2025 Supreme(Online)(Bom) 249268
HIGH COURT OF BOMBAY
HON'BLE JUSTICE SHARMILA U. DESHMUKH
Phonographic Performance Limited – Appellant
Versus
Trinetra Venture – Respondent
IAL/36005/2025
Advocates:
For the Appellants/Petitioners: Sharan Jagtiani, Amogh Singh, Avanti, Asmant Nimbalkar, Neeraj Nawar, Shikha Dutta, Sheryl D'souza, D.P. Singh
For the Respondents: Sandeep Parikh, Arsalan A. Thaver, Abhiraj Parab
An exclusive licensee of copyright can sue for infringement without being registered as a copyright society; non-impleadment of the owner is not an absolute bar, and objections as to stamping or completeness of deeds do not block interim relief.
Headnote:(A) Copyright Act, 1957 - Sections 30, 31, 33(1), 54, 55, 61 - Stamp Act - Section 34 - Interim injunction - Copyright infringement - Public performance of sound recordings without licence - Whether non-impleadment of copyright owner is fatal to suit instituted by exclusive licensee - Whether an exclusive licensee can maintain an action for infringement without being registered as a copyright society - Whether unstamped or incomplete assignment deeds preclude grant of ad-interim relief - Reasonable licence fee as defence - Balance of convenience.
(B) The plaintiff, as owner/exclusive licensee of copyright in sound recordings, is entitled to maintain an action for infringement. Sections 54 and 55 of the Copyright Act bring an exclusive licensee within the definition of 'owner of copyright' and entitle such licensee to sue. Non-impleadment of the original owner under Section 61 is not an absolute bar; the court has discretion to dispense with such impleadment. (Paras 12, 13)
(C) A plaintiff who is not registered as a copyright society under Section 33(1) of the Copyright Act is still entitled to seek relief for infringement - following the coordinate bench decision in Novex Communications Pvt. Ltd. v. Trade Wings Hotels Limited (2024 SCC OnLine Bom 252), which binds this court. (Paras 10-11)
(D) Objections regarding incomplete or redacted sample agreements and unstamped assignment deeds do not constitute a bar to the grant of interim relief. The court considers the stage of admissibility; at the interim stage, such defects are not an obstacle. (Paras 13-14) (E) The defence based on unreasonable licence fee and reliance on Section 31 (compulsory licence) is not available in an infringement action; such a defence in fact admits the plaintiff's ownership. (Para 15)
Facts of the case:
The plaintiff, which claims to be owner/exclusive licensee of copyright in a repertoire of sound recordings, filed two suits against defendants who own about 94 restaurants, alleging that the defendants publicly performed the plaintiff's sound recordings without obtaining a licence under Section 30 of the Copyright Act. The plaintiff issued cease and desist notices and supported the claim with an affidavit of its representative who visited the establishments and video‑recorded the unauthorised broadcasting. The defendants raised defences including non‑impleadment of the copyright owner, plaintiff not being a registered copyright society, suppression of material facts, incomplete and unstamped assignment deeds annexed to the plaint, and unreasonable licence terms.
Findings of Court:
Prima facie, the plaintiff established ownership/exclusive licence rights. The plaintiff's representative's affidavit and video evidence supported the infringement claim. The defendants failed to demonstrate any entitlement to broadcast the plaintiff's sound recordings. The balance of convenience was in favour of the plaintiff, and irreparable harm would result if interim relief was not granted. Therefore, the court allowed the interim applications and restrained the defendants from publicly performing or communicating the sound recordings without obtaining a licence from the plaintiff.
Issues: (i) Whether the suit is maintainable without impleading the copyright owner? (ii) Whether a plaintiff that is not a registered copyright society can seek interim relief for copyright infringement? (iii) Whether incomplete or unstamped assignment deeds preclude the grant of ad‑interim relief? (iv) Whether an unreasonable licence fee can be raised as a defence in an infringement action?
Ratio Decidendi: The court held that (1) an exclusive licensee is deemed an 'owner of copyright' under Sections 54 and 55 of the Copyright Act and can maintain an infringement suit; Section 61 does not create an absolute bar, and the court can dispense with the requirement. (2) The coordinate bench decision in Novex Communications (supra) is binding and confirms that registration under Section 33(1) is not a prerequisite to seek relief. (3) Objections as to incomplete or unstamped documents are premature at the interim stage; admissibility is a matter for trial. (4) The defence of unreasonable licence fee is not a defence to infringement; if raised, it implies an admission of the plaintiff's copyright.
Result: Interim applications allowed. Pending final disposal, the defendants are restrained from publicly performing or communicating the plaintiff's sound recordings without obtaining a non‑exclusive public performance licence from the plaintiff.
ORDER :
1. As both applications raise common issues, at request of learned counsel for parties, the applications were taken up together for hearing and are disposed of by this common order.
2. The present suit has been filed for infringement of copyright and quia-timet action for apprehended future violation by the Defendants. The Plaintiff has pleaded that it is the owner/exclusive licensee of the copyright in the sound recordings in its repertoire on the basis of assignment deeds /exclusive agreements of the relevant copyrights in its favour by several music companies. The Plaintiff claims to be exclusively entitled to grant licenses for communication to the public/ public performance of its repertoire of sound recordings under Section 30 of the Copyright Act, 1957 (for short, “Copyright Act”). The suit has been initiated as the Plaintiff claims that the Defendant who are the owners of about 94 restaurants, without obtaining the license from the Plaintiff as contemplated under Section 30 of the Copyright Act, are unauthorisedly broadcasting the Plaintiff’s sound recordings infringing the Plaintiff’s copyright.
3. The defences are that the suit itself is not maintainable for nonimpleadment of owner of copyright, that the Plaintiff not being registered society is not entitled to grant licences, there is suppression of material facts as the copies of purported agreements in favour of the Plaintiff have not been annexed to the plaint, that incomplete assignment deeds have been annexed to the plaint and that the assignment deeds are inadequately stamped.
4. Mr. Jagtiani, Leaned Senior Advocate for the Plaintiff submits that the Plaintiff is the owner/exclusive licensee of copyright in the sound recordings in its repertoire. He submits that the assignment deeds/exclusive licenses being voluminous documents are set out in the Compact Disk (CD) which is filed along with the plaint and a sample agreement is annexed at Exhibit “E” to the plaint which demonstrates the Plaintiff’s copyright ownership in the sound recordings. He would submit that cease and desist notice was issued to the Defendants who are operating about 94 establishments without securing the license from the Plaintiff. He would further point out to the affidavit of Plaintiff’s representative who has deposed on oath about his visit to the Defendant’s establishments and video recorded the unauthorised broadcasting of the songs. He has taken this Court through various interim orders granted in favour of Plaintiff by this Court in identical matters. He would submits that theDefendants’ contention of the license terms being unreasonable which amounts to refusal to allow public performance and premised on the decision of the Delhi High Court in the case of Al Hamd Tradenation v. Phonographic Performance Ltd. (supra) cannot constitute a defence to an action for copyright infringement. He would further submit that in event the said defence is taken, it constitutes an admission of the Plaintiff’s ownership in the copyright which itself is being denied by the Defendant. He would further submit that this Court in a group of petitions in the case of Novex Communications Pvt. Ltd. v. Trade Wings Hotesl Limited has taken a view that the Plaintiff is entitled to seek relief as sought for in the plaint without being registered as copyright society under Section 33(1) of the Copyright Act. He would submit that the contrary view taken by the Delhi High Court does not bind this Court. He would further point out Section 54 and Section 55(1) of the Copyright Act to contend that even exclusive licensee is entitled to maintain an action for infringement. Relying upon extract from Copinger and Skone James on Copyrights, Mr. Jagtiani submits that a copyright owner or exclusive licensee may apply for interim injunction without joining the owner or obtaining leave of the Court.
5. Mr. Jagtiani would submit that reliance placed upon Section 61 of the Copyright Act is mispl
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