2018 (11) TMI 1730 - HC - Indian Laws

Infringement of Copyrights and intellectual property rights - presentation and prosecution of junior suit - Section 60 of CR Act - when an action of infringement of copyright is commenced against an entity / person after such entity / person files a case of groundless threat of legal proceedings will such commencement of action for infringement of copyright render the groundless threat suit infructuous? HELD THAT - Inevitable conclusion that follows and flows from the discussion and deliberations qua debate is that the prayer in the instant application should be acceded to by applying MAC Charles principle and holding that the senior suit has become infructuous owing to filing of the junior suit. As part of his concluding submissions learned counsel for plaintiff Mr.Anirudh Krishnan submitted that if this court is not inclined to accept his submissions regarding sub silentio it may be left open for plaintiff to seek damages by way of counter claim in the junior suit. If the law permits a counter claim of this nature to be made in the junior suit this order will not come in the way and this order will not become an impediment - it is not for this Court to grant leave to make counter claim. It is only clarified that if law permits counter claim to be made in the junior suit this order will not impede the same and therefore these observations shall not be construed as leave to make counter claim. Senior suit is dismissed as infructuous in the light of junior suit being filed.

Summary

Issues Involved:
1. Whether the senior suit for groundless threat of legal proceedings becomes infructuous due to the filing of a subsequent junior suit for copyright infringement.
2. Interpretation and application of proviso to Section 60 of the Copyright Act, 1957.
3. Binding nature of precedents and the doctrine of sub silentio under Article 141 of the Constitution of India.
4. The concept of "due diligence" in the context of filing a suit for infringement.

Detailed Analysis:

1. Whether the senior suit for groundless threat of legal proceedings becomes infructuous due to the filing of a subsequent junior suit for copyright infringement:

The core issue in this case was whether the senior suit, filed under Section 60 of the Copyright Act, 1957, for groundless threats becomes infructuous due to the subsequent filing of a junior suit for copyright infringement by the defendant. The court noted that the proviso to Section 60 clearly states that if an action for infringement is filed, the defendant in such action cannot thereafter take recourse to Section 60 for groundless threats. The court relied on the Delhi High Court's decision in Super Cassette Industries Ltd. v. Bathla Cassettes India (P) Ltd. and the Supreme Court's affirmation in M/s. MAC Charles (I) Ltd. v. M/s. Indian Performing Rights Society Ltd., which held that once a suit for infringement is filed, the prior suit for groundless threat becomes infructuous.

2. Interpretation and application of proviso to Section 60 of the Copyright Act, 1957:

The court emphasized that the proviso to Section 60 is clear and unambiguous, stating that once a suit for infringement is filed with due diligence, the prior suit for groundless threats becomes infructuous. The court rejected the plaintiff's argument that the term "due diligence" and other sub-issues under the proviso to Section 60 were not adequately addressed in previous judgments, thereby making those judgments sub silentio and not binding.

3. Binding nature of precedents and the doctrine of sub silentio under Article 141 of the Constitution of India:

The court discussed the doctrine of sub silentio and its applicability under Article 141. It noted that while the concept of sub silentio is recognized, it does not provide an exception to the binding nature of Supreme Court judgments under Article 141. The court referred to the Supreme Court's decisions in Municipal Corporation of Delhi v. Gurnam Kaur, State of U.P. v. Synthetics and Chemicals Ltd., and other cases to conclude that judgments, even if certain issues were not argued, do not lose their binding effect.

4. The concept of "due diligence" in the context of filing a suit for infringement:

The court addressed the plaintiff's contention that the term "due diligence" was not adequately interpreted in previous judgments. It held that the term refers to the timely filing of the infringement suit without undue delay. The court relied on the interpretation provided by the Madras High Court in Mehta Unani Pharmacy & Co., Rajkot v. Amrutanjan Limited, Madras, which equated "due diligence" to a point in time, meaning the infringement suit must be filed within a reasonable period.

Conclusion:

The court concluded that the senior suit for groundless threats becomes infructuous due to the filing of the junior suit for infringement, applying the principle laid down in MAC Charles and Super Cassette cases. The court allowed the application and dismissed the senior suit as infructuous. The court also clarified that if the law permits, the plaintiff may seek damages by way of a counterclaim in the junior suit, but this order does not grant leave for such a counterclaim. The parties were left to bear their respective costs.