Supreme Court's Interpretation of Special Jurisdiction Provisions in IPRS v. Sanjay Dalia

On July 1, 2015, the Supreme Court pronounced its verdict in the much awaited case of IPRS v. Sanjay Dalia where the issue was the interpretation of the special jurisdiction provisions, namely Section 62 of the Copyright Act, 1957 and 134 of the Trademarks Act, 1999. The Court held that if the cause of action incidentally arises at a place where the principal office of the plaintiff is located, the plaintiff cannot rely upon Sections 62/134 to institute a suit at a place where its branch office is located.

Reproduced below are the provisions in question:

62. 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), a "district court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 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.” 

134. Suit for infringement, etc., to be instituted before District Court. -- 

(1) No suit-- (a) for the infringement of a registered trade mark; or (b) relating to any right in a registered trade mark; or (c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit. 

(2) For the purpose of clauses (a) and (b) of sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 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 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. 

It is clear from both provisions, which are identical in all material respects, that they provide additional jurisdictional remedies over and above the conventional options available to a plaintiff under Section 20 of the Code of Civil Procedure, 1908. The central issue before the Court was the interpretation of the phrase “carries on business” used in both provisions, which has a bearing on the following scenarios:

1.       Can a place where the branch office of the plaintiff is located, in the absence of a cause of action which has arisen in such place, be treated as a place where the plaintiff corporation “carries on business”?

2.       In a situation where a cause of action has arisen at the place where the branch office is located, is the plaintiff barred from instituting a suit at a place where he has his registered/principal office because no cause of action has arisen there? In other words, does the Plaintiff not have the option of choosing between the principal/registered place of business, and the branch office where the cause of action has arisen in whole or in part?

In order to address these scenarios, it is imperative to understand the construal of the Explanation to Section 20 of the CPC since it spells out the meaning of “carries on business”. Reproduced below is Section 20 with the Explanation:

20. Other suits to be instituted where defendants reside or cause of action arises.- Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction—

(a) The defendant, or each of the defendants where there are more than one, at the time of the commencement of the Suit, actually and voluntarily resides, or carries on business, or personally works for gain; or

(b) any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or

(c) the cause of action, wholly or in part, arises.

Explanation: A corporation shall be deemed to carry on business at its sole or principal office in India or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place.

The phrase “carries on business” in the Explanation has been interpreted in two other decisions of the Supreme Court, namely Patel Roadways v. Prasad Trading and New Moga Transport v. United India Assurance. In Para 10 of New Moga Transport, the Court held thus:

“10. On a plain reading of the Explanation to Section 20 CPC it is clear that the Explanation consists of two parts: (i) before the word “or” appearing between the words “office in India” and the words “in respect of”, and (ii) the other thereafter. The Explanation applies to a defendant which is a corporation, which term would include even a company. The first part of the Explanation applies only to such corporation which has its sole or principal office at a particular place. In that event, the court within whose jurisdiction the sole or principal office of the company is situate will also have jurisdiction inasmuch as even if the defendant may not actually be carrying on business at that place, it will be deemed to carry on business at that place because of the fiction created by the Explanation. The latter part of the Explanation takes care of a case where the defendant does not have a sole office but has a principal office at one place and has also a subordinate office at another place. The expression “at such place” appearing in the Explanation and the word “or” which is disjunctive clearly suggest that if the case falls within the latter part of the Explanation it is not the court within whose jurisdiction the principal office of the defendant is situate but the court within whose jurisdiction it has a subordinate office which alone has the jurisdiction “in respect of any cause of action arising at any place where it has also a subordinate office”.”

In light of this ratio and after having extensively reviewed the object of Sections 62/134, the Supreme Court in IPRS rightly observed that these special jurisdiction provisions are exceptions to Section 20 of the CPC only in so far as they permit the plaintiff to sue at a place of his residence or where he works for gain or carries on business. In other words, the provisions are not to be construed as granting cartes blanches to the plaintiff since there are limitations/riders which apply to the plaintiff’s ability to sue even under Sections 62/134. This sentiment finds express endorsement in Para 16 of the decision.

In reading in limitations into the provisions, the Court relied upon the spirit of convenience of parties which is embodied in the Explanation to Section 20. According to the Court, keeping with the spirit of the Explanation, unless a cause of action arises at a place where the branch office of the plaintiff is located, it cannot be deemed as a place where the plaintiff “carries on business” for the purposes of Sections 62/134. In the absence of such a qualification, plaintiff corporations with branch offices in far flung places could harass defendants by suing them at such places despite the cause of action not having arisen there. Simply put, the convenience of defendants has not been entirely done away with by Sections 62/134 since balance is struck by using cause of action as the parameter to determine jurisdiction in so far as the branch office of the plaintiff is concerned.

Viewed from another angle, the underlying rationale is that a branch office has not been accorded the same status under law as a principal place of business for the purposes of jurisdiction. Consequently, a branch office needs to be supplemented by a cause of action for it to be deemed in law as a place where the plaintiff "carries on business". In fact, under Sections 62/134, the place where the branch office is located is the only appropriate place for the plaintiff to sue when the cause of action has accrued there. This approach strikes a balance between the convenience of the plaintiff and the defendant since the assumption is that the branch office makes it convenient for the plaintiff to sue, and the accrual of the cause of action in that place means the defendant’s goods are being sold there and therefore it is not inconvenient for him to defend himself.

Based on this logic, following are the practical jurisdictional consequences:

1.       If the principal place of business of the plaintiff is at X, and the cause of action has arisen at Y where there is no branch of office, Plaintiff may sue at X based on Sections 62/134, and at Y based on Section 20(c) of the CPC.

2.       If the principal place of business of the plaintiff is at X, and the cause of action has arisen at Y where there is a branch office, Plaintiff may sue only at Y, not X, if the suit relates to the said cause of action.

3.       If the principal place of business of the plaintiff is at X, and the cause of action has arisen at Y, and branch office is at Z, then plaintiff may rely on Sections 62/134 to sue at X and Section 20(c) of the CPC to sue at Y, but cannot sue at Z under any circumstances invoking Sections 62/134 or Section 20.

There is another scenario which is possible. The plaintiff could have its principal place of business at X and a single defendant may give rise to two causes of action simultaneously at Y (where there is a branch office), and Z (where there is no branch office). In so far as Y is concerned, the plaintiff cannot sue at X or Z, going by the ratio of the IPRS. Further, with respect to the cause of action at Z, the plaintiff may sue either at X based on Sections 62/134 or Z based on Section 20(c). However, both causes of action, namely with respect to Y and Z, cannot be combined in a composite suit since the ratio of the Supreme Court’s decision in Dhodha House would come in the way.

Comments and clarifications are welcome. 

Nature of IPAB’s Jurisdiction

The following is an excerpt from a decision of the IPAB dated July 26, 2011:

“25.  The IPAB has its permanent sitting at Chennai and holds its sittings in Circuit at Delhi, Mumbai, Kolkata and Ahmedabad. The power vested in the High Courts to exercise judicial superintendence over the decisions of all courts and tribunals when their respective jurisdiction has been upheld. The orders of the IPAB are subject to the High Court’s power of judicial review. The High Court which exercises this judicial superintendence is that High court within whose territorial jurisdiction the IPAB sits while issuing its order. Therefore, if an order is passed by the IPAB while sitting in Delhi, the aggrieved party applies to the Hon’ble Delhi High Court to correct the order and so on.  But as regards the question which High Court’s decision binds us, the answer must be that we are bound by the judgements of all the High Courts. Unlike Tribunals which have separate Benches for each zone and therefore bound by the jurisdictional High Court, Intellectual Property Appellate Board exercises its jurisdiction all over India but only sits in Circuit. Therefore, to follow the jurisdictional High Court rule would lead to an anomaly. For example, ‘A’ filing a suit against ‘B’ for infringement of its trade mark will, in respect of the same trade mark, be forced to get leave, of the court before whom the suit for infringement is filed, to file rectification proceedings if the suit is filed in the Hon’ble Delhi Court or anywhere within the jurisdiction of the Hon’ble Delhi Court and it need not seek leave of the court if the suit is filed in the Hon’ble Madras High Court or anywhere within the jurisdiction of the Hon’ble Madras High Court. This is an anomalous situation and will not be logical.

26.              Then again the same persons who comprise the Bench will speak in “different voices” depending on whether they are sitting in Delhi or in Chennai. This leads to confusion and uncertainty, and if anything law has to be certain.”

The decision and the above-excerpt were brought to my attention by a well-wisher of the blog. The first portion of the excerpt (in bold and italics) captures well the nature of jurisdiction exercised by the IPAB, which is a mix of “subject-matter” and territory-based jurisdictions. Being a body which has been expressly and exclusively constituted as an appellate body over the decisions of the Patent and Trademark registries, the scope of the subject-matter which triggers the jurisdiction of the IPAB is crystal clear.

What is also clear is that although the IPAB has its permanent seat in Chennai, its various circuit benches sit in appeal over the decisions of the corresponding patent and trademark registries. In other words, a decision of the Delhi branch of the Indian Patent Office may be scrutinized in appeal only by the Delhi Bench of the IPAB. To this extent, the excerpt makes sense.

However, the subsequent underscored portion appears to be an argument of convenience which directly contravenes the pronouncement of the Supreme Court in E.I.Commercial Co. v. Collector of Customs (A. 1962 S.C.1895). In this case, the Supreme Court had held that the law declared by a High Court would be binding on all inferior courts as well as tribunals within the State.

The law on this point as laid down by the Supreme Court does not change merely because the same set of people (members of the IPAB) are subject to different High Courts depending on where the sitting is held. This is because the IPAB, when holding a sitting within the jurisdiction of a particular High Court, has no option but to follow the law as laid down by that High Court.

Further, the members of the IPAB are merely human agents who speak on behalf of the Tribunal, they are not the Tribunal themselves. The Tribunal is a body corporate with a permanent seal, which is bound by the doctrine of stare decisis which binds all sub-ordinate courts and tribunals to the High Court. Therefore, when members of the IPAB speak, they do not voice their personal views, they voice the views of a particular circuit bench of the IPAB which is bound by the law as spelt out by the High Court of that State.

If this were not the case, the situation would be that all lower Courts would follow the law laid down by the High Court, except the IPAB circuit bench. This is not just an anomaly, but is actually contempt and unconstitutional.

Since High Courts themselves are at liberty to differ with each other on the interpretation of a provision which is equally applicable to all States (for instance in central legislations), the premise underlying the IPAB’s reasoning lacks legal sanction and factual basis. Merely because IP laws are uniformly applicable throughout the country, it does not take away the prerogative of different High Courts to take differing, even contradictory views on the law. The tribunals/benches of tribunals which fall within the territory of High Courts, have no option but to apply the law as interpreted by their respective High Courts.

Domestic Courts and "Foreign" Infringement: What is the Law?- II

In the previous post, Mihir Naniwadekar had examined the background to the Mocambique rule, and he now analyses the decision of the UK Supreme Court where issues pertaining to the applicability of the rule to intellectual property arose.

In Lucasfilm, Counsel for the Appellant before the Supreme Court, Jonathan Sumption QC, framed the issue narrowly: the court notes, “the appellants do not take issue with the application of the Moçambique rule to intellectual property so far as it is limited to patents and other intellectual property rights dependent on the grant or authority of a foreign State, and to cases where what is in issue is the validity of the patent, as opposed to its infringement.”

By framing the issue thus, counsel was able to steer the Court away from concerns over the act of state doctrine, and concerns over comity. Indeed, in the facts, this narrow proposition would also be sufficient for the appellants, for on the facts (as emerging from Mann J’s judgment at first instance), “the substantial dispute has always been about the ownership of the relevant copyrights and their infringement rather than about their subsistence.”

[The detailed facts are interesting in their own right, especially for Star Wars fans, but for the purposes of our present discussion an elaboration of the facts would serve no purpose other than lengthening an already long post. The interested reader should refer to the judgment of Mann J. at first instance, which is reported in (2008) EWHC 1878 (Ch)]

The Respondents argued that the Mocambique rule, as extended in Hesperides, was still good law; and continued to apply to “claims for infringement of all foreign intellectual property rights, including copyright, because such claims are essentially local”. Consequently, it was argued that such claims “must be brought in the place where the rights have been created, irrespective as to whether there is any claim to title…”

The Supreme Court rejects this argument in an illuminating passage quoted below (from the combined judgment of Lord Walker and Lord Collins):

“We have come to the firm conclusion that, in the case of a claim for infringement of copyright of the present kind, the claim is one over which the English court has jurisdiction, provided that there is a basis for in personam jurisdiction over the defendant… It is clear that much of the underpinning of the Moçambique rule and the decision in Potter v Broken Hill Pty Co Ltd has been eroded… 

The basis for what remains of the rule was said by the House of Lords in the Moçambique case to be that controversies should be decided in the country of the situs of the property because the right of granting it was vested in ‘the ruler of the country’ and in the Hesperides case to be the maintenance of comity and the avoidance of conflict with foreign jurisdictions. It is possible to see how the rationale of the Mocambique rule can be applied to patents, at any rate where questions of validity are involved.

For example the claims might touch on the validity of patents in sensitive areas, such as armaments, and that no doubt is part of the rationale for article 22(4) of the Brussels I Regulation. But it is very difficult to see how it could apply to copyright. It is true that copyright can involve delicate political issues.

Thus in a very different context Brightman J had to deal with the international consequences for copyright protection of the samizdat circulation in the Soviet Union of Solzhenitsyn's August 1914 without having been passed by the Soviet censor: Bodley Head Ltd v Flegon [1972] 1 WLR 680.

But such cases can be dealt with by an application of the principles of public policy in appropriate cases…There is no room for the application of the act of state doctrine in relation to copyright in this case, even if (contrary to the view expressed above) actions of officials involved with registration and grant of intellectual property rights were acts of state.

The requirement to apply for copyright registration in the United States is limited to the "copyright in any United States work" which in practice means that published works first published outside the United States are exempted from compliance with US registration provisions.

In the present case the copyrights were treated as United States works and were registered. Registration is a pre-requisite to proceedings in the United States: United States Copyright Act, section 411. But the unchallenged evidence before the judge in this case was that registration was not a prerequisite to subsistence but only to suit, and it was possible to register at the time of suit. Consequently the provision is purely procedure…”

The Court thus held that Tyburn was wrongly decided and that in personam jurisdiction could be sufficient to bring an action for infringement of a foreign copyright. The case also highlights the conceptual problems with applying real property based reasoning to intellectual property, and further indicates that the differences between the type of intellectual property in question require nuanced consideration.

Insofar as infringers are concerned, beware: in some cases, the long arm of the law is so long that it can extend to overseas infringement also!

Domestic Courts and "Foreign" Infringement: What is the Law?- I

I am happy to bring these series of guest posts from Mihir Naniwadekar, a good friend of mine whose mind I have immense regard for. Mihir passed out of National Law School, Bangalore last year and has been practicing before the Bombay High Court. 

Mihir is a prolific blogger himself who, besides running his own blog, is also a contributor to the Indian Corporate Law blog. Without much ado, here are Mihir’s thoughts on a domestic court’s power to exercise its jurisdiction over a person resident within its territory for acts of infringement committed in a foreign land.

Domestic Courts and "Foreign" Infringement: What is the Law? 

Does a domestic Court have the jurisdiction to enforce a foreign copyright on the basis of in personam jurisdiction over the alleged infringer? This seemingly straightforward question was at the heart of the matter in a recent decision of the United Kingdom Supreme Court in Lucasfilm v. Ainsworth [2011]UKSC 39.

The case also involved intricate issues over the interpretation of UK statutes; this series of posts, however, discusses only the private international law issue.

The issue was this: “whether the English court may exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed outside the European Union in breach of the copyright law of that country?” The Court of Appeal had held that foreign copyrights are not justiciable in an English court, on account of the Mocambique principle.

By way of some background, it will be useful to note that the Mocambique rule was one which developed in the context of land (thus, in a sense, Lucasfilm involved intricate questions over how far intellectual property is similar to other (real) types of property). The Mocambique rule refers to the rule in British South Africa Co v Companhia de Mocambique [1893] AC 602.

In the words of Dicey & Morris (Rule 39, 1^st edition, 1896), this case was cited as the main authority for the proposition that an English Court “has no jurisdiction to entertain an action for (1) the determination of the title to, or the right to the possession of, any immovable situate out of England … or (2) the recovery of damages for trespass to such immovable…”

Since then, the rule has been elevated to gospel – actions for enforcement of rights in relation to immovable property lie (subject to some exceptions) in the Court within whose jurisdiction the property is situated.

But, where is intellectual property situated? This question started troubling the Courts early in the 20^th century, and cases such as Potter v Broken Hill Pty Co Ltd [1905] VLR 612 appeared to extend the Mocambique rule to actions for infringement of patents. Potter was a case where the question of title was involved; however, in Hesperides Hotels Ltd v Aegean Turkish Holidays Ltd [1979] AC 508, the Mocambique rule was applied in where no question of title to the property was involved.

Lord Wilberforce’s judgment in Hesperides effectively stated that it was for Parliament to change the law. This, Parliament did promptly: Section 30(1) of the Civil Jurisdiction and Judgments Act 1982 confirmed the jurisdiction of English Courts to entertain suits in relation to property outside England, “unless the proceedings are principally concerned with a question of the title to, or the right to possession of, that property.”

How far these Hesperides developments applied to intellectual property remained controversial, however, for Section 30(1) expressly dealt only with immovable property. By the early 1990s, the cases seemed to suggest that it was not possible to bring an action in England for enforcement of a foreign copyright.

For instance, Dicey & Morris stated in their 12^th edition, “Nor can the holder of a French patent, trade mark or copyright sue in England for its infringement in France. Since the French patent, trade mark or copyright is territorial in its operation… the act complained of would not be a tort if committed in England…”

This was confirmed in Tyburn Productions Ltd v Conan Doyle [1991] Ch 75, where it was held that it was not possible to sue in England for infringement of United States copyright. Now, it can be seen that the basis of the statement in Dicey & Morris (12^th edition) is that “the act complained of would not be a tort in England…”

This implies that in such cases, the proper law is the law of England, and not the law of the place of infringement. This was changed by the Private International Law (Miscellaneous Provisions) Act, 1995. In principle, the law of the place of infringement would be the applicable law. Despite this, in Coin Controls Ltd v Suzo International (UK) Ltd [1999] Ch 33, Laddie J. held that “the court had no jurisdiction to try claims for infringement of German and Spanish patents…”

One reason for this view is that a patent involves the grant of a right dependant on the grant of authority by a State. In such a case, a foreign Court examining the validity of the patent (as opposed to merely determining issues of infringement) would amount to an examination of the sovereign acts of a foreign state.

This would, perhaps, be seen as militating against the comity of nations, a principle of some importance in private international law.

Given this background, the next post will examine the decision of the Supreme Court in Lucasfilm. 

Guest Post: Legitimate Rights of a Copyright (and trade mark) Owner

We bring to you a pithy guest post on Section 62 of the Copyright Act from Sneha Jain, an associate from a leading NCR-based law firm. In this post, it is submitted that Section 62 allows even a non-copyright owner to institute a proceeding for infringement under the Act so long he has an actionable interest. Without further ado, below is Sneha’s take on the issue.

Legitimate Rights of a Copyright (and trade mark) Owner

Why is an IP owner’s cause always a politically incorrect one? Why is any interpretation of the law which protects the legitimate interest of IP owners projected in poor light? Is it probably because we are yet to come out of our socialist mind-set or is it because we think making money is an evil thing?

One of our primary duties as people who encourage public discourse in a niche area such as IP law is to present  honest views, regardless of their political correctness so long as they are supported by legislative intent as reflected in the statute.

My statements above may appear harsh to many but the reason for my harshness is the unending and legislatively unsubstantiated debate on the interpretation of Sec. 62 of the Copyright Act, 1957 (and the identical Sec. 134 of the Trade Marks Act, 1999).

Until now, the raging issue regarding Section 62 was whether the place where the plaintiff “carries on business” should also be the place where the “cause of action” has arisen in order for him to successfully claim jurisdiction under this section. In other words, whether the element of cause of action under the Code of Civil Procedure, 1908 (CPC) should be read into S.62 to avoid it being “misused” by “Money Powers” allegedly resulting in forum shopping?

Thankfully, this controversy has been put to rest by the Supreme Court’s decision in Exphar SA & Anr. v. Eupharma Lab. Ltd. & Anr (2004) where the court categorically held that “S.62 prescribes an additional ground for attracting the jurisdiction of a court over and above the ‘normal’ grounds as laid down in S.20 of the CPC.” 


While the Delhi High Court (Archie Comic Publications Inc. v. Purple Creation) continues to interpret this section without considering the Apex Court's ruling, the Madras High Court (Wipro Ltd. & Anr. v. Oushadha Chandrika Ayurvedic) has put to rest the issue following the Supreme Court’s unequivocal pronouncement of the law of the land.

But now, a new and totally unnecessary controversy seems to have riddled this section – who can institute a suit for copyright infringement under Sec. 62? Some believe that since it is the owner of copyright (which includes the exclusive licensee) who is entitled to remedies as per Sec.55 of the Copyright Act, it is the owner of copyright/exclusive licensee alone who is entitled to institute a suit under Sec. 62. 

According to this school of thought, since the owner of copyright is a foreign entity which has no Indian base, it has no place to “carry on business”, and therefore cannot invoke Section 62.  

Sec. 62 has been held to be a self-contained code so far as the jurisdiction in relation to matters arising under the Copyright Act is concerned (Ritiki Limited v. Pramod Kumar). Consequently, the question of who can claim the benefit of Sec. 62 can be answered by reference to the provision itself. For ease of reference:

62. 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), 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.

A clear, open-eyed, sensible reading of Sec. 62 tells us that it does not refer to the owner of copyright AT ALL! The phrase used is “the person instituting the suit” as opposed to “the owner of copyright”. This implies that Sec. 62 does not restrict the right to institute legal proceedings for copyright infringement to the owner of copyright alone. The “person instituting the suit” may be an agent so authorised by the owner of copyright to institute infringement proceedings.

This interpretation finds support in the case of Phonographic Performance Limited v. Lizard Lounge & Ors.(Delhi HC, 2008) where the rights of a Copyright Society to institute a suit in its own name, for infringement of copyright of its members, was questioned before the Division Bench of the Delhi High Court. 

The Single Judge had concluded that the provisions of Sec. 55 of the Copyright Act confers the right for seeking a remedy against infringement only by the owner of copyright, the expression “owner of copyright” having been defined in Section 54 to include an exclusive licensee. Thus, since a Copyright Society is not an exclusive licensee, it was held not to have a right to institute legal proceedings.

Reversing this decision, the Division Bench stated –

“if we were to accept the reasoning of the learned single Judge, it would imply that the principles of agency as contained under the Indian Contract Act, 1872 have to be given a go-bye. The Copyright Society is an agent appointed under the agreement by the owner of the Copyright and specific powers have been conferred on the agent to institute legal proceedings. The said Act does not contain any provision prohibiting the institution of legal proceedings in derogation to the general law of agency. The author being the first owner of Copyright under Section 17 of the said Act can certainly appoint an agent to institute legal proceedings.”

Moreover, S.62 gives absolutely no importance to the geographical location of the owner of copyright while determining jurisdiction.  For the purposes of jurisdiction under Sec. 62, it is the geographical location of “the person instituting the suit or other proceeding” which matters. 

Consequently, even if the owner of copyright is a foreign entity and has no base in India, its geographical location is irrelevant and it is the Indian subsidiary’s place of business (i.e. the place of business of the person instituting the suit) that is essential to determine jurisdiction. 

The Supreme Court in Exphar has clarified this in beautifully articulated words as follows:

“The appellant No. 2 (who had a manufacturing contract with appellant No. 1, the owner of copyright) is certainly ‘a person instituting the suit’. The Division Bench went beyond the express words of the statute and negatived the jurisdiction of the Court because it found that the appellant No. 2 had not claimed ownership of the copyright of the trade mark, infringement of which was claimed in the suit. The appellant No. 2 may not be entitled to the relief claimed in the suit but that is no reason for holding that it was not a person who had instituted the suit within the meaning of Section 62(2) of the Act.” (emphasis added)

Thus, it is clear that the Supreme Court has laid to rest, both the controversies surrounding Sec. 62 – (a) Sec. 62 Copyright Act cannot be circumscribed by reference to Sec. 20 CPC, and (b) jurisdiction is to be determined not by reference to the place of business of the owner of copyright, but by reference to the place of business of the “person instituting the suit”.

I thank Sai Deepak for sharing his views on the issue with me.