Sri Beeran Kutty Moozhikkal v. Nimil K.K

## **IN THE HIGH COURT OF KERALA AT ERNAKULAM** ## **PRESENT** **THE HONOURABLE MR. JUSTICE P.SOMARAJAN** **WEDNESDAY, THE 7[TH] DAY OF DECEMBER 2022 / 16TH AGRAHAYANA, 1944** **FAO NO. 148 OF 2022** **AGAINST THE ORDER IN IA 03/2022 IN O.S.(COPYRIGHT)NO.37/2022 DATED 02/12/2022 OF ADDITIONAL DISTRICT COURT- VII, ERNAKULAM** ## **APPELLANT/RESPONDENT/DEFENDANT:** **SRI.BEERAN KUTTY MOOZHIKKAL, S/O.KUNHALAVI HAJI, AGED 68, MOOZHIKKAL, K.PURAM P.O., THANALUR, MALAPPURAM, KERALA- 676307** **BY ADVS.S.SREEKUMAR (SR.) P.MARTIN JOSE P.PRIJITH THOMAS P.KURUVILLA R.GITHESH AJAY BEN JOSE MANJUNATH MENON ANNA LINDA V.J SACHIN JACOB AMBAT HARIKRISHNAN S.** ## **RESPONDENT/PETITIONER/PLAINTIFF:** **SRI. NIMIL K.K, PROPRIETOR, M/S.NIEL ENTERTAINMENT, 1ST FLOOR, HEAVEN PLAZA BUILDING, PALARIVATTOM, ERNAKULAM - 682025** **THIS FIRST APPEAL FROM ORDERS HAVING COME UP FOR ADMISSION ON** **07.12.2022, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING:** **FAO NO. 148 OF 2022** **2** ## **JUDGMENT** The defendant/counter petitioner came up dissatisfied by the order of injunction granted by the trial court pertaining to the use of an Aquarium brought up and styled as an UNDERWATER MOBILE GLASS TUNNEL. It is, in fact, a tunnel made up of glass filled with water and fishes including weeds used for the purpose of exhibition. The plaintiff's case is that they are the instrumentality for the abovesaid work that an Aquarium in the form of a tunnel made up of glass filled with water, fishes and weeds etc. and as such they applied for getting registration under the Designs Act, 2000 and it is pending consideration. In the meanwhile, the defendant adopted the same method of preparation of a glass tunnel in the same format, same design by filling water with living fishes and weeds and hence sought to injunct them on the allegation of infringement of copyright. At first, notice was issued and a Commission was also let out, who, in turn, prepared a report and submitted showing that the works of plaintiff and the defendant are **FAO NO. 148 OF 2022** **3** similar in nature in almost all respects. The trial court, in fact, on receiving the Commissioner's report passed an order of interim injunction restraining the defendant from using the glass tunnel in the form of an Aquarium, against which he came up. Based on the case advanced and report submitted by relying on the decision of this Court in FAO No.151/2019, dated 13.01.2020, the decision of the Delhi High Court in _**Microfibres Inc. and Ors v. Girdhar and Co. and Ors.,**_ _(_ Manu/DE/0647/2009)and the decision of the Apex Court in _**Bharat Glass Tube Limited v. Gopal Glass Works Limited (AIR 2008 SC 2520),**_ extensive arguments were made in relation to what actually amounts to Copyright, infringement of copyright and the matters which would come under the purview of The Designs Act, 2000. 2. Several questions were taken up during the course of argument by the learned Senior Counsel for the appellant Sri. S.Sreekumar and the learned Senior Counsel for the respondent Sri. Nandakumar E.K. including the question as to what actually amounts to **FAO NO. 148 OF 2022** **4** a 'design' as enumerated under the Designs Act and what actually amounts to Copyright or infringement thereof, is there any overlapping between the two Acts, the provisions contained in the Copyright Act as well as the Designs Act and also the question of jurisdiction. In order to address these questions, at first there should be some understanding with respect to Section 22 of the Designs Act, which is extracted below for reference. _22._ _**Piracy of registered design.-** (1) During the existence of copyright in any design it shall not be lawful for any person-_ _(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or_ _(b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or_ _(c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article._ _(2) If any person acts in contravention of this section, he shall be liable for every_ **FAO NO. 148 OF 2022** **5** _contravention-_ _(a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or_ _(b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly:_ _Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed fifty thousand rupees:_ _Provided further that no suit or any other proceeding for relief under this sub-section shall be instituted in any court below the court of District Judge._ _(3) In any suit or any other proceeding for relief under sub-section (2), every ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence._ _(4) Notwithstanding anything contained in the second proviso to sub-section (2), where any ground on which the registration of a design may be cancelled under section 19 has been availed of as a ground of_ _defence under sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceedings shall be transferred by the Court, in which the suit or such other proceeding is pending, to the High Court for decision._ _(5) When the court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs.”_ 3. It is based on Section 15(2) of Copyright Act, it was submitted by the learned Senior Counsel for the respondent/plaintiff that the matter would come under **FAO NO. 148 OF 2022** ## **6** the purview of jurisdiction of District Court pertaining to the artistic work which is the basis for the construction or implementation of a tunnel shaped Aquarium. Section 15 of the Copyright Act is also extracted below for reference. “ _**15. Special provision regarding copyright in designs registered or capable of being registered under the (Note: Words "Indian Patents and" omitted by Act 23 of 1983, S.7 (w.e.f.9-8-1984) Designs Act, 1911.-**_ _(1) Copyright shall not subsist under this Act in any design which is registered under the (Note: Words "Indian Patents and" omitted by Act 23 of 1983, S.7 (w.e.f.9-8-1984) Designs Act, 1911 ( 2 of 1911)._ _(2) Copyright in any design, which is capable of being registered under the (Note: Words "Indian Patents and" omitted by Act 23 of 1983, S.7 (w.e.f.9-8-1984) Designs Act, 1911 ( 2 of 1911), but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his license, by any other person_ .” ## 4. Going by Subsection (1) it is clear that there is an exclusion clause dealing with the jurisdiction of the form framed under the Act. Subsection (2) in as **FAO NO. 148 OF 2022** ## **7** much as gives some sort of confusion as to what amounts the 50 times made mentioned in that provision. Anyway this was elaborately considered by this court in FAO No.151/2019, dated 13.01.2020 as well as the High Court of Delhi in **Microfibres Inc. and Ors v. Girdhar and Co. and Ors** . (Manu/DE/0647/2009), which were relied on by the petitioner/plaintiff. 5. Going by the abovesaid decision and also going by the provision, it is well clear that it is pertaining to copyright and designs which is capable of being registered under the Designs Act, 2000 but which has not been so registered. What is mandated therein is that the copyright will stand cease on reproduction of the article more than 50 times with its design by any industrial process by the owner of the copyright or the licensee under him. Necessarily Section 15 should be read not in isolation but with Section 14 wherein the meaning of copyright is explained which is also extracted below for reference. “ _**14. Meaning of copyright-** For the purposes of this Act, "copyright" means the exclusive right subject to the provisions of this Act, to do or authorize the doing of any of the following acts in respect of a work or any_ **FAO NO. 148 OF 2022** **8** _substantial part thereof, namely :-_ _(a). in the case of a literary, dramatic or musical work not being a computer programme,-_ _(i). to reproduce the work in any material form including the storing of it in any medium by electronic_ _means,_ _(ii). to issue copies of the work to the public not being copies already in circulation,_ _(iii). to perform the work in public, or communicate it to the public,_ _(iv). to make any cinematograph film or sound recording in respect of the work,_ _(v). to make any translation of the work_ _(vi). to make any adaptation of the work_ _(vii). to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub clauses (I) to (vi)_ _(b). in the case of a computer programme-_ _(i). to do any of the acts specified in clause (a)_ _(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme:_ _provided that such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental.]_ _(c). in the case of an artistic work,-_ _(i). to reproduce the work in any material form including -_ _(A) the storing of it in any medium by electronic or other means; or_ _(B) depiction in three – dimensions of a two dimensional work; or_ _(C) depiction in two – dimensions of a three dimensional work; ]_ _(ii). to communicate the work to the public;_ **FAO NO. 148 OF 2022** **9** _(iii). to issue copies of the work to the public not being copies already in circulation_ _(iv). to include the work in any cinematograph film,_ _(v). to make any adaptation of the work_ _(vi). to do in relation to an adaptation of the work any of the acts specified in relation to the work in sub clauses (i) to (iv)_ _(d). in the case of a cinematograph film-_ _i.To make a copy of the film, including-_ _(A) a photograph of any image forming part thereof; or_ _(B) storing of it in any medium by electronic or other means; ]_ _(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the film;]_ _(iii). to communicate the film to the public_ _(e). in the case of a sound recording-_ _(i). to make any other sound recording embodying it, (including storing of it in any medium by electronic or other means];_ _(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the sound recording;]_ _(iii). to communicate the sound recording to the public_ _-_ _**Explanation** For the purposes of this section, a copy which has been sold once shall be deemed to be a copy already in circulation.]”_ 6. A whole reading of Section 14 would give an impression that it is pertaining to introduction of a new artistic work or the like or any cinematic work or any artistic performance and its adaptation etc. and it will include a computer programme also. A conjoint **FAO NO. 148 OF 2022** **10** reading of Sections 14 and 15 of the Act would show that the core ingredient which constitutes a matter which would come under the purview of Copyright Act is nothing else, the inclusion of artistic work. It may be either in the form of a cinematic work or any other form or a written literature or the like. Necessarily what has to be established or satisfied is the adaptation or the imitation of the artistic work of the plaintiff by the defendant. It may not be identical in all respects and when there is similarity it would constitute and satisfy the requirement. But as discussed earlier, it must be with respect to the literary work or artistic work or any work akin to that. What is involved in the present case is the construction of a glass tunnel in the form of an aquarium for the purpose of exhibition. The shape of all tunnels should be in the form of a half oval shape in all cases and it can be taken note of by this court judicially and what is constructed by the plaintiff is also a tunnel in its half oval shape. There is no deviation from the natural sequence or shape of an **FAO NO. 148 OF 2022** ## **11** ordinary tunnel but it was made up of glass filled with water and fishes and sea weeds etc.. Then arises the crucial question of involvement of any artistic work. Except the fact that there is a scientific adaptation in the manufacture of a glass tunnel and it was prepared in the form of a glass tunnel, an aquarium intended for exhibition, nothing was brought to the notice of this court so as to bring the matter within the sweep of an artistic work or any work akin to that. Anyway it requires consideration by the trial court by trial and by evidence. That stage so far not attained. As discussed earlier, the right of the plaintiff would rest on the question of that particular core issue regarding the existence or creation of an artistic work or literary work or any work of like nature. I am afraid, prima facie it appears that a mere construction of a tunnel by using glass so as to make a glass aquarium would not come under the sweep of an artistic work or a work of like nature. Anyway that question is left open for consideration by the trial court at the proper stage, **FAO NO. 148 OF 2022** **12** ie after the evidence. 7. Yet another question was also brought to the notice of this court with respect to the jurisdiction under Section 22 of the Designs Act, which gives exclusive jurisdiction to the High Court to deal with the matter. An appeal against the order of Commissioner would also lie before the High Court under Section 36 of the Act. In fact, an exclusive jurisdiction is given to the High Court, but there is no non obstante clause incorporated or a prohibition in maintaining a suit before a District Court or a Subordinate court. The procedure to be adopted is that on receipt of the suit when such contention was taken up and found affirmatively, the entire file has to be transmitted to the High Court with reasons thereof by the Subordinate court wherein the proceedings were initiated. That question is also left open for consideration by the trial court at the relevant stage. 8. In so far as interim injunctions are concerned pertaining to Copyright Act or trademark, the court **FAO NO. 148 OF 2022** **13** should be more cautious and vigilant and an order of injunction can be granted only by way of exception and the courts shall not be in rush in the grant of interim order of injunction. The court must be slow in granting temporary injunction pertaining to Trademark, Copyright and designs either registered or unregistered. The existence of a prima facie case is not the sole criteria. It must be satisfied that the injunction sought if not granted would result in irreparable injury to the plaintiff, for which necessarily, the injury that may be likely to be caused by the injunction to the opposite party should also be taken into consideration by striking a balance. If the injury that may be caused to the opposite party is considerable in size than the one likely to be caused to the plaintiff and in the absence of a sufficient material in support of the case of the plaintiff, no injunction can be granted by way of interim measure, even though a prima facie debatable case was established. The abovesaid three decisions in FAO No.151/2019, dated 13.01.2020, in **FAO NO. 148 OF 2022** **14** ## _**Microfibres Inc. and Ors v. Girdhar and Co. and Ors.,**_ _(_ Manu/DE/0647/2009)and in _**Bharat Glass Tube Limited v. Gopal Glass Works Limited (AIR 2008 SC 2520),**_ will not render any assistance to the case advanced by the plaintiff simply because of the reason that the core ingredient which constitutes an artistic or literary work or any work akin to that is lacking in the present case. 9. It is submitted that the application for appointing an expert was so far not considered by the trial court, but the Commissioner deputed in turn submitted his report and mahazar without the assistance of an expert and it was also taken up as a ground of attack against the order of the trial court. But as discussed earlier, the core issue which would bring the matter within the sweep of an artistic work or literary work or a cinematic work or any work akin to that is not involved in the alleged scientific adaptation i.e. a tunnel shaped aquarium which is very common in so many countries and this court can take judicial notice of it. It is only a mere scientific **FAO NO. 148 OF 2022** **15** adaptation and did not contain any artistic work or cinematic work or any work akin to that. Hence, the injunction granted by the trial court cannot be sustained. A fresh consideration of the matter is necessary based on the legal position settled especially when there is an application for expert opinion pending consideration before the trial court. Hence, the matter is remanded back to the trial court for fresh consideration. Till that time, the order of injunction granted will stand vacated. It is made clear that there shall not be any prejudice to the trial court in attending all the questions involved in the matter and shall dispose of the matter untrammelled by any of the observations made in this judgment. The appeal is allowed accordingly. No costs. Sd/- ## **P.SOMARAJAN** ## **JUDGE** msp