“Ques: Is it necessary to register a work to claim copyright?

Ans: No. Acquisition of copyright is automatic and it does not require any formality. Copyright comes into existence as soon as a work is created and no formality is required to be completed for acquiring copyright. However, certificate of registration of copyright and the entries made therein serve as prima facie evidence in a court of law with reference to dispute relating to ownership of copyright.”


The above question and the answer thereto, which form part of the “Frequently Asked Questions” section of the (Indian) Copyright Office’s website www.copyright.gov.in, make it clear in no uncertain terms that the registration of copyright in India is optional and there is no necessity to register a copyrightable work to claim rights therein.

Coming from the body established under the (Indian) Copyright Act, 1957 (the Act) which is entrusted, inter alia, with the task of processing and registering copyright applications in India, this response would appear to be a foregone conclusion.

However, the views expressed by the Indian courts on this point have not been as simple as the said answer. Over the years, the question whether copyright registration is optional or mandatory in India has presented itself to various Courts. While most of the High Courts in India have held that the registration of copyright is optional and not mandatory, there have been a few cases where certain High Courts have held otherwise.

Apart from presenting a birds eye view of the decided cases on this point, this article also examines this issue from the stand point of the relevant statutory provisions under the Act, the legislative intent on this very point and also India’s obligations under international conventions, namely, the Berne Convention and the TRIPS Agreement, in this regard.

 

Relevant Provisions under the Act

“13. Works in which copyright subsists.

  • Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist throughout India in the following classes of works, that is to say,-
  • original literary, dramatic, musical and artistic works;
  • cinematograph films; and
  • sound recordings”

……

“17. First owner of copyright.

Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein”

 

“44. Register of Copyrights.

There shall be kept at the Copyright Office a register in the prescribed form to be called the Register of Copyrights in which may be entered the names or titles of works and the names and addresses of authors, publishers and owners of copyright and such other particulars as may be prescribed”

“45. Entries in register of Copyright

  • “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 of Copyrights for entering particulars of the work in the Register of Copyrights.”

“48. Register of Copyrights to be prima facie evidence of particulars entered therein

The Register of Copyrights shall be prima facie evidence of the particulars entered therein and documents purporting to be copies of any entries therein, or extracts therefrom certified by the Registrar of Copyrights and sealed with the seal of the Copyright Office shall be admissible in evidence in all courts without further proof or production of the original.”

None of the aforesaid provisions suggest that registration of copyright is mandatory in India. Neither Section 13(1), which deals with the subsistence of copyright nor Section 17, which deals with the ownership of copyright lists registration as a pre-condition for claiming copyright in a copyrightable work. Further, the use of the expression “may” in Sections 44 and 45 makes it abundantly clear that registration of the particulars pertaining to a copyrighted work is optional. Lastly, in terms of Section 48, the Register of Copyright only serves as a prima facie evidence of the particulars entered therein and nothing more.

 

Judicial Precedents – The journey till date

In Mishra Bandhu Karyalaya and Ors. v. Shivratanlal Koshal[1], the Division Bench of the Madhya Pradesh High Court, while referring, inter alia, to Section 45 of the Act observed that registration of a work appears to be a condition precedent for acquiring any copyright therein. While doing so, the Court referred to the Indian Copyright Act, 1914 (which was relevant for the purposes of adjudication of the dispute before the Court) and remarked that unlike the said Act, where there was no provision for any registration of copyright, the current Act does provide for the same. The Court, then went on to conclude that in the absence of a registration, an author of an original work can have no rights or remedies, be it civil or criminal, under the Act.

Expressing its disagreement with the observations made in Mishra Bandhu Karyalaya (supra) and terming them as obiter dicta, the Madras High Court in A. Sundarasan v. A.C. Thirulokchandar and Ors.[2] observed that the registration of copyright is not compulsory under the Act and non-registration does not disentitle a plaintiff party to sue for infringement of his/her copyright. Referring to Section 44 of the Act, the Court observed that the contrast between the word “shall” in the earlier part of the said section and the word “may” in the later part thereof makes it manifest that although the maintenance of the Copyright Register is compulsory, the entry therein of the names or titles of works and the names and addresses of authors, publishers and owners of copyright is left to the option of the owner of the copyright. The Court then also referred to and relied on the use of the expression “may” in Section 45 of the Act in support of its observation. The Court also went on to refer to Section 48 of the Act and commented that if the Legislature had intended that registration shall be compulsory, one would expect the language of Section 48 to be radically different from what it is now and it ought to have said that, without registration, no valid copyright could be claimed or enforced.

To similar effect is the decision of the Calcutta High Court in Satsang and Anr. vs. Kiron Chandra Mukhopadhyay and Ors.[3] wherein the observations made in Mishra Bandhu Karyalaya (supra) were termed as obiter dicta and it was observed that there is nothing in Section 45 or any other Section of the Act to suggest that registration of copyright is compulsory and that the author can have no right or remedy in absence thereof. Similarly, in Kumari Kanaka vs. Sundararajan[4], a Division Bench of the Kerala High Court held that registration of the work under the Act is neither compulsory nor a condition precedent to maintain a suit for damages for infringement of copyright.

The order passed in A. Sundarasan (supra) was challenged in appeal before the Division Bench of the madras High Court in Manojah Cine Productions v. A. Sundaresan and Anr[5]. Dismissing the appeal and affirming the order passed in A. Sundarasan (supra), the Division Bench of the Madras High Court observed that there is hardly an indication in any of the provisions of the Act to suggest that registration is a condition precedent to the subsistence of copyright or acquisition of ownership thereof. While doing so, the Division Bench also placed reliance on and expressed its agreement with the decision of Calcutta High Court in Satsang (supra).

In Deepak Printery v. The Forward Stationery Mart and Ors.[6], the Gujarat High Court observed that neither Section 13, nor Section 45 of the Act enjoins that a copyright must be compulsorily registered. While observing so, the Court agreed with the view taken by the Calcutta High Court in Satsang (supra) and expressed its disagreement with the view taken by the Madhya Pradesh High Court in Mishra Bandhu Karyalaya (supra).

This question then came up for consideration before the Patna High Court in Radha Kishna Sinha and Anr. vs. The State of Bihar and Anr.[7], albeit in the context of quashing of the criminal proceedings initiated under Section 63 of the Act in the absence of any copyright registration in favour of the complainant. Referring to Section 45 of the Act, the court observed that it is only an enabling provision and it does not go any further to mandate copyright registration. Expressing its agreement with the observations of the Calcutta High Court and the Madras High Court in Satsang (supra) and Manojah Cine Productions (supra) respectively, the Patna High Court concluded that registration of copyright under the Act is not compulsory, nor it is sine qua non or a condition precedent to the subsistence of copyright or acquisition of ownership thereof or relief for infraction of copyright. Accordingly, the Court held that there was nothing wrong in the Chief Judicial Magistrate taking cognizance of an offence under Section 3 of the Act in the absence of registration of copyright in favour of the complainant.

It was now the turn of Allahabad High Court to adjudicate on this issue in Nav Sahitya Prakash and Ors. v. Anand Kumar and Ors[8]. Referring to Section 44 of the Act, the Court observed that its purpose was not to make registration compulsory or mandatory for the purpose of enforcement of copyright and if the legislature intended to make the requirement of registration mandatory, the language of Section 44 would have been different. The Court also took note of the use of word “may” in Section 45 and observed that in ordinary usage “may” is permissive and is not generally held to be mandatory unless the context requires to the contrary. The Court also observed that in determining the meaning of any word, the first question to ask always is what is the natural and ordinary meaning of the word and it is only when that meaning leads to some other result which cannot reasonably be supported to have been the intention of the legislature that it is proper to look for some other possible meaning of the word. The Court then remarked that in the instant case, the context does not require a meaning different than the ordinary. Expressing its disagreement with the observations made in Mishra Bandhu Karyalaya (supra) and agreeing with the observations of the Madras High Court and the Calcutta High Court in A. Sundarasan (supra) and Satsang (supra) respectively, the Allahabad High Court held that there is no provision in the Act depriving an author of the rights conferred by this Act on account of non-registration of the copyright.

In Glaxo Orthopedic U.K. Ltd. v. Samrat Pharma[9] the Delhi High Court went into this issue in a totally different context in the light of one of the defenses raised by the defendant therein, when it claimed to have obtained copyright registration for the impugned carton/label. Referring to Section 45 of the Act, the Court observed that from a plain reading of the said section, it is apparent that it is discretionary for any author to apply for the registration of copyright and that registration as such does not confer any rights. Referring to Sections 13 and 17 of the Act, the Court went on to observe that the only requirement listed under Section 13 is that of originality and once that stands fulfilled, ownership in the original work is bestowed by virtue of Section 17 read with Section 2(1)(d) (which defines “author”) of the Act. The Court then went on to injunct the defendant notwithstanding its copyright registration stating that the impugned carton/label registered by the defendant was nothing but a copy of the plaintiff’s registered labels, that were prior in point of time.

A fact situation similar to that in Radha Kishna Sinha (supra), arose before the Orissa High Court in Brundaban Sahu v. B. Rajendra Subudhi[10]. This time, however, while referring to Sections 16, 44, 45 and 48 of the Act, the Orissa High Court held that one cannot claim and assert any copyright unless the same has been registered with the Registrar of Copyrights. Observing that the Magistrate had committed gross error in taking cognizance of the offence under Section 63 of the Act in the absence of any copyright registration in favour of the complainant, the Court quashed the criminal proceedings instituted by it. Interestingly, none of the earlier decisions of different High Courts, including that of Radha Kishna Sinha (supra), were referred to or cited before the Orissa High Court.

Agreeing with the observations of the Madras High Court, Calcutta High Court, Allahabad High Court and Kerala High Court in A. Sundarasan (supra), Manojah Cine Productions (supra), Satsang (supra), Nav Sahitya Prakash (supra) and Kumari Kanaka (supra) respectively, the Division Bench of Kerala High Court R. Madhavan vs. S.K. Nayar[11] reiterated that the right to sue for copyright infringement under the Act is not dependent upon registration of the copyright. While doing so, the Kerala High Court also took note of the observations made in Mishra Bandhu Karyalaya (supra) and categorically said that the said case had been wrongly decided.

To similar effect is the decision of the High Court of Andhra Pradesh in K. Marari v. Muppala Ranganayakamma[12], wherein the Court expressed its agreement with the observations of Calcutta High Court, Madras High Court and Allahabad High Court in Satsang (supra), Manojah Cine Productions (supra) and Nav Sahitya Prakash (supra) and held that the registration of copyright is not mandatory under the Act. The Court went on to term the observations in Mishra Bandhu Karyalaya (supra) as “obiter” and remarked that the said decision did not lay down the correct law.

The question whether criminal prosecution for copyright infringement is maintainable in the absence of copyright registration was also referred to the Full Bench of the High Court of Madhya Pradesh (Jabalpur Bench) In K.C. Bokadia and Anr. vs. Dinesh Chandra Dubey[13]. The Full Bench took note of and cited with approval, the observations made by the High Courts of Calcutta, Allahabad, Madras, Kerala Patna and Delhi in Satsang (supra), Nav Sahitya Prakash (supra), Manojah Cine Productions (supra), R. Madhavan (supra) Radha Kishna Sinha (supra), and Glaxo (supra) and remarked that a careful analysis of the scheme and the provisions of the Act does not disclose any legislative intention to make registration of copyright mandatory or to take away civil or criminal remedies in the event of non-registration of copyright. Stating that the ownership of the copyright is a logical consequence of authorship, the Full Bench observed that the question of applying for or making entries in the register of copyrights will arise only if there exists a work in which copyright subsists.

Referring to the observations in Mishra Bandhu Karyalaya (supra) as “obiter dicta”, the Full Bench held that the said case did not lay down the correct law. Commenting that it is the registration which follows the copyright and not vice-versa, the Full Bench ultimately answered the reference by holding that criminal prosecution of copyright is sustainable without any registration under Section 45 of the Act.

This issue again came up for consideration before the Calcutta High Court in Zahir Ahmed v. Azam Khan[14] in a petition seeking quashing of the criminal proceedings initiated under Section 63 of the Act in the absence of any copyright registration in favour of the complainant. Expressing its agreement with the observations of the High Courts of Madras, Calcutta, Allahabad Kerala and Delhi in Manojah Cine Productions (supra), Satsang (supra), Nav Sahitya Prakash (supra), R. Madhavan (supra) and Glaxo (supra), the Calcutta High Court reiterated that registration of Copyright is optional under the Act and not mandatory. Stating that registration is not a pre-requisite for acquisition of a copyright, the Court held that non-registration of copyright does not disentitle the copyright owner from instituting an action for infringement. It is pertinent to mention here that the decision of the Orissa High Court in Brundaban Sahu (supra) was also cited before the Calcutta High Court in this case. However, the Court did not agree with the same.

In Burroughs Wellcome (India) Ltd. v. Uni-Sole Pvt. Ltd. and Ors.[15], the Bombay High Court took a view that Section 45 of the Act is an enabling provision which provides for registration of work in which copyright exists. However, the Court held that, there is nothing under this Section or for that matter the Act to suggest that the registration is condition precedent to the subsistence of or acquisition of copyright. However, in Gulfam Exporters and Ors. V. Sayed Hamid and Ors.[16], while dealing with a petition seeking quashing of the criminal proceedings initiated inter alia under Section 63 of the Act in the absence of any copyright registration in favour of the complainant, the Bombay High Court ruled that in the absence of a copyright registration, criminal proceedings under the Act cannot lie. In doing so, the Court relied upon and expressed its agreement with the decision of the Orissa High Court in Brundaban Sahu (supra). The earlier decision of the Bombay High Court in Burroughs Wellcome (supra) was not brought to the Court’s notice in this case. The decision in Burroughs Wellcome (supra) was nevertheless cited with approval by the Bombay high Court in Asian Paints (I) Ltd. v. Jaikishan Paints & Allied Products[17].

In Rajesh Masrani Vs. Tahiliani Design Pvt. Ltd.[18], a Division Bench of the Delhi High Court, while expressing its agreement with the observations of the High Courts of Calcutta, Allahabad and Kerala in Satsang (supra), Nav Sahitya Prakash (supra) and R. Madhavan (supra), reiterated that registration of copyright is optional under the Act and not mandatory.

Then came the decision of the Bombay High Court (Nagpur Bench) in Dhiraj Dharamdas Dewani v. Sonal Info Systems Pvt. Ltd.[19], wherein, while referring to the decisions of High Courts of Madhya Pradesh, Kerala and Orissa in K.C. Bokadia (supra), R. Madhavan (supra) and Brundaban Sahu (supra) respectively, the Bombay High Court observed that in the context of Section 51 of the Act, the word “may” in Section 45(1) of the Act has to be read to mean that if an owner of a copyright is desirous of invoking the civil and criminal remedies under the Act, then he must have a copyright registration. The Court also observed that knowledge of ownership of copyright in a work cannot be attributed to an infringer unless the provisions of the Act regarding registration of copyright etc., are complied with. The Court then went on to observe that to hold otherwise can embroil an innocent person (not aware of copyright ownership or registration) in civil and criminal proceedings, which could never be the intention of the legislature.

It is pertinent to state here that the earlier decisions of the Bombay High Court in Burroughs Wellcome (supra) and Asian Paints (supra) were not brought to the Court’s notice in this case.

This decision was challenged before the Supreme Court of India by way of a Special Leave Petition (SLP). The Supreme Court dismissed the SLP stating that there is no error in the order passed by the Bombay High Court. That said, the Supreme Court decided to leave the question of law open for the future.

In Laxmi Snacks Pvt. Ltd. v. Akshar Food Products[20], this issue again cropped up before the Gujarat High Court in an appeal arising out of the dismissal of an interim injunction application. Referring to the decisions of various High Courts holding that the registration of copyright is not mandatory under the Act and also the decision of Bombay High Court in Dhiraj Dharamdas Dewani (supra) wherein a contrary view was taken, the Gujarat High Court remarked that, although the view taken by the Mumbai High Court appears to be attractive, the plaintiff cannot be non-suited only on the ground of non-registration. However, the Court did not go into this issue and merely observed that this issue is an arguable one which needs consideration.

 

The legislative intent

More often than not, the Courts endeavor to ascertain the legislative intent while interpreting any Statute and/or provision thereof with the aim of adopting a rule of construction which effectuates the legislative intent rather than one that may defeat it. Interestingly, while adjudicating the issue whether registration of copyright is mandatory under the Act, various High Courts have made guesses with regard to the possible legislative intent. However, one crucial development which goes to the core of this issue and discussed below, was never brought to the attention of any of the High Courts.

On October 01, 1955, the Copyright Bill, 1955 was introduced in the Rajya Sabha. Clause 65 of this Bill read as under:

  1. Jurisdiction of court over matters arising under this Chapter
  • Every suit or other civil proceeding arising under this Chapter in respect of the infringement of the copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.
  • No such suit or other proceeding regarding infringement of copyright in any work shall, after the commencement of this Act, be entertained unless the copyright is registered with the Registrar of Copyrights under this Act.

Thus, this Clause made registration of copyright mandatory to be legally enforceable.

This Bill was subsequently referred to a Joint Committee of the two Houses, which was assigned the task of examining the Bill and recommending necessary changes therein. On November 19, 1956, this Committee submitted its report to the Rajya Sabha along with the Copyright Bill, 1956 (as amended by the Joint Committee). As part of its report, the Committee suggested several changes in the Bill, including inter alia, the substitution of Clause 65(2) of the Bill with a new sub-clause. The Committee felt that the original Clause 65(2) virtually makes copyright registration compulsory and places an undue restriction on the owner of the copyright to exercise his rights. The Committee was also of the view that many authors are deterred from instituting infringement proceedings because the court before which such proceedings are to be instituted is situated at a considerable distance from the place of their ordinary residence. The Committee, accordingly, felt that this impediment should be removed and it must be provided that infringement proceedings may be instituted in the district court within the local limits of whose jurisdiction the person instituting the proceedings ordinarily resides, carries on business, etc.

The Copyright Bill, 1956, as amended and submitted by the joint committee, contained the following Clause 61 (in place of the original Clause 65 of the 1955 Bill):

“61. Jurisdiction of court over matters arising under this Chapter

  • Every suit or other civil proceeding arising under this Chapter in respect of the infringement of the copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.
  • For the purpose of sub-section (1), a “district court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908, or any other law for the time being in force, include a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person Instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.”

The aforesaid amendment suggested by the Joint Committee was accepted by both the Houses. Clause 61, as suggested by the Joint Committee, ultimately found its place in the Act in the form of Section 62. However, Section 62 tactically omitted sub-clause 2 of clause 61 while retaining the second part thereof as subsection (2) thereof. Section 62, therefore, reads as follows:

 

  1. Jurisdiction of court over matters arising under this Chapter.—

(1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.

(2) For the purpose of sub-section (1), and “district court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908, or any other law for the time being in force, include a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.

 

The sequence of events captured above in this section do not leave even an iota of doubt, if any, over the legislative intent regarding the requirement of registration of copyright under the Act. Had legislature intended that the registration of copyright is mandatory under the Act, there was no occasion for either House of Parliament to agree with the Clause 61 of the Copyright Bill, 1956, as amended and submitted by the joint committee and include the same as it is in the Act in the form of Section 62. This development, in fact, leaves no scope whatsoever for anyone to speculate about the legislative intent regarding the issue at hand.

 

India’s obligation under Berne Convention and TRIPS Agreement – A crucial aspect that cannot be lost sight of

There is yet another aspect to this issue, which is an important one.

The Berne Convention for the Protection of Literary and Artistic Works, 1886 (Berne Convention), to which India is a signatory, requires each and every contracting state to give equal protection to the works originating in one of the contracting states (that is, works the author of which is a national of such a State or works first published in such a State) as they grant to the works of its own nationals. What is important is that in terms of Article 5(2) of the Berne Convention, such a protection cannot be subjected to any formality by the contracting states.

Even the Agreement on Trade-related aspects of Intellectual Property Rights (TRIPS Agreement), to which India is a signatory, mandates all member states to comply with Articles 1 through 21 (except Article 6bis) of the Berne Convention, including Article 5(2) referred above.

Therefore, any interpretation suggesting that one must obtain a copyright registration in India to enforce it is something which goes against one of the very basic tenets of the Berne Convention and India’s obligation thereunder and TRIPs Agreement. Needless to state that the same must be avoided at all costs.

 

The road ahead

 

While most of the High Courts in India have rightly held that the registration of copyright is optional and not mandatory, there have been a few cases, as discussed above, where certain High Courts have taken a contrary view and have held that registration of copyright is mandatory for the purposes of enforcement. The conflicting judicial precedents do bring in an element of ambiguity and uncertainty on this crucial issue, as is evident from the observations of the Gujarat High Court in Laxmi Snacks (supra).

One would have expected the Supreme Court of India to conclusively decide this controversy for once and all in Dhiraj Dharamdas Dewani (supra). However, that did not happen. To make matters worse, the Supreme Court decided to leave this important question of law open, which is a perfect recipe for chaos in view of the contradictory judgements by the various High Courts and could very well result in more conflicting opinions in times to come. One can only hope that this issue would present itself for consideration again before the Supreme Court soon and unlike on the last occasion, the Supreme Court will conclusively decide this issue by taking into account the legislative intent and India’s obligations under the Berne Convention and the TRIPs Agreement.

Author: Deepak Gogia, Partner, K&S Partners | Intellectual Property Attorneys

Deepak handles all aspects of enforcement of trademarks and copyright. In connection with enforcement of trademarks and copyright, he regularly appears before various District and High Courts as well as the Supreme Court of India. He also handles transactional and advisory work relating to trademarks and copyrights. Deepak’s practice also comprises rendering advice on domain name disputes, IPR due diligence and issues relating to intermediary liability in India.

 

[1] AIR 1970 MP 261

[2] (1973) 2 MLJ 290

[3] AIR 1972 Cal 533

[4] (1972) Ker LR 536

[5] AIR 1976 Mad 22

[6] 1981 PTC 186

[7] 1979 CriLJ 757

[8] AIR 1981 All 200

[9] AIR 1984 Delhi 265

[10] AIR 1986 Ori 210

[11] AIR 1988 Ker 39

[12] MANU/AP/0276/1987

[13] 1996 JLJ 63

[14] 1996 CriLJ 290

[15] 1999 (19) PTC 188 (Bom)

[16] 2000 (20) PTC 496 (Bom)

[17] (25) PTC 735 (Bom)

[18] 2009 (39) PTC 21

[19] 2012 (52) PTC 458 (Bom)

[20] MANU/GJ/1277/2015

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