Is Registration of Copyright Mandatory?
Whenever an author creates his original work the copyright is acquired automatically for his work. Under Indian law, copyright comes into existence as soon as a work is created and no formality needs to be completed for acquiring copyright. It is an important principle of the Berne Convention that the registration of copyright is not mandatory. Under Article 5(2) of the Berne Convention, the enjoyment and the exercise of the rights shall not be subject to any formality, and such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. India being the signatory to the Berne Convention for the Protection of Literary and Artistic Works, 1886 (Berne Convention), is under an obligation to give equal protection to the works originating in any of the contracting states, as they would grant to the works of its own nationals.
In India the governing law for copyright protection is the Copyright Act 1957 (the Act) and the Copyright Rules 2013. The act nowhere makes it mandatory for the copyright to be registered; the use of the expression “may” in Sections 44 and 45 (pertaining to the Register of Copyright) makes it abundantly clear that registration of the particulars pertaining to a copyrighted work is optional.
Until recently, the primary case that discussed the issue of the requirement of copyright was Dhiraj Dharamdas Dewani v. Sonal Info Systems Pvt. Ltd. in which the Bombay High Court had held that in order to invoke the civil and criminal remedies under Section 51 of the Copyright Act, the owner of a copyright must have a valid copyright registration. The Court also observed that an infringer cannot be expected to know about copyright existing over any work unless it is registered and published in the Official Gazette. The decision was later challenged in the Supreme Court, but was dismissed stating that there is no error in the order passed by the High Court. The Supreme Court decided to leave this important question of law open, which has led to contradictory judgements by various High Courts.
The Bombay High Court has recently reversed its older position on this issue in its decision in Sanjay Soya v. Narayani Trading, Justice G S Patel, the learned Single Judge of the Bombay High Court passed the judgement on 9th March 2021 stating that copyright registration is not compulsory. The Hon’ble Court observed that “Copyright Act gives a range of rights and privileges to the first owner of copyright without requiring prior registration”. The Hon’ble judge also emphasized that Section 51 of the Copyright Act, which speaks of infringement of copyright, does not restrict itself to works that have been registered with the Registrar of the copyright.
Sanjay Soya Private Limited, the plaintiff instituted a suit for infringement of trademark and copyright in respect of its label mark against the use of a similar label mark with only minor variations by Narayani Trading Company, the defendant.
FINDINGS OF THE COURT:
The principal question that the Court took up for consideration was whether registration of a copyright is compulsory for seeking reliefs under the Copyright Act, 1957 (Copyright Act), and to that end, whether the law laid down in the Dhiraj case, which requires compulsory registration of copyright, is good law?
The Plaintiff asserted copyright and trademark infringement, for trademark infringement the Court ruled that the defendant’s label is deceptively similar and is likely to cause confusion. It also held that this was a case of passing off as the defendant has dishonesty adopted the impugned mark to piggyback on the Plaintiff’s goodwill and reputation, for the copyright infringement the defendant resisted plaintiff claims and relied on the Dhiraj Dewani decision stating that the plaintiff’s assertion of copyright on the package label was not valid since it was unregistered. The Court disagreed, holding that, “Section 51, pertaining to infringement of copyright, does not restrict itself to works that have been registered with the Registrar of Copyright.”
The Court proceeded to examine whether the law laid down in the Dhiraj case was good law. The Court observed that the Dhiraj case failed to consider prior judgments of the Court wherein a contrary view was taken. The Court revisited the scheme of the Copyright Act and observed that none of the provisions require registration of copyright before seeking reliefs under the Copyright Act. The Court also delved into the legislative history of the Copyright Act and observed that this issue was specifically deliberated and in the enacted Copyright Act, no such requirement of compulsory registration was provided. Further, the Court also relied upon the relevant clauses in the Berne Convention, 1886 and Trade-Related Aspects of Intellectual Property Rights, 1994 to which India is a signatory which also does not require compulsory copyright registration. The Court declared the law laid down in the Dhiraj case as per incuriam.
The decision by the court in the present case will encourage creativity as the creators of copyrightable works will not have to compulsorily undergo the rigours of copyright registration for protection of their rights. The decision cleared out the ambiguity regarding the registration of the copyright as well as the position regarding the legislative intent behind copyright law, and India’s obligations under the Berne Convention and TRIPS, which were missing in jurisprudence before this.
2012 (52) PTC 458 (Bom)
 IA(L) 5011/2020 in COMIP(L) 2/2020