John Wiley & Sons Inc. & Ors v. International Book Store & Anr

order;

(iii) the order may provide that the term of copyright in India shall not exceed that conferred by the law of the country to which the order relates;

(iv) the order may provide that the enjoyment of the rights conferred by this Act shall be subject to the accomplishment of such conditions and formalities, if any, as may be prescribed by the order;

(v) In applying the provisions of this Act as to ownership of copyright, the order may make such exceptions and modifications as appear necessary, having regard to the law of the foreign country;

(vi) the order may provide that this Act or any part thereof shall not apply to works made before the commencement of the order or that this Act or any part thereof shall not apply to works first published before the commencement of the order.

¶51When copyright infringed.-Copyright in a work shall be deemed to be infringed -

(a) When any person, without a licence granted by the owner of the Copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any conditions imposed by a competent authority under this Act-

(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or

(ii) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright, or]

(b) When any person -

(i) makes for sale on 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 purposes of trade or to such an extent as to affect prejudicially the owner of the copyright, or

(iii) By way of trade exhibits in public, or Page 13

(iv) Imports [***] into India, any infringing copies of the work: [Provided that nothing in Sub-clause (iv) shall apply to the import of one copy of any work, for the private and domestic use of the importer.] Explanation - For the purposes of this section, the reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an "infringing copy".

¶24Section 19 enables the assignment of copyright; it has to be in writing. Importantly, if the terms of assignment are silent about the territoriality, Section 19 (6) enacts that the assignment shall extend only to India. The provision pertaining to licensing of copyright extends Section 19, mutatis mutandis.

¶25A joint reading of the extracted provisions reveal that the copyright proprietor of any literary or artistic work has exclusive rights, under Section 14, to authorize the sale of the subject of copyright. If such copyrighted works are sold, or offered for sale, or copied, or rented out, or even performed in public, without license or authorization, such copies are infringing copies, and such actions are deemed to be infringement under Section 51. Here, the plaintiffs' grievance is that their expensive publications are offered for sale, and sold in India, through authorized exclusive licensees, at concessional prices. Market segmentation – either vertically, or horizontally, in terms of geographical areas, or in terms of copies authorized to be made, or sold or rented, is an integral part of a copyright proprietor's legitimate strategy to exploit his exclusive rights. The sale, and offer for sale, of such LPEs, meant for exclusive use in India, by the defendant, who is clearly targeting overseas buyers, to whom such products cannot be sold at Indian prices, constitutes acts of infringement under Section 51. The plaintiffs therefore, are entitled to permanent injunction restraining infringement of copyright in terms of paragraph 50 (i).

¶26On the question of damages it is settled that the assessment of damages has to be based on cogent evidence furnished for the purpose. In the affidavit evidence, the plaintiffs have not provided any record of the business procured by the defendants as being detrimental to their business; nor have they annexed a statement of loss of profits suffered by them on account of business diversion due to the defendants infringing activities. All that is stated by the plaintiffs is that the profits made by the defendants by misappropriating the goodwill and reputation, and unauthorizedly and illegally selling plaintiffs LPEs is the loss suffered by the Page 14

plaintiffs and that as they have no access to the accounts of the defendants, they are unable to assess the actual profits made by them. In the opinion of this Court bald assertions of loss of business without any evidence in this respect cannot and do not entitle the plaintiffs to damages. The plaintiffs cannot claim anything more than reasonable damages, which are quantified at Rs. 3,50,000/-., to be paid to the plaintiffs within one week and shared equally by the second, fourth, sixth, eighth and tenth plaintiffs equally.

¶27The suit is decreed in the above terms, with costs. All pending applications are accordingly disposed of.

May 20, 2010

(S.RAVINDRA BHAT) JUDGE

Page 1 * IN THE HIGH COURT OF DELHI AT NEW DELHI DECIDED ON: 20.05.2010 + CS (OS) 2488/2008 & IA No.2856/2009 JOHN WILEY & SONS INC. & ORS ..... Plaintiffs Through: Ms. Jyoti Taneja with Mr. Shine Joy, Advocates versus INTERNATIONAL BOOK STORE & ANR. ..... Defendants Through: None. CORAM: MR. JUSTICE S. RAVINDRA BHAT 1. Whether the Reporters of local papers YES may be allowed to see the judgment? 2. To be referred to Reporter or not? YES 3. Whether the judgment should be YES reported in the Digest? MR. JUSTICE S.RAVINDRA BHAT % 1. This suit is for permanent injunction by the plaintiffs seeking to restrain the defendants from infringing their copyright. The plaintiffs have also made a claim for damages and rendition of accounts. An application by the plaintiffs under Order XXXIX Rule 2A read with section 151 of the CPC alleging that the defendants had willfully disobeying and violating the of this Court dated 01.12.2008 is also pending. By the said order the defendants and their agents and assigns were restrained from advertising, offering for sale/exporting any publications of the plaintiffs to the countries outside the territories specified on the books published by the plaintiffs and from removing and concealing the notices appearing on the said books, till the disposal of this application. Page 2 2. According to the suit averments the first, third and fifth plaintiffs are corporations incorporated and existing under the laws of the State of New York, USA and the second plaintiff is exclusive licensee of the first plaintiff; the fourth and sixth plaintiffs (subsidiary of the fifth plaintiff) are companies incorporated in India. The seventh and ninth plaintiffs are corporations incorporated under the laws of the State of Delaware and the eighth (affiliate and exclusive licensee of the seventh plaintiff). The tenth plaintiff is a company incorporated in India. 3. It is claimed that the first plaintiff, a world renowned publisher of academic, scientific and technical materials and has been in business for the past 200 years (established in 1807), headquartered in Hoboken, New Jersey has set up offices and companies in Australia, Canada, China, Denmark, England, Germany, Japan, India, Russia, Scotland and Singapore. It is stated that the plaintiff's products, services and resources are of a high quality and available globally in print as well as online, including notifications, books, journals, encyclopaedias, textbooks, and integrated learning systems for professionals, consumers, scientists, researchers, teachers, undergraduates and graduates and lifelong learners. 4. All the plaintiffs are engaged in the business of publishing and distributing works in the field of education and academics, e.g. higher education, science and technology, engineering, medical science, computer science, economics, business, etc., depending on their field of operation. The first plaintiff's business in Asia dates back to 1966 and, it is stated, has grown in the last 15 years. In India the first plaintiff established its operation in 2001 and publishes and distributes works stated to be used by millions of people on various disciplines including Physics, Engineering and Chemistry amongst others; in Para 7 some of the works of the first plaintiff are listed. In 2001 the first plaintiff acquired one "Dreamtech", which became its wholly owned subsidiary (i.e. of the first plaintiff) and later its name was changed to Wiley India Pvt. Ltd. (the second plaintiff). The first and second plaintiff amongst hundreds of other titles, especially publish concessionally priced Wiley Student Editions (WSE), meant for Higher Education, of their latest content only for sale in India and neighbouring countries, which are significantly priced below the European and American markets. 5. By agreement effective 01.05.2006, the second plaintiff was authorized by the first plaintiff to publish its works in WSE for distribution in territories of India, Bangladesh, Nepal, Pa