the impugned
notification. The word, "Forfeiture" has been defined in the Oxford
English Dictionary Volume IV of 1961 Edition, to mean;
"The fact of losing or becoming liable to deprivation of (an estate,
goods, life, an office. right, etc.) in consequence of x crime,
offence, or breach of engagement."
I am, therefore, not prepared to hold that the book was property of the
Government.
The objection of the learned counsel for the petitioner that the
matter was not brought to the notice of the Governor of the Punjab
has also no force. The Advocate-General stated that the summary
was put up before the Governor. I have no reason to doubt the
statement of the learned Advocate-General at the Bar.
I have also heard the learned counsel appearing on behalf of the
two respondents, who were brought on the record subsequent to
the filing of the writ petition, as well as counsel for those
applicants who were not formally impleaded as party to the
proceedings. Respondent No. 2, Markazi Adara Tahaffuz Haquq
Ahl-e-Sunnat also filed written statement. They submitted that the
forfeiture of the boot, was justified and hence the impugned
notification was lawful. The respondents fully supported the
Advocate-General on the abovementioned contentions.
The Advocate-General argued that the notification was not vague.
The action was taken under section 39 of the Ordinance because
the book came within the mischief of section 24(1)( j ) of the
Ordinance. This was sufficient ground to proceed against the
petitioner. The Government were satisfied that the book created
feelings of enmity, ill-will and hatred between different sects of
citizens of Pakistan. In support of this the Advocate-General
submitted that there were public demonstrations when the book
came is the market. That created law and order problem. The
Government, as such, had no option but to forfeit the book.
According to the Advocate-General, the author had not only
created feelings of enmity, ill-will and hatred between different
sects of citizens of Pakistan, but he also caused irreparable
damage to the name and reputation of renowned Sufia-i-Ikram.
The Advocate-General, during his arguments, referred pages 483,
484, 507, 508, 509, 517, 518 and 519 of the book. He argued that
these pages are really offensive. While summing up his
contentions the Advocate General submitted that according to him
the entire book was objectionable.
The learned counsel for the respondents and others supported the
Advocate-General on this ground as well. They also drew my
attention to pages 9, 10, 13, 14, 69, 72, 73, 74, 78, 80, 86, 269
and 270. Certain portions on these pages, according to them,
were highly objectionable. They relied on two decided casesMuhammad Hayat v. The Crown (PLD 1951 FC15) and Syed
Saeed Hassan v. Pyar AU and 7 others (PLD1976SC6).
Both, the Advocate-General and the counsel for the other
respondents, took up the position that it rested exclusively with the
Government to decide as to whether there was enough material
which created feelings of enmity, ill-will and hatred and brought
the matter within the mischief of section 24(1)(j ). According to
them, the test was subjective and it wholly vested with the
Government. This Court was not competent to probe into the
matter and to examine the material which the Government
considered fit to pass the impugned notification.
The preamble of the Ordinance shows that its purpose is to
amend and consolidate the law relating to press and publication. It
supersedes all previous statutes regarding the printing presses,
newspapers, books and other publications.
The relevant portion of the Ordinance for the purposes of this
case starts from Part IV, which deals with the control of printing
presses and newspapers. Section 24(1)(j ) deals with the power to
close down press and forfeit security in different cases as
mentioned in clauses (a) to (o) of its subsection (1).
Thereafter Part VI is relevant. It contains special, provisions
regarding the seizure of certain documents containing words,
signs or visible representations of the nature described in
subsection (1) of section 24, referred to above.
There is yet another important provision. That is explanations
attached to section 24(1). It has four explanations. The relevant is
Explanation 4, which is to the following effect;
"Statements and comments made without malicious intention, for
the purpose of helping or advocating the progress of any Province
or any region or part of Pakistan, or the furtherance of its
legitimate interests, or for securing removal of any factors tending
to create or excite enmity, ill-will or hatred shall not be deemed to
be of the nature described in clause ( j )."
It is in the light of these provisions that I have to decide about the
vires of the impugned notification.
The first question to be considered in this sequence is whether it
is sufficient in law to simply reproduce the wording of section
24(1) (j ), as it appears in the impugned notification, and on the
basis of it action is to be taken .under section 39 in the form of
forfeiture. The proposition appears to be a simple one but as a
matter of fact it is very complicated and even the answer is not so
easy.
As already observed, the Government of Punjab did
not file any written statement. It simply relied on the reply,
comments signed by the Advocate-General. This reply/comments
is/are not supported by any affidavit of the Government. It contains
no specific paragraph which according to the Government brings
the book within the mischief of section 24(1) (j): It was only at the
Bar that the Advocate-General referred to above-mentioned pages
and on the basis of that he tried to justify the impugned notification.
In the case of Mahmud Ahmad Abbasi v. The Administrator of
Karachi (supra) referring to the averments of the affidavit filed on
behalf of the respondent in that case, "it seems that the book in
question was deliberately written and published to create hatred
between Shias and Sunnis sections of Muslim community in
Pakistan", Full Bench of the High Court observed
" . . but in the first place it is the order itself which must contain
the ground of forfeiture and not the affidavit filed in support of
that order, and even in the affidavit all that is slid is that the
purpose of the writing of the book seemed to be to create
hatred."
In this very sequence I would like to refer to the decision of
`Musawaat' Ltd., Karachi v. Secretary Government of Sind, Home
Department (P L D 1980 Kar. 71). In that case, the petitioner
had challenged order, dated 25-11-1978 of the Provincial
Government in exercise of powers conferred on it by subsection (1)
of section 27 of the Sind Press and Publications Ordinance, 1963
directing the publisher of the Daily to deposit security in the sum of
Rs. 20,000 with the District Magistrate (South), Karachi. Before
passing the order the Government had issued a show-cause
notice. The Division Bench, after examining the provision of section
24 of the Press & Publications Ordinance, observed as under :"The section clearly provides that the Government has to state
or describe in an order under this section "the words, signs or
visible representations" which in its opinion attract the clauses
reproduced above."
Similarly, in the case of Sultan Muhammad v. Government of
West Pakistan through Home Secretary (Government of W.
Pak.), Lahore (P L D 1976 Lah. 585), it was observed:
"The impugned order suffers from another weakness as well.
The objectionable portions of the books were not specified in
the show cause notice, and in the absence of such a
specification
the
notice
became
"insufficient
and
unenforceable."
I have gone through the decisions cited by the learned counsel
for the respondents in Muhammad Hayat v. The Crown and Saeed
Hassan v. Pyar Ali and 7 others (supra). These are not applicable
to the present case. Former was a case where the question
involved was the satisfaction of the Officer arresting the detenu in
that case. The Court observed that the satisfaction of the officer
ordering the arrest must be taken to be subjective satisfaction. The
latter was an election matter wherein the Supreme Court dealt with
the expression "satisfaction".
The argument of the learned Advocate-General that it is entirely fore
the Government to decide as to whether an action is called for under
section 24(1) (j) and the Government decision in this case is final, is
devoid of force. In order to determine the vires of the notification the
action of the Government is subject to judicial review. It becomes all the
more necessary when an aggrieved party takes the plea of mala fide.
The only material which the Government has placed on record
is the reply/comments. I have gone through it very minutely. I have
not come j across anything substantial in it from which it can be
inferred that there were good grounds, or for that matter the
Government took into consideration certain portions or passages
from the book which justified the impugned notification.
Reverting to Explanation 4, referred to above, I think it
becomes all the more necessary not only to provide grounds, but
also to give an opportunity to the person concerned to place his
case before the Government. Explanation 4, in my opinion, can
either be taken as an exception or a defence to section 24(1) ( j ).
In the absence of any specific grounds I have no hesitation in holding
that the impugned notification is without lawful authority and as such of
no legal effect. I do this very reluctantly because I am sure that if the t
Government had taken necessary precaution to state the grounds
referring to the objectionable passages and complied with other legal
formalities the result of this petition would have been otherwise.
Since this petition has succeeded on technical ground, I don't
think it necessary to deal with the other contentions raised by the
parties.
The petition is accepted. No order as to costs.
M. Z. M.
Petition accepted.
2003 C L D 1531
[Karachi]
Before Mushir Alam, J
PAKISTAN DRUG HOUSE (PVT.) LIMITED---Plaintiff
Versus
RIO CHEMICAL COMPANY and another---Respondents
Suit No.677 of 2001, decided on 23rd May, 2003.
(a) Trade Marks Act (V of 1940)------Ss.2(1)5 & 21---Trade Marks Rules, 1963 Fourth Sched.---Copyright
Ordinance (XXXIV of 1962), Ss.42, 23 & 3---Patents and Designs Act (II of
1911), S.12---Registration of trade mark, copyright and patent and
design---Effect.
`Trade mark' is registrable in respect of some vendible goods in any' of the 34
classes detailed in 4th Schedule to the Trade Mark Rule. Trade mark, in fact,
is relatable to or associated with any vendible goods. Such vendible goods
acquire special significance when same are associated or reputed to be
associated with any trade mark, such goods in commercial parlance may be
referred as "Branded good". Indeed Trade mark, Copyright, a Patent and
Design give monopolistic right to the registered owner thereof in the sense that
such right holder has right to use and exploit such property to the exclusion of
others.
However as far as trade marks are concerned such are meant to distinguish
the goods of owner of the mark whether registered (or otherwise like prior
user) from that of the other manufacturers or producers of goods. Such
distinction is for the benefit of consumer of such goods, though it also benefits
the manufacturers and producers of such goods as well. There is no
corresponding provision to section 5 of the Trade Marks Act, under the
Copyright Ordinance 1962. Copyright in terms of section 3 of the Ordinance,
1962 is an exclusive right in relation to literary, dramatic, musical, artistic work,
in any tangible medium of comprehension either audio or visual in any form
that could be copied reproduced, multiplied, communicated, transmitted,
repeated, broadcast, telecasted, adopted in any form. Generally artistic work
could be protected under the Copyright Ordinance, 1962. Copyright in such
artistic work is not necessarily or directly associated with any vendible goods
unless of course same is used or proposed to be used and is desired to be
used for some vendible goods then in terms of section 14 of the Trade Marks
Act, 1940 same are required to be registered as such. From the scheme of the
Copyright Ordinance it appears to protect "copyright" in original work, by itself
it is not relatable or associated with any vendible goods. The holder of such
copyright in artistic work has exclusive right to produce and multiply such work.
In terms of section 23 of the Copyright Ordinance, 1962 the holder of a
copyright has exclusive right to reproduce the work in any form, to publish, to
perform, to translate, to communicate, broadcast, telecast, perform, adopt.
From the scheme of the Copyright Ordinance, 1962 it appears that such
copyright work independently is capable of reproduction and reproduced copy
is vendible independently and individually. It does not have any nexus with any
other separate and independent vendible goods unless said artistic work
otherwise is also used as a trade mark under the Trade Marks Act as
discussed, above.
(b) Trade Marks Act (V of 1940)--------S.21---Exclusivity of use of a registered trade mark in relation to any
vendible goods in respect of which the same was registered---Conditions.
Section 21 of the Trade Marks Act, 1940 confers exclusivity of use of a
registered trade mark in relation to any vendible goods in respect of which it is
registered. Such exclusivity to use the registered mark can be gauged from the
language of section 21 of the Act of 1940. Once it is demonstrated that a
person is registered holder of a mark exclusivity is presumed. However, such
exclusivity is subject to certain conditions namely (a) any condition or limitation
entered on register at the time of registration by the Registrar as provided for
under section 22; (b) prior user of the mark irrespective whether the same is
registered or not as provided for tinder section 25; or (c) where the use of the
name and description of the goods is used bona fide by a person of his name,
place of business either of himself or of his predecessors, or, (d) honest and
concurrent user of mark in terms of section 10(2). Defence based on any of the
considerations set out above, may be considered formidable statutory defence
against claim of infringement or passing off.
(c) Trade Marks Act (V of 1940)--------S.14---Any decision rendered in a collateral proceedings will not prejudice
or affect the rights of either the plaintiff or of the defendants an proceedings
before the Registrar, Trade Marks.
(d) Trade Marks Act (V of 1940)------S.21---Registration of trade mark---Disclaimer---When one or more part of a
mark were subject to disclaimer then the subject-matter of registration would
be distinctive manner, get-up and colour scheme in which each of the
constituting disclaimed parts or portions of mark were placed and arranged to
give it the same distinction from the other mark using the same disclaimed part
or portion of competing goods---Registered holder of trade mark, who had
disclaimed, any of the features of the mark either in word, device or get-up or
where such feature was claimed to be common to trade whatever the case
may be---Holder of the mark may claim monopoly in the manner in which such
mark, device, word or any combination thereof was put to use to distinguish his
product from the others---Using a copyright material as a substitute for the
trade mark was not the intent and purpose of Copyright Ordinance, 1962--Such copyright material independently could not be used or associated with
any vendible or saleable goods unless, of course, such copyright was
registered under the Trade Marks Act, 1940---Principles.
(e) Copyright Ordinance (XXXIV of 1962)------S. 39---Trade Marks Act (V of 1940), S.21--- Using a copyright material as a
substitute for the trade mark was not the intent and purpose of Copyright
Ordinance, 1962--Such copyright material independently could not be used or
associated with any vendible or saleable goods unless, of course, such
copyright was registered under the Trade Marks Act, 1940.
(f) Copyright Ordinance (XXXIV of 1962)------S.39---Gross misuse of registration of artistic work or other material under
the Copyright Ordinance, 1962 by the unscrupulous traders with covert object
deprecated by the High Court---High Court desired the amendment to be made
in S.39, Copyright Ordinance, 1962 in view of guidelines suggested in the
judgment.
The Registration of artistic work or other material under the Copyright
Ordinance, 1962 is being grossly misused by unscrupulous traders with covert
object.
Such persons and traders have transgressed all moral values, they are not
ashamed of even adopting artistic work in internationally reputed and world
renowned/brand names. Such foreign artistic works which otherwise, are
subject-matter of trade mark, are got registered under the Copyright
Ordinance, 1962. Such practice not only is seriously tarnishing image of our
country but at the same time Copyright Law is being used as a cloak to usurp
goodwill of holder of trade mark.
Due amendment has been made in section 39 of the Copyright Ordinance,
1962 and a proviso has been added to it.
From bare perusal of the proviso added to section 39, it appears that only
objections are invited through publication in newspapers. Experience shows
that unscrupulous traders get the artistic work sought to be copyrighted
published in very innocuous newspapers having hardly any circulation. It
appears that the proviso added to section 39 of the Ordinance, 1962 is not
sufficient to check the malpractice and abuse of Copyright Ordinance.
Such tendency was effectively checked in India where a proviso was added as
far back as in 1983, to section 45 of the (Indian) Copyright Act, 1957, which
reads as follows:
Provided that in respect of an artistic work which is used or is capable of being
used in relation to any goods, the application shall include a statement to that
effect and shall be accompanied by a certificate from the Registrar of Trade
Marks referred to in section 4 of the Trade and Merchandise Marks Act, 1958
(43 of 1958), to the effect that no trade mark identical with or deceptively
similar to such artistic work has been registered under that Act in the name of
or that no application has been made under that Act for such registration by
any person other than the applicant.
The proviso added-to the corresponding provision in Indian Copyright Act
appears to be more effective in checking the menace of such abuse of
copyright. The law makers may consider amending section 39 of Copyright
Ordinance, 1962 in line with proviso to section 45 (Indian) Copyright Act, 1957.
(g) Trade Marks Act (V of 1940)-----S.21---Civil Procedure Code (V of 1908), O.XXXIX, Rr.1 & 2---Interim
injunction---Plaintiff had made out prima facie case that they were the
registered holder of subject trade mark in terms of S.21 of the Trade Marks
Act, 1940 to the exclusion of others---Application of plaintiff under O.XXXIX,
Rr.1 & 2 was allowed accordingly.
Salim Ghulam Hussain for Plaintiff.
Shakeel Abid and Ch. Tanveer Amjad for Defendants.
ORDER
In this suit for infringement of Trade Mark Passing off Perpetual Injunction.
Rendition of Accounts and Damages plaintiff has also filed an application
under Order 39, rules. 1 and 2, C.P.C. being C.M.A. No.4000 of 2001 seeking
ad interim orders to restrain the defendant from infringement of its Registered
trade mark during pendency of the suit. It was inter alia, contended by the
learned counsel for the plaintiff, that the subject mark "Aletris Cordial" with
device of a feminine hand holding a bottle in a distinctive get-up and design in
yellow and black colour scheme, was originally registered in the name Rio
Chemical Inc., U.S.A. on 24-12-1966 in respect of a pharmaceutical
preparation. It is asserted that the plaintiff was marketing such product of the
principal, in Pakistan. The plaintiff acquired the said mark from their principal
under assignment deed dated 21-5-1993. Plaintiff independently applied and
obtained registration of the said mark in its name vide Registration No.121513
dated 23-8-1993. It is stated by Mr. Saleem Ghulam Hussain, learned counsel,
for the plaintiff that, several notice of caution and warning were got published
in various newspapers against counterfeit product under the similar name and
get-up as is evident from annexed as F/6 to F/14. It is stated that the
defendants secretly managed to obtain the copyright in respect artistic work of
the label in respect of subject mark of plaintiff under the Copyright Ordinance,
1962. Such registration was successfully impugned by the plaintiff before the
Copyright Board at Karachi. The Copyright Board vide its order dated
29-11-1999 directed that the entry existing in favour of the defendants, herein
be removed. Certain observation as to the assignment deed relied upon by the
plaintiff, were also made. Order of the Copyright Board, was challenged by the
defendants before the Lahore High Court in F.A.O. No.100 of 2000. The
appeal was dismissed. It was, therefore, contended by Mr. Saleem Ghulam
Hussain that in terms of section 21 of the Trade Marks Act the plaintiff has
exclusive right to use the subject mark. Copyright, even otherwise, according
to him, does not confer any right on the defendants to appropriate mark of the
plaintiff. In support of his contention he has relied upon Tapal Tea (Pvt.) Ltd. v.
Shahi Tea Company 2002 CLD 1113. It was further contended that
comparison of the mark and label of the plaintiff clearly demonstrate that the
defendants have copied the entire get-up, design and colour scheme of the
plaintiff. It was urged that in terms of section 21 of the Trade Marks Act.
Plaintiff exclusive right to use the same, infringement cannot be allowed. He
has relied on Mehran Ghee Mill (Pvt.) Ltd. v. Chilan Ghee Mills (Pvt.) Ltd. 2001
SCMR 967; Western Brand Tea, Karachi v. Tapal Tea (Pvt.) Ltd. PLD 2001
SC14; Messrs Tri-Star Industries (Pvt.) Ltd. v. Messrs Trisa Bursten Tabrik
A.G. 1999 YLR 638; Jamshed Aslam Khan v. Mrs. Azra Jawed and 2 others
1995 CLC 436 and The Welcome Foundation Limited v. Messrs Karachi
Chemical Industries (Pvt.) Limited 2000 YLR 1376.
It was further urged that trade mark once registered with the Trade Mark
Registry gives the holder of such registered mark a right to use the same to
the exclusion of other such right are not defeated by getting the said mark
registered under any other law, as was claimed in this case. It is further
asserted the defendants' copyright has since been struck down, defendant
cannot be allowed to use said mark for its product. In support reliance is
placed on judgment from the Indian jurisdiction Messrs Jinda Industries
Limited v. Messrs Samaria Steels Limited 1993 PTC (Dehli) 129; Messrs
Hindustan Pencils Pvt. Ltd. v. Messrs India Stationery. Produces Co. and
another .1989 PTC (Dehli) 61 and Prince Rubber Industries v. K. S. Rubber
Industries 1983 PTC 34.
Learned counsel for the defendants Messrs Shakeel Abid & Ch. Tanveer
Amjad, Advocates contended that the plaintiff has no locus standi to file the
suit. It was asserted that the plaintiff claims right to said trade mark on the
basis of Assignment Deed which, according to the learned counsel, has been
challenged before the Registrar, Trade Marks, same is pending decision. Mr.
Shakeel has further drawn my attention to page 43, of the file whereby, the
defendants had disclaimed the name of "Aletris Cordial" and it was pointed
that disclaimer was also made in the device of bottle. It was, therefore, urged
that plaintiff cannot claim exclusivity either in the name "Aletris Cordial" or in
the device of bottle sought to be protected through injunctive order. In support
he has placed reliance on Muhammad Abid and 2 others v. Nisar Ahmed 2000
SCMR 780; United Bank Ltd. through its President and 3 others v. Muhammad
Hafeez Shakir and 32 others 1998 CLC 1822; Khawaja Abdus Subhan v.
Khurshid and 11 others 2000 YLR 2898 and Shahjehan Khan and others v.
Muhammad Tariq 2002 CLC 571.
It was further asserted that, despite the fact defendant lost before Copyright
Board as well in High Court, the question as to the veracity of the assignment
is still sub judice before the Registrar, Trade Marks. He therefore, urged that,
weakness of the defence cannot be considered while considering the plaintiff's
case who is required to stand on his own leg. In support he relies on Mehtab
Khan and others v. Faiz Muhammad PLD 2003 Peshawar 46 and Muhammad
Akram alias Akan v. Mst. Pathani through Legal Heirs and 5 others 2001 MLD
1030. It was asserted by the learned counsel for the defendant that in Dabur
India Ltd. v. Hilal Confectionery (Pvt.) Ltd. PLD 2000 Kar. 139 protection to
wrapper was given by this Court which was copied by the defendants therein
from foreign sources.
Mr. Saleem Ghulam Hussain learned counsel for the plaintiff exercising right of
rebuttal contends that the artistic work has been defined under section 2(c),
Copyright Act, which excluded the label, whereas, correspondingly "mark" as
defined (under section 2(f) of the Trade Marks Act) includes label, he
therefore, urged that the use of the label registered to the plaintiff under the
Trade. Marks Act cannot be exploited by the defendants. Mr. Saleem has also
placed reliance on commentary on "Intellectual Property Law" by P.
Narayanan, page 164 (Eastern Law House Publication, 1990 Edition).
I have heard the arguments and perused the record.
The defence in cases of Trade Mark Infringement and passing off that has
gained popularity in the recent time is the registration of artistic work under the
Copyright Ordinance, 1962 as well, as registration of drugs under the Drugs
Act. The purport, scheme and object of both the Trade Marks Act, 1940, arid
the Copyright Ordinance, 1962 and so also the Drugs Act are entirely different.
All the enactment operate and regulate different sphere of activity presently
this case is confined to Trade Marks Act and Copyright Ordinance. Definition
of "trade mark" as per section 2(1) of the Act, 1940 is as follows:-(1) "trade mark" means a mark used or proposed to be used in relation
to goods for the purpose of indicating or so as to indicate a connection
in the course of trade between the goods and some person having the
right, either as proprietor or as registered user, to use the mark whether
with or without any indication of the identity of that person;
Section 5 of the Trade Marks Act reads as follow:-"5. Registration to be in respect of particular goods:--(1) A trade mark
may be registered only in respect of particular goods or classes of
goods.
(2)
Any question arising as to the class within which any goods fall shall be
determined by the Registrar whose decision in the matter shall be final.
From bare perusal of definition of `trade mark' section 5 and other provision of
the Act of 1940 what appears to be the scheme of the Trade Marks Act is that
`trade mark' is registrable in respect of some vendible goods in any of the 34
classes detailed in 4th Schedule to the Trade Marks Rules. Trade mark, in
fact, is relatable to or associated with any vendible goods. Such-vendible
goods acquires special significance when same are associated or reputed to
be associated with any trade mark, such goods in commercial parlance may
be referred as "Branded goods". Indeed Trade mark, Copyright, a Patent and
Design gives monopolistic right to the registered owner thereof in the sense
that such right holder has right to use and exploit such property to the
exclusion of others (See section 21 of Trade Marks Act, section 42 Copyright
Ordinance, section 12 Patent Act).
However, as far as trade marks are concerned such are meant to distinguish
the goods of owner of the mark whether registered (or otherwise like prior
user) from that of the other manufacturer or producer of goods. Such
distinction is for the benefit of consumer of such goods, though it also benefits
the manufacturers and producers of such goods as well. There is no
corresponding provision to section 5 of the Trade Marks Act, under the
Copyright Ordinance, 1962. Copyright in terms of section 3 of the Ordinance,
1962 is an exclusive right in relation to literary, dramatic, musical, artistic work,
in any tangible medium of comprehension either audio or visual in any form
that could be copied, reproduced, multiplied, communicated transmitted,
repeated, broadcasted telecasted, adopted in any form. Generally ' artistic
work could be protected under the Copyright Ordinance, 1962. Copyright in
such artistic work is not necessarily or directly associated with any vendible
goods unless o: course same is used or proposed to be used and is desired to
be used for some vendible goods then in terms of section 14 of the Trade
Marks Act, 1940 same are required to be registered as such. "Copyright" from
the scheme of the Copyright Ordinance appears to protect "copyright" in
original work, by itself it is not relatable or associated with any vendible goods.
The holder of such copyright in artistic work has exclusive right to reproduce
and multiply such work. In terms of section 23 of the Copyright Ordinance
1962 the holder of a copyright has exclusive right to reproduce the work in any
form, to publish, to perform, to translate, to communicate, broadcast, telecast,
perform adopt. From the scheme of the Copyright Ordinance, 1962 it appears
that such Copyright work independently is capable of reproduction and
reproduced copy is vendible independently and individually. It does not have
any nexus with any other separate and independent vendible goods unless
said artistic work otherwise is also used as a trade mark under the Trade
Marks Act as discussed above.
Section 21 of, the Trade Marks Act confers exclusivity of use of a registered
trade mark in relation to any vendible goods in respect of which it is registered.
Such exclusivity to use the registered mark can be gauged from the language
of section 21 of the Act of 1940. Once it is demonstrated that, a person is
registered holder of a mark exclusivity is presumed. However, such exclusivity
is subject to certain conditions namely (a) any condition or limitation entered
on register at, the time of registration by the Registrar as provided for under
section 22, (b) prior user of the mark irrespective whether the same is
registered or not as provided for under section 25, (c) where the use of the
name and description of the goods is used bona fide by a person of his name,
place of business either of himself or of his predecessors, or, (d) honest and
concurrent user of mark in terms of section 10(2) ibid. Defence based on any
of the consideration set out above, may be considered formidable statutory
defence against claim of infringement or passing off.
Examining the defence raised by the learned counsel for the defendant, firstly
that bona fide registration of the subject mark on the basis of assignment has
been challenged, same is sub judiced before the Registrar. It was further
urged that Copyright Board had expressed doubts in respect of assignment
deed. It may be observed that similar objections were considered by a learned
Bench of the Lahore High Court in F.A.O., No.100 of 2000 (supra) dealing with
similar objection it was held in para. 12 as follows:-"That trade mark was first registered in favour of Rio Chemical
Company Inc., U.S.A. on 24-12-1966 under which the said company
had exclusive right to use the word "Aletris Cordial" and device of the
bottle as shown in the presentation on the form of application. It is not
disputed that it was registered on 'Q4-12-1966 in favour of Rio
Chemical Company Inc., U.S.A. The said trade mark was assigned in
favour of respondent No.1 which was registered on 5-6-1993. By virtue
of section 23 read with section 35 of the Trade Marks Act, registration of
a trade mark, is prima facie evidence of the validity of the original
registration of the trade mark and all subsequent assignments and
transmissions thereof. Therefore, I am of the view that the learned
Copyright Board could not have gone behind the assignment in favour
of respondent No.1 duly registered under the provisions of the Trade
Marks Act. The question whether the assignment was valid could only
be gone into in the proceedings under the Trade Marks Act but could
not have been collaterally impeached."
It was further observed that:-"I may clarify here that these observations are being made for a limited
purpose i.e. whether respondent No. 1 was or was not an aggrieved
person. Registration of the Trade Mark with the disputed label) design
or its assignment in favour of respondent No.1 is not being adjudicated
in this appeal because it is beyond the scope of this appeal."
I am also of the view that any decision rendered in a collateral proceeding will
not prejudice or effect either the rights of the plaintiff nor of the defendants in
proceeding before the Registrar, Trade Marks.
Adverting to other contention of the learned counsel for the defendant that
there was a disclaimer in respect of the name of the product and bottle as
depicted in the registered mark. He has drawn my attention to plaintiff's
certificate of registration dated 24-12-1966 at page 43 of Court file, which
reflects registration of mark subject to disclaimer in following terms:-"Registration of this Trade Mark shall give no right to the exclusive use
of words 'Aletris Cordial' and device of bottle except substantially as
shown on the form of application."
(Underlined added for emphasis) above was referred to urge that plaintiff can
neither claim any exclusive right to use the name "Aletris Cordial" nor in the
devise of bottle. He therefore, contended that plaintiff cannot bring out any
action for infringement in respect of disclaimed part or portion of mark i.e.
name and devise of bottle, which could be used by any one in the same trade.
Arguments indeed are ingenious. From the disclaimer as reproduced above it
is evident that disclaimer is with "Except substantially as shown in the form of
application” when one or more part of a mark are subject to disclaimer then
what may be subject-matter of registration is distinctive manner, get-up and
colour scheme in which each of the constituting disclaimed parts or portion of
mark are placed and arranged to give it same distinction from the other mark
using same disclaimed part or portion for competing goods indeed, the plaintiff
cannot claim exclusive right to the use of the name of the product i.e. "Aletris
Cordial" or devise of bottle used in the mark as such mark was registered
subject to disclaimer. There is no cavil to the proposition that a registered
holder of Mark, who had disclaimed, any of the feature of the mark, either in
word, device or get-up or where such feature is claimed to be common to trade
whatever the case may be. The holder of the mark may claim monopoly in the
manner in which such mark, device, word or any combination thereof is put to
use to distinguish his goods from the others. In this case the manner plaintiff
has used the combination of the word "Aletris Cordial" in semi-circular fashion
in a particular form of calligraphy over the picture of a feminine hand holding a
particular shape of bottle in a particular fashion all disclaimed parts, portion
and feature of the mark i.e. words and device of bottle and hand have been
placed in a particular fashion get-up and colour scheme use of all feature in
particular manner give the trade mark of the plaintiff a distinguishing impact.
Indeed, defendant could have used the words "ALETRIS CORDIAL" and or
device of bottle but not in the manner and fashion plaintiff has placed them in
their mark. When both the marks subject-matter of suit were examined it
appears that the defendant has not only copied the mark verbatim but has
even gone to an extent that they have also mentioned the name of the
American Company in their label. The defendants are carrying on business by
adopting the name of the Foreign Company, which gives an impression as if it
is a subsidiary, agent or representative of the Foreign Company. Plaintiff has
at least placed on record certain material to show that they had been importing
same good from Rio Chemical Inc. Company, U.S.A., various invoices have
been placed on record to substantiate their association with Rio Chemical,
U.S.A. Whereas the defendant appears to have simply pirated the mark of
plaintiff in verbatim by using same get-up, colour scheme arrangement of the
disclaimed parts in same manner and fashion. Since the defendant cannot
claim any right to use the said mark in relation to any goods. Defendants are
not marketing or selling the artistic work independently even otherwise
copyright in their favour has been struck down. What the defendants are
selling is a pharmaceutical preparation, right to use a registered mark could
only be claimed in respect of vendible good. Using a copyright material as a
substitute for the trade mark is not the intent and purpose of Copyright
Ordinance, 1962 such copyright material independently cannot be used or
associated with app vendible or saleable goods unless of course such
copyright is registered under the Trade Marks Act, 1940.
As observed above the registration of artistic work or other material under the
Copyright Ordinance, 1962 is being grossly misused by unscrupulous traders
with covert object.
Such persons and traders have transgressed all moral values, they are not
ashamed of even adopting artistic work in internationally reputed and world
renowned brand names such foreign artistic work which otherwise, are
subject-matter of trade mark are got registered under the Copyright Ordinance,
1962. Such practice not only seriously tarnishing image of our country but at
the same time Copyright Law is being used as a cloak to usurp goodwill of
holder of trade mark. In Tapal Tea (Pvt.). Ltd. 2002 CLD 1113 (supra) Court
was confronted with similar situation while repelling similar arguments as
urged by Mr. Shakeel in this case, it was held at page 1119, para. 10 as
follows:--
"10. As regards learned counsel for the defendant's contention that the
defendant's copyright in its logo and design would give the defendant
some justification as to the use of the same. In my opinion this cannot
be either sustained or allowed: The reason is very simple. Since the
defendant's copyright is quite similar to the earlier registered trade mark
of the plaintiff, condoning the former's use of its copyright would give
free reign to any unscrupulous person from adopting the mark/ design
which is already being used by another person to the detriment of the
latter. Such in my opinion is not the intention of the law and for that
matter could not, be the intention of the law. In this connection it would
be seen that perhaps the copyright obtained by the defendant which is
quite similar to the registered trade mark of the plaintiff in the first place
should not have been sanctioned by the Copyright Board. In fact is my
opinion there should be some provision whereby applications for
registration of a copyright could be advertised in order to invite objection
which would then be dealt with so as to avoid conflicts between an
earlier registered trade mark."
It may be noted, that as observed in the above referred case, due amendment
has been made in section 39 of the Copyright Ordinance, 1962.
Whereas our law makers in their wisdom had added following proviso to
section 39 of the Copyright Ordinance. 1962 (corresponding to section 45 of
Indian Act, 1951, 111 of 2000 (reported in PLD 2001 Central Statutes 289
(292):-"Provided that in the case of artistic works the Registrar shall not enter
the particulars of the work in the Register of Copyrights and shall not
issue a certificate of registration of the applicant unless within one
month of the filing of the application, or within such extended time as
the Registrar may determine, the applicant has advertised the work
itself in a newspaper as may be prescribed and sent two copies thereof
to the Registrar and unless within one month thereafter, or within such
extended time as the Registrar may determine, not exceeding two
months, the Registrar has not received any objection to the registration
of particular of the work in the Register of Copyrights."
From bare perusal of above, it appears that only objections are invited through
publication in newspapers. Experience shows that unscrupulous traders get
the artistic work sought to be copyrighted published in very innocuous
newspapers having hardly any circulation. It appears the proviso added to
section 39 of the Ordinance, 1962 is not sufficient to check the malpractice and
abuse of Copyright Ordinance.
Such tendency was effectively checked in India where a proviso was added as
far back as in 1983, to section 45 of the (Indian) Copyright Act, 1957, which
reads as follows:-[provided that in respect of an artistic wont which is used or is capable
of being used in relation to any goods, the application shall include a
statement to that effect and shall be accompanied by a certificate from
the Registrar of Trade Marks referred to in section 4 of the Trade and
Merchandise Marks Act, 1958 (43 of 1958), to the effect that no trade
mark identical with or deceptively similar to such artistic work has been
registered under that Act in the name of, or that no application has been
made under that Act for such registration by any person other than the
applicant].
The proviso added to, the corresponding provision in Indian Copyright Act
appears to be more effective in checking the menace of such abuse of
copyright. In my humble opinion law makers may consider amending section
39 of Copyright Ordinance, 1962 in line with proviso to section 45 (Indian)
Copyright Act, 1957.
Copy of this order may be sent to Ministry of Law, Justice and Parliamentary
Affairs, Government of Pakistan to consider proposing suggested amendment
to the law maker.
As discussed above plaintiff has made out prima facie case, they are the
Registered holder of subject trade mark, in terms of section 21 of the Trade
Marks Act, have right to use the subject trade mark to the exclusion of others.
Accordingly the application under Order 39, rules 1 and 2, C.P.C. is allowed.
Before parting with this order, it may be observed that any observation made
herein will not prejudice the case of defendant before the Registrar, Trade
Marks.
M.B.A./P-71/K
accordingly.
Order
2006 C L D 97
[Karachi]
Before Rahmat Hussain Jafferi, J
INDEPENDENT MEDIA--- Plaintiff
Versus
ALI SALEEM and anothers---Defendants
Suit No.956 of 2005, decided on 15th August, 2005.
(a) Copyright Ordinance (XXXIV of 1962)-----Ss.3(1)(a) & 56---Civil Procedure Code (V of 1908), O.XXXIX, Rr.1 &
2---Infringement of copyright---Interim injunction, grant of---Failure to fulfil
the conditions for the grant of interim injunction---Copyright in an idea,
legality of---Suit along with an application for obtaining interim injunction
under O.XXXIX, Rr.1 & 2, C.P.C. was filed by the plaintiff to restrain the
defendants from committing the act of piracy by producing, making,
releasing or copying the plaintiff's work---Claim of the plaintiff was based
on the fact that one of the defendants, who had been working with it in
developing an idea for a television programme, had subsequently, , in
collusion with the other defendant, infringed the copyright of the plaintiff
in the said programme---Contention of the defendants was that the
plaintiff did not have any copyright in the said programme as it was
conceived and developed by the defendants---Question before the Court
was whether there axis a copyright in the idea conceived by the plaintiff
to prepare the programme---Validity---An idea cannot be the subjectmatter of copyright---Copyright does not protect an idea, but only the
expression of the idea---Law does not recognize property rights in
abstract ideas and does not accord the author or proprietor, any
protection of his ideas, which the law does accord to the proprietor of
personal property ---Plaintiff had to show that it was the owner of the
copyrighted work and without such proof no copyright could be created in
his Plaintiff, in the present case, was even unable to prove that the idea
of the programme was conceived by one of its employees ---Plaintiff had
failed to prove prima facie case in its favour and it was found that great
inconvenience would be caused to the defendants if the injunction was
granted---Loss calculated by the plaintiff could be expressed in terms of
money, therefore, no irreparable loss would be caused to the p l a i n t i f f
the injunction axis refused---Conditions for the grant of interim injunction
having not been found not in favour of the plaintiff, the application was
dismissed.
Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693; Book
on Copyright 11th Edition; American Jurisprudence; Donoghus v. Allied
Newspapers Limited (1937) 3 All ER 503; Shipman v. R.K. O. Radio
Pictures (1808) 100 F. 2d 533; N.T. Raghunathan v. All India Reporter
Ltd., Bombay AIR 1971 Bom. 48 and R.G. Anand v. Delux Films AIR 1978
SC 1613 ref.
(b) Civil Procedure Code (V of 1908)------O.XXXIX, Rr.1 & 2--- Interim injunction, grant of---Conditions for grant
of interim injunction, non fulfilment of---Application for obtaining interim
injunction under O. XXXIX, Rr.1 & 2, C.P.C. was filed by the plaintiff to
restrain the defendants from committing the act of piracy by producing,
making, releasing or copying the plaintiffs work---Plaintiff failed to prove
prima facie case in its favour and it was found that great inconvenience
would be caused to the defendants if the injunction was granted---Loss
calculated by the plaintiff could be expressed in terms of money,
therefore, no irreparable loss would be caused to the plaintiff if the
injunction was refused---Conditions for the grant of interim injunction
having not been fulfilled by plaintiff, application for the grant of interim
injunction was dismissed.
Khurram Gul Ghori along with Ms. Shazia Tasleem for Plaintiffs.
Sajjad Ali Shah for Defendant No. 1.
Abid S. Zuberi for Defendant No.2.
ORDER
RAHMAT HUSSAIN JAFFERI, J.---The plaintiff is running a TV Channel
in the name of Geo from the year 2002. One of their programmes 'Hum
Sub Umeed Say Hain' was very popular in which the defendant No. 1, Ali
Saleem was imitating Benazir Bhutto, the then Prime Minister of Pakistan.
Therefore, a relationship was created between the plaintiff and defendant
No.1 which culminated in entering into an agreement dated 15-3-2004 by
which the defendant No.1 was appointed as Creative Writer. It is alleged
that in the month of June, 2004 the plaintiff conceived an idea of
introducing, producing, making, preparing and releasing a talk show under
the title 'Begum Nawazish Ali' and commenced working on it. The
defendant No.1 was given the sole task of writing the script of the said
programme. In addition to above, the defendant No.1 was also required to
perform in the said programme as a host under the get up of a lady
conducting interviews with different celebrities. After working for almost
over a year when the stage was finally set for commercial production of
the above said programme the defendant No.1 approached the plaintiff
and requested for enhancement of emoluments, Accordingly, another
agreement dated 12-7-2005 was executed between the parties. The
defendant No.1 was required not to divulge or utilize any confidential
documents or information belonging to the plaintiff to any of his customers
or associated concerns which may have come to his knowledge during
employment. On 2-8-2005 the plaintiff learnt through promotional
campaign of defendant No.2 that the defendant No. 1, in active
connivance and collusion with defendants No.2 has made arrangement for
the release of talk show under title 'Begum Nawazish Ali', which is an
exact copy of plaintiffs aforementioned work under title 'Begum. Nawazish
Ali', copyright whereof rests and vests with the plaintiff under the law for all
intents and purposes. It is alleged that the plaintiff has already
substantially invested into the development of said programme and if the
defendants are not restrained ,from committing the act of piracy by
producing, making, releasing or copying the plaintiffs work under the title
'Begum Nawazish Ali' the plaintiff would likely to suffer an irreparable loss
and injury hence the suit.
2. Along with the suit an application under Order XXXIX, rules 1 and 2,
C.P.C. was filed against the defendants for obtaining injunction restraining
the defendants from attempting to infringe the plaintiffs work under the title
'Begum Nawazish Ali' in any manner whatsoever by making, recording,
producing, releasing, airing, publishing, marketing and/or selling the same
till the disposal of the suit. The application was supported by affidavit. The
notice was served upon the defendants.
3. The defendant No.2 filed counter-affidavit in which they claimed
that they are operating a TV Channel in the name of "AAJ TV. The
defendant No.2 stated that the plaintiff does not have any right or
copyright in the concept of 'Begum Nawazish Ali', which has
exclusively been produced at huge expenses by the defendant No.2
with the defendant No. 1 playing the host for interviewing different
famous personalities. The script of the programme has been written
by Dr. Umar Adil. It is contended that the concept of 'Begum
Nawazish Ali', a talk show with different famous personalities was
conceived and developed by three persons namely: Dr. Umer Adil,
Nadeem Baig and Ali Saleem, the defendant No.1 on or about
December, 2003. The idea was that the defendant No. I dressed up
as a woman would play the character of Begum Nawazish Ali on TV
as host. The script writer would be Dr. Umer Adil and Nadeem Baig
would be the Producer/ Director. At that time all the three persons
were working freelance. In the month of November, 2004 Nadeem
Baig joined the defendant No.2 as Head of Entertainment
Department and thereafter presented the idea of the character
'Begum Nawazish Ali' to the management of the defendant No.2.
The defendant No.2 commissioned the project. In the month of
June, 2005 Nadeem Baig contacted the defendant No.1 as to
whether he was interested to play the host of the said show as per
original concept mutually developed by them. The defendant No.1
informed Nadeem Baig that he had resigned from the plaintiffs
organization on 13-6-2005 and handed over the resignation letter to
him duly acknowledged by the plaintiff Muhammad Ibrahim
Rahman. The defendant No.1 showed his keenness to host the
show. The defendant No.1 after resignation from the employment of
the plaintiff entered into an agreement with the defendant No.2. The
defendant No.2 at huge expenses and efforts commenced the
recording of the show "Nawazish Karam" with the defendant No.1
as the host. The defendant No.2 has already recorded four shows
and in the process of developing the same, the first show has been
recorded with Makhdoom Amin Faheem and Reema and the second
with Aitizaz Ahsan and Nirma. The programme is to be aired on 138-2005 as part of defendant No.2's grand entertainment package for
the 14th August celebration. On 4-8-2005 the defendant No.2
received the summons of the case and was astonished to see the
contents of the plaint. The defendant No.2 has denied the
allegations of the plaintiff. In his support he has filed the affidavit of
Nadeem Baig confirming the concept of programme of "Nawazish
Karam" that, it was conceived by him in conjunction with Dr. Umer
Adil and Ali Saleem.
4. The defendant No.1 also filed counter-affidavit denying the allegations
of the plaintiff. He took the plea that in December, 2003 after discussing
with Nadeem Baig and Dr. Umer Adil they conceived an idea of 'Begum
Nawazish Ali' which was to be written by Dr. Umer Adil and directed by
Nadeem Baig. The defendant No.1 was working with the plaintiff where he
was imitating the role of Benazir Bhutto as the said role was being played
by him since 1998 as freelance. He has supported the case of defendant
No.2 and further stated that after resigning from the services of defendant
No. 1, he joined the defendant No.2 under an agreement, but
subsequently he entered into an agreement with the plaintiff on 12-7-2005
to continue the programme of "Hum Sub Umeed Say Hain", by which he
was allowed to complete his contractual obligations with other persons. He
has also denied that the concept or idea of 'Begum Nawazish Ali' was that
of the plaintiff.
5. I have heard the parties' Advocates. Perused the record of this case
carefully.
6. The learned Advocate for the plaintiff has stressed upon the fact that
idea of the programme 'Begum Nawazish Ali' was conceived by the
plaintiff through their employee Badar Ikram. The programme is owned by
the plaintiff, therefore, the plaintiff has copyright within the meaning of
section 3(1)(a) of Copyright Ordinance, 1962. Whereas learned Advocates
for the defendants have argued that the concept of 'Begum Nawazish Ali'
was conceived by three persons viz. Dr. Umer Adil, Nadeem Baig and Ali
Saleem, defendant No. I in the month of December, 2003; that Badar
Ikram did not conceive the said idea and that the arguments of the learned
Advocate for the plaintiff are contrary to the averments made in the plaint.
7. The questions involved in the matter revolve around the copyright rights
in respect of "idea" conceived in preparing the talk show programme of
'Begum Nawazish Ali'.
8. Before we enter into discussion on factual aspect of the suit it
will be advantageous to examine the legal aspect of such right. In
the case of Computer Associates International, Inc. v. Altai, Inc.
reported in 982 F.2d 693 it has been held that it is a fundamental
principle of copyright law that a copyright does not protect an idea,
but only the expression of the idea. On the same subject Copinger,
in his book on Copyright 11th Edition, pointed, out that what is
protected is not the original thought, but expression of thought in a
concrete form. In this connection the author makes the following
observations based on the case law:-"What is protected is not original thought or information, but the
original expression of thought or information in some concrete form.
Consequently, it is only an infringement if the defendant has made
an unlawful use of the form in which the thought or information is
expressed. The defendant must, to be liable, have made a
substantial use of this form; he is not liable if he has taken from the
work the essential ideas, however, original, and expressed the idea
in his own form, or used the idea for his own purposes."
9. In the American Jurisprudence following 'observations are made;-"Generally speaking, the law does not recognize property rights in
abstract ideas and does not accord the author or proprietor, the
protection of his ideas, which the law does accord to the proprietor
of personal property."
"In cases involving motion pictures or radio or television
broadcasts, it is frequently stated that an idea is not protected by a
copyright or under the common law, or that there is no property
right in an idea, apart from the manner in which it is expressed."
"When an idea is given embodiment in a tangible form, it becomes
the subject of common-law property rights which are protected by
the Courts, at least when it can be said to be novel and new."
10. In the case of Donoghus v. Allied Newspapers Limited (1937) 3 All ER
503 it was pointed out that there was no copyright in an idea and in this
connection Farwell, J. observed as follows;-"This, at any rate, is clear, and one can start with this beyond all
questions that there is no copyright in an idea, or in ideas. If the
idea, however, brilliant and however, clever it may be, is nothing
more than an idea, and is not put into any form of words, or any
form of expression such as a picture or a play, then there is no
such thing as copyright at all. It is not until it is (if I may put it in that
way) reduced into writing, or into some tangible form, that you get
any right, to copyright at all, and the copyright exists in the
particular form of language in which, or, in the case of a picture, in
the particular form of the picture by which, the information or the
idea is conveyed to those who are intended to read it or look at it."
11. In the case of Shipman v. R.K. O. Radio Pictures (1808) 100 F. 2d 533
while holding that an idea cannot be the subject of copyright great stress
was laid on the impression which the audience forms after seeing the
copy. In this connection, Manton, J. observed as follows:-"The Court concluded that it was the idea or impression conveyed
to the audience which was the determining factor, and since the
impressions were the same, held there was an infringement. From
this case stemmed the modern law of copyright cases, with the
result that it is now held that ideas are not copyrightable but that
sequence of events is; the identity of impression must be capable
of sensory perception by the audience."
12. In the case of N.T. Raghunathan v. All India Reporter Ltd., Bombay
AIR 1971 Bom 48 it was held that copyright law did not protect ideas but
only the particular expression of ideas.
13. The Supreme Court of India in the case of R.G. Anand v. Delux Films
AIR 1978 SC 1613, after considering the case-law on the subject including
the above cases, observed as under:-"Thus, on a careful consideration and elucidation of the various
authorities and the case-law on the subject discussed above, the
following propositions emerge:-(1) There can be no copyright in an idea, subject-matter, the plots or
historical or legendry 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.
(2) 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 copyrighted 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.
(3) One of the surest and the safest test to determine whether or not there
has been a violation of copyright is to see if the reader, spectator or the
viewer after having read or seen both the works is clearly of the opinion
and gets an unmistakable impression that the subsequent work appears to
be a copy of the original.
(4) 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.
(5) 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.
(6) As a violation of copyright amounts to an act of piracy it must be
proved by clear and cogent evidence after applying the various tests laid
down by the case-law discussed above.
(7) Where, however, the question is of the violation of the copyright of
stage play by a film Producer or a Director the task of the plaintiff
becomes more difficult to prove piracy. It is manifest that unlike a stage
play a film has a much broader perspective, wider field and a bigger
background where the defendants can by introducing a variety of incidents
give a colour and complexion different from the manner in which the
copyrighted work has expressed the idea. Even so, if the viewer after
seeing the film gets a totality of impression that the film is by and large a
copy of the original play, violation of the copyright may be said to be
proved."
14. Keeping in view principles laid down in the above mentioned
authorities I have examined the case. The case of the plaintiff is that the
idea was conceived by their employee Badar Ikram. In support of their
version they have filed the affidavit of Ameer Shah Khan who stated in the
affidavit that the concept of programme lay out was originally conceived by
Mr. Badar Ikram of his company. In the end of the affidavit it has been
mentioned that the statement is true, correct to the best of his knowledge
and belief. From the above para. it is clear that information was conveyed
to Ameer Shah Khan, but the source of information has not been
mentioned. As such, it appears that the abovementioned statement of
Ameer Shah Khan comes within the ambit of hearsay evidence, which is
inadmissible in evidence. However, it is the case of the plaintiff that Badar
Ikram is their employee, but it is surprising to note that the plaintiff has not
filed the affidavit of Badar Ikram to show that the idea of the programme
was conceived by him. There is nothing on record which can prove or
support the above contention of the plaintiff.
15. In this type of case the plaintiff has to show that he is owner of the
copyrighted work and without such proof no copyright, can be created in
favour of the plaintiff. Whereas the defendant No.2 has filed the affidavit of
Nadeem Baig and Ali Saleem. They both are unanimous that the idea of
the programme was conceived by them along with Dr. Umer Adil in the
year 2003. As such, there is sufficient material in support of H contention of
the defendant's plea at this stage.
16. During the course of argument a specific question was asked from the
learned Advocate for the plaintiff as to whether any script was written or
any programme of the disputed programme was prepared to which he
replied in negative. Thus, the plaintiff has neither prepared any script of
the programme nor prepared any episode of such programme. It appears
that still it is at the stage of idea.
17. Nevertheless, learned Advocate for the plaintiff has pointed out
towards document annexure B/ 1 by arguing that it was a concept paper of
`Begum Nawazish Ali'. A perusal of this document reveals that it is a copy
of a print taken out from a computer. It is not on the writing pad of the
plaintiff nor it is signed by any person. With regard to this document the
case of the defendants 1 and 2 is that this paper was prepared by the
defendant No.2 and it was delivered to the plaintiff by the defendant No.1
at the time of entering into agreement dated 12-7-2005. Thus, plaintiff has
failed to prove the authenticity of this document at this stage, as such, the
same cannot be relied upon at this stage in support of the claim of the
plaintiff.
18. The learned Advocate for the plaintiff has further contended that
defendant No.1 had entered into agreement dated 12-7-2005 by which he
was not permitted to work for any other organization. The said agreement
has been filed as Annexure `D'. Clause (vii) of the said agreement reads
as under;-"That after completion of second party's contracts with other
TV/radio channels for programms aired/unaired/ under production
or for which the second party has contributed in any way, the first
party shall have the first right of refusal for the all such content/
programms."
19. Learned Advocate for the plaintiff has pointed out towards clause (xii)
of the agreement, which reads as under:-"That the second party has specifically assured the first party that
he has not entered into any contract or performance with any party,
organization and he has no engagement or agreement with any
other firm production house, company, TV Channel or any
individual for similar contractual obligations and tenure of
agreement."
20. With regard to clause (xii) learned Advocate for the defendant No. I
has stated that it was in respect of programme "Hum Sub Umeed Say
Hain". Without going into the controversy at this stage it appears that both
the clauses are in conflict with each other. Same can be decided at the
appropriate stage of the trial.
21. After considering the material available on the record, I am of the
considered view that the plaintiff has failed to prove the prima facie case in
their favour.
22. As regards balance of convenience, it is pointed out that the defendant
No.2 has already prepared four programmes and the first programme is to
be aired on 13-8-2005. As such, great inconvenience will be caused to the
defendants if the injunction is granted.
23. As regards irreparable loss, the plaintiff has calculated the loss of
more than Rs.33.00 million, as such, the loss, if any, can be calculated in
terms of money hence no irreparable loss will be caused to the plaintiff if
injunction is refused.
24. In the light of what has been discussed above all the three main
conditions for grant of injunction are not in favour of the plaintiff.
25. Above are the reasons of my short order- dated 12-8-2005 by which I
had dismissed the injunction application.
M.A.W./I-37/K
Application dismissed.
2003 C L D 1052
[Lahore]
Before Mian Hamid Farooq and Muhammad Sayeed Akhtar, JJ
Messrs FEROZESONS PVT. LTD. ---Appellant
Versus
Dr. Col. Retd. K.U. KURESHI and others---Respondents
Regular First Appeal No.20 of 1995, decided on 10th March, 2003.
(a) Copyright Ordinance (XXXIV of 1962)------Ss. 39 & 42---Mere failure to get the copyright registered does not
invalidate or impair the copyright nor destroys the right to sue for copyright
infringement---Register of Copyright and index is prima facie evidence of
the particulars entered therein and only raises a presumption that the
person whose name is entered in the Register is the author of the
Copyright but such presumption is not conclusive---Principles.
A bare reading of section 39 of the Copyright Ordinance, 1962 shows that
the use of expression "may" is permissive and does not make it obligatory
for an author to get the copyright registered. One cannot infer from the
language of section 39 any meaning making the registration compulsory
or mandatory for the enforcement of the copyright. The natural and
ordinary meaning of the word "may" would make the registration optional
and not compulsory. The words "may" and "shall" in legal parlance are
interchangeable, depending upon the context in which they are used but
legislative intent is to be seen and given effect to.
Similarly the phrase used in section 42 says that the Register of
Copyrights and indexes shall be the prima facie evidence of the particulars
entered therein. It only raises a presumption that the person whose name
is entered in the register is the author of the copyright. It certainly does not
make the presumption conclusive.
It is discretionary with any author of any work to apply for the registration
of copyrights and registration as such does not confer any rights. There is
no other provision at all which confers rights on account of registration of a
copyright. Therefore, copyrights exist whether the registration is done or
not and the registration is merely a piece of evidence as to when a certain
author started claiming copyrights in some artistic or some other work.
The mere failure to get the copyright registered does not invalidate or
impair the copyright, nor destroy the right to sue for copyright
infringement. Registration is not a condition precedent to the securing and
preserving of a copyright. This leaves no scintilla of doubt that the
registration of the copyright with the Registrar is not mandatory for
bringing a suit for infringement of the same.
Messrs Mishra Bandhu Karvalayua and others v. Shivratanlal Koshal AIR
1970 Madh. Pra. 261; S. Sibtain Fazli v. Star Film Distributors and another
PLD 1964 SC 337; East Pakistan School Textbook Board v. Debabrata
Chaki and others PLD 1968 Dacca 455; M. Yamin Qureshi v. Islamic
Republic of Pakistan and another PLD 1980 SC 22; Government of
Pakistan through the Secretary, P.W.D. (Irrigation Branch), Lahore v. Mian
Muhammad Hayat PLD 1976. SC 202; Messrs Manojah Cine Productions
v. A. Sundaresan and another AIR- 1976 Mad. 22; Stsang and another v.
Kiran Chandra Mukhopadhyay and others AIR 1972 Cal. 523; Glax
Operations U.K. Ltd. Middlesex (England) and others v. Samrat
Pharmaceutical, Kanpur AIR 1984 Delhi 265; Dhjaram Dutt Dhawan v.
Ram Lal Suri and others AIR 1957 Punjab Associated Publishers
(Madras) Ltd. v. K. Bashyam alias `Alya' and another AIR 1961 Mad. 114;
Syed Iqbal Hussain v. Mst. Sarwari Begum PLD 1967 Lah. 1138; 1991
SCMR 300; Muhammad Saleh v. The Chief Settlement Commissioner,
Lahore and 2 others PLD 1972 SC 326; Qamaruddin v. Muhammad Sadiq
and others 2001 CLC 848; Nav Sahitya Parkash and others v. Anand
Kumar and others AIR 1981 All. 200 and 18 Corpus Juris Secundum,
para.67 ref.
(b) Copyright Ordinance (XXXIV of 1962)------Ss. 56 & 60---Defendant had no knowledge and did not invade the
copyright wilfully or acted mala fide in any way---Infringement of copyright
by the defendant was squarely covered by S. 56(b), Copyright Ordinance,
1962--Damages, assessment of---Relevant considerations for such
assessment ---Principles.
The case of the plaintiff was squarely covered by clause (b) of section 56
of the Copyright Ordinance, 1962.
The damages are classified into general and special damages. General
damages flow from the injury the plaintiff has complained. These damages
must be averred and proved subsequently. Special damage is the item of
loss which the plaintiff alleges to be the result of the defendant's
infringement. The damages are further subdivided into:-(a) Non-pecuniary damages.
(b) Pecuniary loss.
All who united in the infringement are jointly and severally liable for
the damages regardless of the profits realized by them. It is not
necessary to give proof of specific damage. The damages are at
large.
In an action for infringement of copyright it is not necessary to give proof
of actual damage; the damages are at large. Even in a case where the
only damage appearing is that the infringement complained of tends to
vulgarize the plaintiff's work, the plaintiff is entitled to nominal damages
and, costs. The damages assessed may, include in addition to the amount
which would have by received by the plaintiff if he had himself been able
to sell the copies sold by the defendant, a substantial sum for injury to
trade by reason of the fact that the defendant's prices were lower than
those usually charged by the plaintiff. Other relevant considerations in the
assessment of damages are the profit which the plaintiff would have made
and the licence fee that he would have charged.
The Court may award such additional damages as it may consider
appropriate when it is satisfied that effective relief would not otherwise be
available to the plaintiff having regard to the flagrancy of the infringement
and any benefit shown to have accrued to the defendant by reason of the
infringement.
As an alternative to damages a plaintiff may have an account of the profits
made by the defendant by the use of his work; this remedy is an equitable
remedy ancillary to an injunction, and the plaintiff must elect which remedy
he will have. Damages may not be awarded where the infringement is
shown to have been innocent.
Damages for infringement of copyright may be additional to damages in
respect of some other cause of action arising from the same subjectmatter.
It was contended that the plaintiff, who appeared as P.W. stated in his
testimony that "the damages suffered by us on account of violation by the
defendants were not less than Rs.25,00,000. He was not subjected to
cross examination on this point, as such the amount should be taken as a
gospel truth. Contention was repelled on the ground that the plaintiff must
succeed on its own merits and not on the weakness of the defendant's
case. In the present case the loss of earnings and profits were covered
already granted to the plaintiffs. There was suffering by the plaintiffs. In
the absence of any proof of loss as alleged by the plaintiffs, the figure
claimed by him remained a wild guess.
The proviso to subsection (1) of section 60, Copyright Ordinance, 1962
clearly states that where the defendant proves that at the date of the
invasion he was not aware that copyright subsisted in the work and had
reasonable ground for believing that copyright did not subsist in the work,
the plaintiff shall not be entitled to any remedy other than an injunction and
a decree for whole or part of the profits made by the defendant by the sale
of the infringing copies.
The assertion made by the plaintiff about the knowledge of the defendant
was not corroborated from any other evidence documentary or otherwise
on the record. Therefore the defendant had no knowledge of the copyright
of the plaintiffs.
In the present case the defendant had no knowledge and did not invade
the copyright wilfully or acted mala fide in any way.
The decree for the profits made by the defendant by the sale of the
infringed copies could be granted under section 60 of the Copyright
Ordinance, 1962.
High Court, in circumstances, granted decree for other reliefs of injunction
and rendition of accounts etc. to the plaintiffs.
18 Corpus Juris Secundum, para. 135; Exchange Telegraph Co. v.
Gregory & Co. (1896) 1 QB 147 and Fenning Flim Service Limited v.
Wolver-Hampton, Walsall and District, Cinemas Ltd. (1914) 3 KB 1171 ref.
Khawaja Saeed-uz-Zafar and Nasrullah Khan Babar for Appellant.
Saleem Saigal for Respondents.
Date of hearing: 10th March, 2003.
JUDGMENT
MUHAMMAD SAYEED AKHTAR, J.---The facts rise to this appeal are
that plaintiffs/respondents 1 and 2 filed a suit on 10-12-1988 for damages
for copy right, permanent injunction and rendition against
defendants/appellant and respondents 3 to 7. It was averred in the plaint
that plaintiff No.1 had done his doctorate in Geography from University of
Punjab and from the University of London. Plaintiff No.2 had also
doctorate to her credit in the Name discipline from the University of
London. By dint of their hard work, the plaintiffs jointly prepared and
compiled an "Atlas" (in English and Urdu) under the title "Students Atlas
for Pakistan" with the intention to publish the same for sale in the open
market for profit as well as for enhancement of their intellectual status.
The plaintiffs acting on the representations made by defendants Nos.5
and 6 (respondents 6 and 7) entered into an agreement with them on 7-71980 for publication and sale thereof on payment of royalty to the plaintiffs
in acknowledgement of their intellectual property. Before finalizing the deal
with the plaintiffs, the defendant No.5 (respondent No.6) struck a
clandestine bargain with defendant No.1 (respondent No.3) regarding
copyright in the "Atlas" to the total exclusion of the plaintiffs. The terms of
the same were contained in a letter of agreement dated 21-12-1978
addressed to the Manager of defendant No.1/respondent No.3. The
plaintiffs came to know about the deal only when they came across their
intellectual property i.e. "The Student Atlas for Pakistan" in the market
published by Ferozesons, defendant No.4 and copyright thereon in the
name of No. 1/respondent No.3. The plaintiffs demanded explanation from
the defendants about plaintiffs' property and infringement of their copyright
upon which the solicitors of defendants 1 to 3/respondents 5 supplied a
copy of the agreement dated 12-12-1978 the defendants and a copy of
another agreement on 3-6-1985 by defendant No.1 conferring on
defendant No.4 (Ferozesons) the rights to publish the said "Atlas". The
defendants had no right in the "Atlas" and the publication of the same had
infringed the copyright of the plaintiffs. The plaintiffs offered the
defendants 1 to 4 to settle the matter out of Court. The defendants 1 to
3/responder 3 to 5 through their solicitors not only acknowledge the
copyright of the plaintiffs in the "Atlas" but also offered to pay the plaintiffs
as follows:-(a) For the English version, a sum of £ 5,500
(b) For the Urdu version,
(i) a sum of £ 5,500 on an outright basis if the plaintiffs assigned all
their interest and copyright in the Urdu edition, to defendant No.1,
or
(ii) a sum of £ 3,000 against an option for the plaintiffs to assign
their interest and copyright in the Urdu edition to defendant No.1, if
such option was exercised immediately and, a further sum of
Pounds Sterling 5,000 later, and
(c) A reasonable contribution towards costs.
The plaintiff demanded a sum of £ 16,000 plus costs from the defendants
but they refused to settle the matter out of Court and declined to pay any
compensation. The plaintiffs claimed Rs.20,00,000 by way of
compensation from the defendants. In addition thereto the plaintiffs also
claimed damages amounting to Rs.5,00,000 on account of mental torture,
loss of earnings and profit with interest. The following prayer was made:-"The plaintiffs, therefore humbly pray that a decree be passed with
costs against the defendants jointly and severally:-(a) Directing the defendants to deliver to the plaintiffs their original
work together with the unsold copies of the Atlas of the plaintiffs.
(b) Restraining the defendants from printing, publishing and selling
any more copies of the "Students Atlas for Pakistan", whether in
Pakistan or any other country of the world and from using the work
of the plaintiffs directly or indirectly in any manner and in any form
including by ways of reference or reproduction of any part of the
Atlas belonging to the plaintiffs.
(c) Directing the defendants to render true and full accounts of the
use and sales made of the Atlas in question, from its very inception.
(d) For a sum of Rs.25,00,000 by way of damages/compensation or
any higher sum found due from the defendants to the plaintiffs after
rendition of accounts, with future interest @ 14% per annum with
quarterly rests up to the date of its full and final payment or its
realization.
(e) Such other relief as the Court may deem fit to be awarded to the
plaintiffs against the defendants including confiscation of the unsold
copies of the Atlas."
Defendants 5 and 6 (respondents 6 and 7) were proceeded against ex
parte on 7-6-1993. The defendants 1 to 3 were proceeded against ex
parte on 8-9-1993. Subsequently an offer was made to the plaintiffs by
defendants 1 to 3 (respondents 3 to 5) to pay £ 7,500 as damages which
was accepted by the plaintiffs on 18-10-1994.
Defendant No.4/appellant filed a written statement and contested the suit
raising objection that the suit was barred by time under section 54 of the
Specific Relief Act and that it had been instituted after three years from the
alleged invasion of the copyright. It was alleged that the defendant/
appellant entered into an agreement with defendant No. 1 on his
assurance that it was the sole owner of the copyright in question. The
defendant had no knowledge of any body else having the copyright in the
"Atlas". The defendant had acted in good faith as per terms and conditions
of a valid agreement between it and defendant No. 1. The infringement of
the copyright, if any, of the plaintiff and liability of the defendant to pay
compensation for infringement of the same was specifically denied. "Atlas"
in question was purchased by the defendant under a legal and valid
contract for Rs.3,88,176 including the foreign exchange element
equivalent to Rs.3,63,389. It was stated that the defendant had not
imported more than 24500 copies of the "Atlas".
Out of the divergent pleadings of the parties, the following issues were
framed:-(1) Whether the plaintiffs are the owners of the copyright of the
Atlas .in question, if so, has there been any infringement of the said
copyright by defendants? OPP
(2) Whether the defendants are liable to pay damages to the
plaintiffs for the infringement of their copyright, if so, to what extent?
OPP
(3) Whether the suit is not competent against defendant No.4?
OPD-4
(4) Whether the suit is frivolous and malicious and if so whether the
defendant No.4 is entitled to special costs. If so, to what extent?
OPD-4
(5) Whether the plaintiffs entered into an agreement with
defendants Nos.5 and 6 for the publication of "Atlas" and tl4e
defendants Nos.5 and 6 agreed to pay them a settled amount of
royalty therefor? OPP
(6) Whether during the negotiations between defendants Nose.5
and 6, the defendants gained access to manuscript and
clandestinely entered into an agreement with defendant No. 1 for
publication of "Atlas" to the exclusion of the plaintiffs? OPP
(7) Relief.
The learned trial Court/District Judge, Lahore after recording the evidence
of the parties decided Issues 1, 2, 5 and 6 in favour of the
plaintiffs/respondents 1 and 2. Issues. Nos.3 and 4 were decided against
defendant/appellant, consequently the suit of the plaintiffs/ respondents
was decreed on 5-12-1994 granting the following relief:
(a) The defendants Nos. 1 to 3, as agreed to by them, shall pay
7500 (Pounds Sterling), as damages to the plaintiffs, which in
Pakistani currency comes to Rs.3,62,400, as the present market
rate of one Pound Sterling is Rs.48.32. The defendants Nos.4 to 6
shall pay the remaining amount of Rs.21,37,600 to the plaintiffs as
damages/compensation.
(b) The defendants are directed to deliver to the plaintiffs their
original work together with the unsold copies of the Atlas of the
plaintiffs.
(c) The defendants are restrained from printing, publishing and
selling any more copies of the "Students Atlas for Pakistan", under
this title or any other, whether in Pakistan or in any other country of
the world and from using the work of the plaintiffs directly or
indirectly in any manner and in any form including by way of
reference of the plaintiffs.
(d) The defendants are directed to render true and full accounts of
the use and sales made of the Atlas in question, from its very
inception.
2. The learned counsel for the appellant contended that the
plaintiffs/respondents did not get the copyright registered before the
Registrar of Copyrights, in the absence of issuance of certificate by the
Registrar of the Copyrights no infringement of the copyright takes place
nor can it be alleged. Learned counsel referred to sections 3, 9, 13, 38,
39, 40, 42 and 56 of the Copyright Ordinance, 1962. Reliance was placed
on M/s. Mishra Bandhu Karvalayua and others v. Shivratanlal Koshal (AIR
1970 Madhia Predesh 261) and S. Sibtain Fazli v. (1) Star Film
Distributors, (2) Muhammad Ali Khan (PLD 1964 SC 337). Learned
counsel further argued that it was admitted by the plaintiff that only 25,000
copies of the "Atlas" were published and imported. The price of per "Atlas"
was Rs.40 and the plaintiff was entitled to 10% royalty under the
agreement. The plaintiffs have received more than their entitlement.
Reliance was also placed on East Pakistan School Textbook Board v.
Debabrata Chaki and others (PLD 1968 Dacca 455), M. Yamin Qureshi v.
Islamic Republic of Pakistan and another (PLD 1980 SC 22) and
Government of Pakistan through the Secretary P.W.D. (Irrigation Branch),
Lahore v. Mian Muhammad Hayat (PLD 1976 SC 202).
Conversely the learned counsel for the respondents submitted that
registration of the copyright was not mandatory it was only optional.
Learned counsel referred to section 39 of the Copyright Ordinance, 1962.
Reliance was placed on M/s. Manojah Cine Productions v. A., Sundaresan
and another (AIR 1976 Madras 22), Stsang and another v. Kiran Chandra
Mukhopadhyay and others (AIR 1972 Calcutta 523), Glax Operations U.K.
Ltd. Middlesex (England) and others v. Samrat Pharmaceutical, Kanpur
(AIR 1984 Delhi 265). Learned counsel further submitted that P.W.4
stated that they suffered loss to the tune of Rs.25,00,000 and the witness
was not cross-examined on this point and the same remains un-rebutted.
Relies on Dhjaram Dutt Dhawan v. Ram Lal Suri etc. (AIR 1957 Punjab
161), Associated Publishers (Madras) Ltd. v. K., Bashyam alias `Alya' and
another (AIR 1961 Madras 114), Syed Iqbal Hussain v. Mst. Sarwari
Begum (PLD 1967 Lahore 1138) and 1991 SCMR 300).
4. We have gong through the judgment of the trial Court and perused the
record and the relevant provisions of Copyright Ordinance, 1962. Before
us the copyright of the plaintiffs/respondents has not been contested by
the appellant. However it was urged that it was mandatory to get the
copyright registered under section 39 of the Copyright Ordinance, 1962 for
alleging the infringement of the same. The Honourable Supreme Court in
the case of S. Sibtain Fazli v: (1) Star Film Distributors, (2) Muhammad Ali
Khan (supra) traced the history of copyright which is reproduced as
under:-"The position in Pakistan with respect to copyrights of foreign origin
is as follows: In 1911 the British Parliament enacted the Copyright
Act which as provided in section 25 was to apply to all British
dominions including India. It came into force in India, however, on
31st October 1912, when there was a Proclamation by the
Government of India in the Official Gazette under section 37(2) (d)
of the Act. In 1914 was enacted the Indian Copyright Act, which
made some modifications in the (English) Copyright Act in its
application to India which are not relevant for the present
discussion. The (English) Copyright Act protected only such
copyright as had its origin in the British dominions, but there was a
provision in section 29 empowering His Majesty, to apply the Act,
by an Order-in-Council, even to a foreign country. When India was
partitioned the (English) Copyright Act, as modified by the Indian
Copyright Act became applicable to both the countries but the two
countries became foreign countries for each other, and there being
no Order-in-Council relating either to India or to Pakistan, Copyright
having its origin in one country was deprived of protection in the
other. Copyright of Indian origin is not recognizable in Pakistan and
the same is the position with respect to copyright of Pakistani origin
in India. India has now repealed the Act of 1911 and has enacted
the Copyright Act of 1957, but the last mentioned Act has not
affected the situation in relation to Pakistan."
The, Copyright Act of 1911 passed by the Parliament of the United
Kingdom and the Copyright Act, 1914 (III of 1914) were repealed by
section 83 of the Copyright Ordinance, 1962.
Sections 39 and 42 of the Copyright Ordinance, 1962 are reproduced as
under:-39. Registration of copyrights.----(1) The author or publisher of or
the owner of, or other person interested in the copyright in, any
work may make an application in the prescribed form accompanied
by the prescribed fee to the Registrar for entering particulars of the
work in the Register of Copyrights.
(2) On receipt of an application in respect of any work under
subsection (1), the Registrar shall enter the particulars of the work
in the Register of Copyrights and issue a certificate of such
registration to the applicant unless, for reason to be recorded in
writing, he considers that such entry should not be made in respect
of any work.
42. Register of Copyrights to be prima facie evidence of particulars
entered therein.---(1) The Register of Copyrights and the indexes
shall be prima facie evidence of the particulars entered therein and
documents purporting to be copies of any entry therein or extracts
therefrom certified by the register and sealed with the seal of the
Copyright office shall be admissible in evidence in all Courts
without further proof of production of the original.
(2) A certificate of registration of copyright in a work shall be prima,
facie evidence that copyright subsists in the work and that the
persons shown in the certificate as the owner of the copyright is the
owner of such copyright.
A bare reading of section 39 shows that the use of expression "may" is
permissive and does not make it obligatory for an author to get the
copyright registered. We are unable to infer from the language of section,
39 any meaning making the registration compulsory or mandatory for the
enforcement of the copyright. The natural and ordinary meaning of the
word "may" would make the registration optional and not compulsory. The
words "may" and "shall" in legal parlance are interchangeable, depending
upon' the context in which they are used but legislative intent is to be seen
and given effect to. See Muhammad Saleh v. The Chief Settlement
Commissioner, Lahore and 2 others (PLD 1972 SC 326), Qamaruddin v.
Muhammad Sadiq and others (2001 CLC 848) and Craies on Statute Law.
Similarly the phrase used in section 42 says that the Register of
Copyrights and indexes shall be the prima facie evidence of the particulars
entered therein. It only raises a presumption that the person whose name
is entered in the register is the author of the copyright. It certainly does not
make the presumption conclusive. The authority M/s. Mishra Bandhu
Karvalayna and others v. Shivratanlal Koshal (supra) relied upon by the
learned counsel for the appellant has not been followed in the other High
Courts of India. See M/s. Manojah. Cine Productions v. A. Sindaresan and
another (AIR 1976 Madhya Perdesh 22), Nav Sahitya Parkash and others
v. Anand Kumar and others (AIR 1981 Allahabad 200), Satsang and
another v. Kiran Chandra Mukhopadhyay and others (AIR 1972 Calcutta
533) and Glax Operations U.K. Ltd. Middlesex (England) and others v.
Samrat Pharmaceutical, Kanpur (AIR 1984 Delhi 265). It was observed in
Glax Operations U.K. Ltd. Middlesex (England) and others v. Samrat
Pharmaceutical, Kanpur (supra) as under:-"It is apparent from a plain reading of section 45 that it is
discretionary with any author of any work to apply for the
registration of copyrights and that registration as such does not
confer any rights. There, is no other provision at all in the Copyright
Act which confers rights on account of registration of a copyright.
Therefore, copyrights exist whether the registration is done or not
and the registration is merely a piece of evidence as to when a
certain author started claiming copyrights in some artistic or some
other work."
The mere failure to get the copyright registered does not invalidate or
impair the copyright, nor destroy the right to sue for copyright
infringement. See 18-Corpus Juris Secundum, para. 67. Registration is
not a condition precedent to the securing and preserving of a copyright.
This leaves no scintilla of doubt in our mind that the registration of the
copyright with the Registrar is not mandatory for bringing a suit for
infringement of the same.
The next contention of the learned counsel for the appellant is that no
infringement of the copyright has been caused by the appellant. Section
56 of the Copyright Ordinance, 1962 states as to when the infringement of
the copyright takes place. It reads as under:-56. When copyright infringed. ---Copyright in a work shall be
deemed to be infringed-(a) when any person without the consent of the owner of the
copyright or without a licence granted by such owner or the
Registrar in contravention of the conditions of a licence so granted
or of any condition imposed by a competent authority under this
Ordinance:-(i) does anything the exclusive right to do which is by this
Ordinance conferred upon the owner of the copyright; or
(ii) permits for profit any place to be used for the performance of the
work in public where such performance constitutes an infringement
of the copyright in the work unless he was not aware and had no
reasonable ground for suspecting, that such performance would be
an infringement of copyright; or
(b) when any person:(i) makes for sale or hire or sells or lets for hire, or by way of trade
displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade to such an extent as to
affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into Pakistan,
any infringing copies of the work.
The, case of the plaintiff is squarely covered by clause (b) of section 56 of
the Copyright Ordinance, 1962.
Having come to the conclusion that the registration of the copyright is not
mandatory and the infringement of the copyright having been made, the
question of damages remains to be settled. Para. 16 of the plaint shows
that only 24550 copies of the "Atlas" have been printed and published.
The price of the "Atlas" per copy is admitted to be Rs.40. The
memorandum of agreement dated 7th of July, 1980, Ext. P.2 shows that
the plaintiffs were entitled to 10% royalty to be shared equally between
them. Similarly agreement dated 2-12-1985 Ext.P-228, 'between plaintiffs
and the appellant granting the right/licence to print and publish the
copyright titled "Map of Punjab" also slows that the plaintiffs were to be
paid 10% royalty on the net retail price of the map, to be equally divided
between the two authors. We can safely come to the conclusion that the
plaintiffs are entitled to 10% royalty on the net retail price. Their royalty on
the sale of 24550 copies of "Atlas" comes to about Rs.90,200. The
plaintiffs/respondents have already received £ 7,500 which in Pak
currency comes to Rs.3,62,400 (as calculated by the learned trial Court @
Rs.48.32). This amount exceeds than the 10% royalty to which the
plaintiffs/ respondents are entitled to as per terms of agreement Ext.P228. The plaintiffs claimed damages as follows:-(i) Rs.20,00,000 by way of compensation from all the defendants
jointly and severally.
(ii) Rs.5;00,000 on account of mental torture, loss of earnings and
profits.
The damages are classified into general and special damages. General
damages flow from the injury the plaintiff has complained. These damages
must be averred and proved subsequently. Special damage is the item of
loss which the plaintiff alleges to be the result of the defendant's
infringement. The damages are further subdivided into:-(a) Non-pecuniary damages.
(b) Pecuniary loss.
"All who united in the infringement are jointly-and severally liable for
the damages regardless of the profits realized by them". See 18
Corpus Juris Secundum, Para. 135. In the case of Exchange
Telegraph Co. v. Gregory & Co. (1896) 1 QB 147, it was held that:-"It is not necessary to give proof of specific damage. The damages
are at large."
The above principle of law laid down by Lord Esher M.R. is still the good
law. Halbury's Laws of England, para. 947 reads as under:-"947. Damages for infringement.---In an action for infringement of
copyright it is not necessary to give proof of actual damage; the
damages are at large. Even in a case where the only damage
appearing is that the infringement complained of tends to vulgarize
the plaintiff's work, the plaintiff is entitled to nominal damages and
costs. The damages assessed may include, in addition to the
amount which would have been received by the plaintiff if he had
himself been able to sell the copies sold by the defendant, a
substantial sum for injury to trade by reason of the fact that the
defendant's price were lower than those usually charged by the
plaintiff. Other relevant considerations in the assessment of
damages are the profit which the plaintiff would have made and the
licence fee that he would have charged.
The Court may award such additional damages as it may consider
appropriate when it is satisfied that effective relief would not
otherwise be available to the plaintiff having regard to the flagrancy
of the infringement and any benefit shown to have accrued to the
defendant by reason of the infringement.
As an alternative to damages a plaintiff may have an account of the
profits made by the defendant by the use of his work; this remedy is
an equitable remedy ancillary to an injunction, and the plaintiff must
elect which remedy he will have. Damages may not be awarded
where the infringement is shown to have been innocent.
Damages for infringement of copyright may be additional to
damages in respect of some other cause of action arising from the
same subject-matter."
In our view the plaintiffs have already received more than they are entitled
to. In the peculiar circumstances of the case we consider that the plaintiffs
have already been adequately compensated by payment of £ 7,500 by
respondents 3 to 5 and are not inclined to give larger award. The
defendants are jointly and severally liable. The learned counsel for the
respondents vehemently contended that plaintiff, K.U. Qureshi, who
appeared as P.W.4 stated in his testimony that "the damages suffered by
us on account of violation by the defendants are not less than
Rs.25,00,000". He was not subjected to cross-examination on this point,
as such the amount should be taken as a gospel truth. We are unable to
agree with the learned counsel for the respondents. It is well settled by
now that the plaintiff must succeed on its own merits and not on the
weakness of the defendant's case. The loss of earnings anal profits are
covered by the amount already granted to the plaintiffs. There is no
evidence on record proving the mental suffering by the plaintiffs. In the
absence of any proof of loss as alleged by the plaintiffs, the figure claimed
by him remains a wild guess. The authorities relied upon by the learned
counsel for the respondents are not applicable to the facts of the instant
case.
The learned counsel for the respondents claims damages "at large". We
do not find ourselves in agreement with him. Section 60 of the Copyright
Ordinance, 1962 reads as under:-- '
60. Civil remedies for infringement of copyright. ---(1) Where
copyright in any work has been infringed, the owner of the copyright
shall, except as otherwise provided by this Ordinance, be entitled to
all such, remedies by way of injunction, damages, accounts and
otherwise as are or may be conferred by law for the infringement of
a right:
Provided that, if the defendant proves that at the date of the
infringement he was not aware that copyright subsisted in the work
and he had reasonable ground for believing that copyright did not
subsist in the work, the plaintiff shall not be entitled to any remedy
other than that an injunction in respect of the infringement and a
decree for the whole or part of the profits made by the defendant by
the sale of the infringing copies as the Court may in the
circumstances deem reasonable.
(2) Where, in the case of a literary, dramatic, musical or artistic
work, a name purporting to be that of the author or the publisher, as
the case may be, appears on copies of the work as published, or, in
the case of an artistic work, appeared on the work when it was
made, the person whose name so appears or appeared shall, in
any proceedings in respect of infringement of copyright in such
work, be presumed, unless the contrary is proved, to be the author
or the publisher of the work, as the case may be.
(3) The costs of all parties in any proceedings in respect of the
infringement of copyright shall be in the discretion of the Court."
The proviso to subsection (1) clearly states that where the defendant
proves that at the date of the invasion he was not aware that copyright
subsisted in the work and had reasonable ground for believing that
copyright did not subsist in the work, the plaintiff shall not be entitled to
any remedy other than an injunction and a decree for whole or part of the
profits made by the defendant by the sale of the infringing copies. Dr. U.K.
Qureshi, one of the plaintiffs appeared as P.W.4 and stated in his
testimony as under:-"M/s. Feroze Sons, defendant No.4 were fully aware that the,
plaintiffs were the authors of this project and they were negotiating
these publications with M/s. Wajid Aqis and M/s. Collins-Longman.
M/s. Feroze Sons had been corresponding with M/s. CollinsLongman and they had published the document with full knowledge
of the contravention of copy rights,"
Conversely Zaheer Salam, one of the Directors of the appellant, appeared
as D.W.-1 and stated that the contract dated 3-6-1985 (Exh.D-2) between
appellant and M/s. Collins-Longman bears his signatures. In cross-examination he denied the suggestion put to him in the following words:-"Before purchasing the books/Atlas from the M/s. Collins-Longman
I was sure that the Firm being an Internationally reputed
establishment had undergone all formalities of having its copy
rights etc. and we entered into to deal with them in good faith
without knowing that what was the dispute between the plaintiffs,
Wajid Alis and the Collins Longman."
He further denied as under:-"It is incorrect to suggest that we knowingly entered into to deal far
the purchase of Atlas Exh.P-5. The copyrights, in fact, belonged to
the plaintiffs. In fact, when we came to know the factual position we
terminated the contract."
The assertion made by the plaintiff about the knowledge of the appellant is
not corroborated from any other evidence documentary or otherwise on
the record. We, therefore, hold that the appellant had no knowledge of the
copyright of the plaintiffs/ respondents. In a copyright case titled Fenning
Film Service Limited v. Wolver-Hampton, Walsall and District Cinemas
Ltd. (1914) 3 KB 1171, it was observed as under:-"I do not think the defendants acted wilfully. It is quite possible that
they thought that the agreement gave them the right to act as they
did, and I do not think they acted mala fide in any way. The
damages are, in the language of Lord Esher M.R., "at large," and
therefore I can give what amount I think right as if I were a jury."
In the instant case we think that the appellant had no knowledge and did
not invade the copyright wilfully or acted mala fide in any way.
6. The upshot of the above discussion is that this appeal is partly allowed.
The decree to the extent of payment of Rs.21,37,600 against the
appellants is set aside. However the appellant cannot be allowed to enrich
himself at the cost of the plaintiffs by infringing their copyright. The decree
for the profits made by the appellant by the sale of the infringed copies
can be granted under section 60 of the Copyright Ordinance, 1962. We
therefore uphold the decree granting other reliefs of injunction and
rendition of accounts etc. to the plaintiffs.
Appeal partly allowed.
M.B.A./ F-166/L
allowed.
Appeal
partly
2004 C L D 1468
[Lahore]
Before Jawwad S. Khawaja, J
Sheikh SAEED ULLAH---Appellant
Versus
Mst. MAHMOODA BEGUM MAUDOODI and 6 others.--Respondents
Regular First Appeal No. 105 of 1991, heard on 25th May, 2004.
Copyright Ordinance (XXXIV of 1962)------S.60---Assignee---Licensee---Exclusive licence---Plaintiffs were found owners
of copyright of the "work" created by their ancestor---Defendants came with the
plea that original owner had given exclusive licence to print the work to
them---Such licence was not in writing as required by law---Judgment and decree
passed in favour of the legal heirs was affirmed in circumstances.
Ismail and others v. Inayat and others 1989 CLC 447 and Shakeel Adilzada v.
Pakistan Television Corporation and 2 others 1990 CLC 714 not relevant.
Munawwar-ul-Islam for Appellant.
Muhammad Ismail Qureshi for Respondents.
Date of hearing: 25th May, 2004
JUDGMENT
a This first appeal filed by Sh. Saeed Ullah (appellant/defendant) impugns the
decree dated 26-3-1991 passed by the learned District Judge, Lahore, whereby a
suit filed by the respondents Nos. 1 to 5 under section 60 of the Copyrights
Ordinance, 1962 was decreed.
2. The subject-matter of the present appeal is the six volume book titled
`Tafheem-ul-Qur'an'. This book, admittedly, was written by Maulana Maudoodi
who was the owner of the copy right in the said work. The respondents Nos. 1 to
6 are the legal heirs of late Maulana Maudoodi. The respondent No.6, namely,
Haider Farooq Maudoodi son of the late Maulana Maudoodi did not join
respondents Nos. 1 to 5 in filing the plaint and was, therefore, impleaded as
defendant No.3.
3. It was the case of the respondents/plaintiffs that after the death of late Maulana
Maudoodi the copyright came to vest in them and that the copyright was being
infringed by the appellant/defendant who was printing and publishing Volumes I,
III and IV of Tafheem-ul-Qur'an, without any authority, assignment or licence
granted to him. The suit was resisted by the appellant/ defendant who claimed that
in 1972 an agreement had been entered into between his father, namely, Sh.
Qamar-ud-Din and late Maulana Maudoodi on the basis of which
Maktaba-e-Tameer-e-Insaniyat, which was owned by Sh. Qamar-ud-Din, was
granted the exclusive right to print and publish Volumes I, III and IV of the
aforesaid book.
4. Based on the pleadings of the parties the learned District Judge framed as many
as ten issues including that of relief. Learned counsel for the parties, however,
confined their arguments to Issues Nos.7 and 8 which are the core issues
encapsulating the controversy between the parties. These issues were framed in
the following terms:
"7. Whether defendant No.1 is permanent publisher in respect of Volumes
I, II and IV of Tafheem-ul-Qur'an? OPD
8. Whether the copyrights vest with the plaintiffs and defendant No. 1 has
infringed the rights by publishing the work? OPP"
5. Before me learned counsel for the appellant/ defendant did not dispute the fact
that late Maulana Maudoodi was the author and original owner of the copyright in
"Tafheem-ulQur'an. He, however, argued that by virtue of an agreement between
the
appellant’s
father
and
late
Maulana
Maudoodi
the
Maktaba-e-Tameer-e-Insaniyat had become the exclusive licensee in respect of
Volumes I, III and IV of the aforesaid book and on this basis, the appellant;
defendant was to be treated as the owner of the copyright in the said Volumes.
Consequently, it was argued, no suit under section 60 of the Copyrights
Ordinance, 1962 could be filed against the appellant/defendant.
6. In the first instance learned counsel referred to the testimony of Khalid Farooq
Maudoodi (P.W.3) and Haider Farooq Maudoodi (D.W.4) to show that there
indeed, was an unwritten agreement between the appellant's father and late
Maulana Maudoodi whereby the appellant's father was granted the exclusive
licence to print and publish Volumes I, III and IV through
Maktaba-e-Tameer-e-Insanivat. I have gone through the testimony of P.W.1 and
D.W.4. Although it does indicate that Volumes I, II and IV of Tafheem-ul-Qur'an
were, indeed, being printed and published by Maktaba-e-Tameer-e-Insaniyat, the
evidence of these witnesses, does not, in any manner, prove that the
Maktaba-e-Tameer-e-Insaniyat or its owner Sh. Qamar-ud-Din had been granted
an exclusive licence or was an assignee of the copyright in Volumes I, III and IV
of Tafheem-ul-Qur'an. In these circumstances, it is not possible to accept the
defence set up by the appellant/defendant that his father was an exclusive licensee
of Volumes I, III and IV of the above-referred book.
7. At this juncture, it is important to note that the appellant/defendant had claimed
to be an assignee of Volumes I, III and IV, before the learned District Judge. This
plea, however, was not pressed before me.
8. Learned counsel for the appellant did, however, claim that the appellant was an
exclusive licensee. The relevant provisions of the Copyrights Ordinance, which
defines an exclusive licence and its essential prerequisites are sections 2(1) and 35
of the Copyrights Ordinance. These provisions are reproduced as under:
"2(1) "exclusive licence" means a licence which confers on the licensee or
on the licenser and persons authorized by him, to the exclusion of all other
persons (including the owner of the copyright), any right comprised in the
copyright in a work and "exclusive licensee" shall be construed
accordingly;
35. Licences by owners of copyright.---The owner of the copyright in
any existing work or the prospective owner of the copyright in any future
work may grant any interest in the copyright by licence in writing signed
by him or by his duly authorized agent:
Provided that in the case of a licence relating to copyright in any future
work, the licence shall take effect only when the work comes into
existence."
9. It is clear from the statutory provisions reproduced above that a licence, in
order to be recognized under the Copyrights Ordinance, has to be in writing.
There, admittedly, is no written agreement between the appellant's father and late
Maulana Maudoodi. Learned counsel for the appellant, however, argued that even
if there is no formal agreement, a written agreement can, in law, be inferred from
letters or other instruments in writing. To support this contention he also referred.
to case-law including the cases titled Ismail and others v. Inayat and others (1989
CLC 447) and Shakeel Adilzada v. Pakistan Television Corporation and 2 others
(1990 CLC 714). The cited precedents, however, have no relevance in the present
case:
10. Learned counsel for the appellant drew the attention of the Court to
EXh.D.W.3/A which is a book titled `Yadon Ke Khatoot' published by the Islami
Maktaba, Haiderabad. At page 116 of the said publication there is a letter written
by one Tufail Muhammad to Muhammad Younus at Haiderabad. In the said letter
there is a reference to Tafheem-ul-Qur'an alongwith the averment that some
arrangement had been made with Sh. Qamar-ud-Din in respect of
Tafheem-ul-Qur'an. The nature and terms of such arrangement have not, however,
been specified in the said letter. Furthermore, there is nothing on record to show
that Tufail Muhammad, who was the author of the aforesaid letter, was an agent
authorized to act on behalf of late Maulana Maudoodi. At best, the aforesaid letter
in Exh.3/A can be construed as indirect evidence of some undefined arrangement
between late Maulana Maudoodi and Sh. Qamar-ud-Din father of the appellant.
The said letter cannot, in law, be treated as the equivalent of a written agreement
or even a memorandum of such agreement allowing an exclusive licence to the
appellant's father to print and publish Volumes I, III and IV of Tafheem-ulQur'an.
11. In the foregoing circumstances, I find that the appellant/defendant has failed
to prove that he has any right whether as assignee or licensee, to print and publish
Volumes I, III and IV of Tafheem-ul-Qur'an. Keeping in mind the admitted
position that late Maulana Maudoodi was the author and original owner of the
work in question, I am not left in any doubt that copyright in the work remained
vested in late Maulana Maudoodi and after his death in 1979 the same came to
vest in his legal heirs. The said legal heirs were, therefore, entitled, in law, to
maintain a suit under section 60 of the Copyrights Ordinance, 1962 and to prevent
infringement of their copyrights.
12. For the foregoing reasons, the judgment and decree of the learned District
Judge is unexceptionable. This appeal is, therefore, dismissed.
M.I /S-149/L
dismissed.
Appeal