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P.R. Viswanatha Iyer Vs. A. Muthukumaraswami Pillai and ors. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtChennai
Decided On
Reported inAIR1948Mad139; (1947)1MLJ382
AppellantP.R. Viswanatha Iyer
RespondentA. Muthukumaraswami Pillai and ors.
Cases ReferredPerforming Bight Society Ltd. v. London Theatre of Varities Ltd.
Excerpt:
- - the agreement stipulates for the preparation of manuscripts by defendant 1 on certain clearly indicated lines and the delivery of each manuscript, as it is completed, to plaintiff 1, and it prohibits the delivery of such a work to anybody else. there remains, i agree, the element of choose as to what information should be given, and the respondents contend that the test of originality is satisfied by the choice of the tables inserted; 17. now, if the tinnevelly vakya panehangam was nothing more than a handy extract from published official tables, the reasoning of the lord chancellor in the case just cited might well be applicable; 1 question at precisely the question just formulated. after pointing out how under the law as it existed before the judicature act the owner of the.....wadsworth, j.1. these two appeals arise out of an alleged breach of copyright in connection with the publication known as the tinnevelly vakya panchangam, which is a tamil almanac giving information necessary for casting horoscopes, fixing fasts, festivals and ceremonies with reference to the phases of the moon and other relevant astronomical materials. it is distinguishable from an ordinary almanac in that it is prepared on the basis of calculations based on some 248 vakyams or aphorisms embodying rules of astrological science. it is common ground that this particular panchangam has been published for over 60 years from manuscripts furnished by defendant 1 and his father. the publisher was up to 1940 plaintiff 2 in the suit out of which appeal no. 301 of 1945 arises.2. defendant 1 then.....
Judgment:

Wadsworth, J.

1. These two appeals arise out of an alleged breach of copyright in connection with the publication known as the Tinnevelly Vakya Panchangam, which is a Tamil almanac giving information necessary for casting horoscopes, fixing fasts, festivals and ceremonies with reference to the phases of the Moon and other relevant astronomical materials. It is distinguishable from an ordinary almanac in that it is prepared on the basis of calculations based on some 248 Vakyams or aphorisms embodying rules of astrological science. It is common ground that this particular Panchangam has been published for over 60 years from manuscripts furnished by defendant 1 and his father. The publisher was up to 1940 plaintiff 2 in the suit out of which Appeal No. 301 of 1945 arises.

2. Defendant 1 then quarrelled with plaintiff 2 and as a result of that quarrel, he entered into an agreement, Ex. p-1, dated 20-2-1941 with plaintiff 1. Under this agreement defendant 1 was to east the almanac known as the Tinnevelly Vakya Panchangam which he has been composing for about 60 years and deliver the manuscript to plaintiff 1 for printing and publication for a period of five years from the year Chitrabhanu 1942 to the end of the year Vyaya 1946. Plaintiff l was to pay defendant 1 Rs. 350 per annum for his work. The agreement fixes the date within which the manuscript should be delivered in each year and prohibits defendant 1 from writing or delivering a copy of the almanac to any one else. It is also stipulated that defendant 1 should have the right to insert in the almanac eight pages of matter in Tamil and eight pages of matter in Grantham in addition to the almanao proper and should himself be given 100 copies of the published work. Then follow the provisions regarding the manner of payment of the fee and the adjustment of advances.

3. On the basis of this agreement the Pan. Changams for 1942 and 1943 were published; but in May 1943, defendant 1 sent a notice, Ex. P-8, to plaintiff l alleging that the latter had broken the agreement by printing on the Panchangam the name of plaintiff 2 as publisher, knowing that defendant l had broken off relations with plaintiff 2 and wished to have no more to do with him. Defendant 1 called upon plaintiff 1 to withdraw from circulation all copies of the calendar bearing plaintiff 2's name and to undertake not to use plaintiff 2's name thereafter. If he was unwilling to give this undertaking, defendant 1 proposed to rescind the contract. At the time when this notice was sent, defendant 1 had already received two small advances in respect of the almanac for the year Darana, 1944. Plaintiff l replied to this notice denying that there was any understanding that no other person's name should appear on the almanac and claiming the right to assign to plaintiff 2. On 27-8-1943, plaintiff 1 sent a money order for Rs. 80 due to defendant 1 under the contract. This money order was refused whereupon plaintiff 1 filed a suit against defendant 1, O.S. No. 403 of 1943 out of which Second appeal No. 750 of 1945 arises. In that suit the individual whom we have referred to as plaintiff 2 was not a party, and the suit as originally framed sought, relief only against defendant 1, the prayer being for specific performance of the contract to supply manuscripts of the panchangam for the three years for which the agreement still had to run or alternatively to pay Rs. 900 as damages for breach of the contract. Plaintiff 1 also filed an application in which he prayed for an injunction restraining defendant 1 from getting his manuscript published by anyone else. In opposition to .that injunction application, defendant l filed a counter affidavit in which he asserted his physical inability to continue the production of the panchangam and stated that his grandson, defendant 2, was now casting a panchangam which was to be published by defendant 3 under an agreement dated 20-8-1943. As a consequence of this statement the plaintiff amended his plaint by adding a paragraph referring to defendant 1's counter affidavit and alleging that defendant 2 was incapable of casting a panchangam and that defendant l was seeking to circumvent the agreement and interim injunction by publishing ' his panchangam in the name of defendant 2 through the agency of defendant 3 who is alleged to have purchased the right to publish it when fully aware of the suit agreement. A prayer was also added that the defendants be restrained from publishing the Tamil Vakya Pan-changam for the years covered by the agreement either in their own names or in the names of other persons and damages were sought from all of the defendants.

4. It is to be noted that there is no assertion in the plaint as amended that defendant 3 had been instrumental in causing defendant 1 to break his contract with the plaintiff. The only assertion is that defendant 3 knowing of the agreement between defendant 1 and plaintiff 1 was attempting to publish defendant 1's panchangam under the name of defen0dant 2. While this suit was pending, defendant 3 did publish a panehangam for the year Darana. The publication was got up in a manner very similar to that of the previous years' almanacs even to the extent of continuing the number of the series. Whereas the previous almanacs described the work as that of Venkatagurunatha Sastri, son of Bamalinga Joshier, defendant 3's publication printed these two names in large type adding in small type the name of defendant 2 described as grandson of defendant 1.

5. This suit went to trial and resulted in a decision that defendant 1 had committed breach of the contract and that there was no ground on which a decree for specific performance or injunction could be granted, especially as defendant 3 had given an undertaking on the interim injunction petition to keep regular accounts of the sale of his panchangam and not to sale more than 5000 copies out of the 15350 which he had printed. On the question of damages, the trial Court held that the loss may be taken as Rs. 300 per annum, the figure mentioned in the plaint and that defendant 3 knowing of the contract between the principal parties must have procured the breach thereof and fraudulently published the panchangam in collusion with defendants 1 and 2. The learned District Munsif also found that no action could be taken under the Copyright Act, because by Section 13 of the Act, any proceeding regarding the infringement of the copyright had to be filed in a District Court. In the result he gave a decree for damages amounting to Rs. 300 for the first year against defendants 1 to 3 and Sections 600 for the two remaining years against defendant 1 alone. This decision was confirmed in appeal, and against the appellate decree Second Appeal No. 750 of 1945 is preferred. As already stated, plaintiff 2 in the copyright suit was not a party to the contract suit, though he was the principal witness for the plaintiff and has been described by the trial Judge as the real plaintiff in the suit.

6. Three days after the judgment of the District Munsif in the contract suit, the two plaintiffs together filed O.S. No. 1 of 1944 in the District Court against all three defendants claiming that by the agreement, Ex. P-1 dated 20-2-1941, defendant 1 had contracted to assign to plaintiff 1, the exclusive right of publishing his Tinnevelly Vakya Panchagam for five years beginning on 13-4-1942, that this agreement operated to assign the copyright in respect of each year's compilation, as and when the manuscript was ready, to plaintiff 1 absolutely and that to the knowledge of defendant 1 the benefit of the agreement had belonged all along and still belonged to plaintiff 2. The plaint goes on to recite the facts regarding the interchange of notices in 1943 and the repudiation of the contract by defendant 1 and alleges that defendant 1's notice was sent at the instance of defendant 3 who had arranged with defendant 1 to publish defendant 1's almanac for the year Darana in the name of defendant 2. The plaint alleges that in the suit for damages, the amount claimed was restricted to Rs. 300 because of the poverty of defendant 1. It quotes the finding of the District Munsif in O.S. No. 403 of 1943 that the manuscript published by defendant 3 as the work of defendant 2 for the year Darana was, in fact, the work of defendant 1 and alleges that all three defendants had jointly infringed the copyright which was vested in the plaintiffs. The plaintiffs therefore prayed for an injunction to restrain the defendants from publishing any panchangam exhibiting in any manner the name of defendant 1, for the two remaining years of the contract period and prayed for an account of the profits made by defendant 3 by the sale of the panchangam for the year Darana and the delivery of the unsold copies of this publication. This Suit was tried by the District Judge along with the hearing of the appeal from the decree of the District Munsif, the evidence taken by the District Munsif being by consent treated as the evidence in the copyright suit. The latter suit resulted in a decree for the payment of Rs. 1000 as damages, by defendant 3 on the basis of the estimated profits from the sale of the panchangam for the year Darana, and there was an injunction restraining the defendants from publishing any panchangam for the two remaining years. The unpublished copies had already been surrendered.

7. Aganist this decision App. No. 301 of 1945 has been preferred by defendant 3 who. is also the appellant in the connected second appeal. As the two appeals involve the same evidence, they have been heard together. The plaintiffs have settled both the actions with defendants 1 and 2 and the last two years of the period covered by the agreement having elapsed, there is no longer any question of an injunction. We are now concerned only with the decrees against the appellant defendant 3 for damages.

8. We find it difficult to suatain the decree against the appellant in the second appeal. Although in the copyright suit there is some assertion that the appellant had procured the breach of the contract by defendant 1, no such assertion is found in the plaint in O.S. No. 403 of 1943, where all that is alleged is that defendant 3 with the knowledge of the contract had arranged with, defendant 1 to publish defendant 1's manuscript which under the contract should have been delivered to plaintiff 1. We have been taken through the evidence in the case, and the respondents have been unable to indicate any substantial evidence that it wag at the instance of defendant-appellant 3 that defendant 1 broke the contract. The truth seems to be that it was after defendant 1 had repudiated his contract with plaintiff 1 that he induced defendant 3 to publish defendant 1's manuscript in the name of defendant 2. No doubt defendant 3 must have known that defendant 1 was acting in breach of his contract with plaintiff 1; but defendant 3 was not a party to that contract, and unless it is both pleaded and proved that defendant 3 instigated or procured the breach of the contract, he cannot be made liable in damages for defendant 1's breach. In this view we allow Second Appeal No. 760 of 1945 with costs throughout and dismiss the suit as against defendant 3.

9. The question arising in the copyright suit requires more detailed consideration. It is contended for the appellant, firstly, that the agreement, Ex. P-1 does not purport to assign the copyright at all; secondly, that a mere contract to assign the copyright in an unwritten work cannot support an action against the alleged assignee for infringement of copyright. Thirdly, it is contended that this panchangam is not a literary work in respect of which copyright exists. Fourthly, it is contended that the suit under the Copyright Act is barred by reason of the adjudication on a similar claim in the earlier suit. Fifthly, it is contended that the decree in the earlier suit proceeds on the basis that the contract between the parties has come to an end, and therefore there can be no foundation for the plaintiffs' claim as owners of the copyright; and lastly, the appellant challenges the estimate of the profits of his publication, and contends that in any case credit should have been allowed for the amount of damages decreed against him in the earlier suit.

10. It will be convenient to summarise the relevant provisions of the statutory law on the subject of the existence and transfer of copyright. The Indian Copyright Act, 1914, limits the application of the English Copyright Act, 1911, to India in certain respects with which we are not concerned and provides under Section 13 that:

Every suit or other civil proceeding regarding infringement of copyright shall be instituted and tried in the High Court or the Court of the District Judge.

Section 1, English Copyright Act, 1911, recognises the existence of copyright in every original literary, dramatic, musical and artistic work subject to certain restrictions regarding the place of publication of published works and the nationality of the authors of unpublished work, and copyright is defined as 'the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever'...or 'if the work is unpublished, to publish the work or any substantial part thereof.' By Section 2, copyright in a work is deemed to be infringed by any person, who, without the consent of the owner of the copyright, does anything the sole right to do which by this Act is conferred on the owner of the copyright. Section 5 provides that 'subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein.' Sub-section (2) of Section 5 provides:

The owner of the copyright in any work may assign the right, either wholly or partially...either for the whole term of the copyright or for any part thereof and may grant any interest in the right by licence, but no such assignment or grant shall be valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by his duly authorised agent.

Section 31 provides that:

No person shall be entitled to copyright or any similar right in any literary, dramatic, musical, or artistic work, whether published or unpublished, otherwise than under and in accordance with the provisions of this Act, ox of any other statutory enaotment for the time being in force, but nothing in this Section shall be construed as abrogating any right or jurisdiction to restrain a breach of trust or confidence.

Section 35(1) of the Act provides that

unless the context requires otherwise, 'Literary work' includes maps, charts, plans, tables, and compilations.

11. It is not contended and cannot, we think, be contended that there has by reason of the agreement, Ex. P-1, been a legal assignment of the copyright in the Tinnevelly Vakya Panchangam for the three years with which we are now concerned. Such an assignment could only be made by an instrument in writing signed by the owner thereof, and there can be no ownership of the copyright for a non-existent work; and it is not denied that at the time of this agreement the panchangams for the three years with which we are concerned had not been written. The respondents, however, contend that the effect of this agreement is to create an equitable right which would operate as an equitable assignment of each manuscript as and when it comes into existence, and that the publication of such a manuscript by a third party can be challenged as an infringement of copyright by them as the equitable assignees, provided that they join the legal owner of the copyright in the action.

12. It will be convenient first to deal with the contention that Ex. p-1 does not purport to create any rights whether by way of equitable assignment or otherwise in the copyright of defendant 1's work We are unable to accept this contention. The agreement stipulates for the preparation of manuscripts by defendant 1 on certain clearly indicated lines and the delivery of each manuscript, as it is completed, to plaintiff 1, and it prohibits the delivery of such a work to anybody else. The combined effect of these provisions is to confer upon plaintiffl the sole right of publishing the three panchangams which defendant 1 is to write for the three specified years, that is to say, plaintiff 1 is given 'the sole right to produce or reproduce' these works and such a right is nothing more than a copyright.

13. We can also deal briefly with the contention that an action for infringement of copyright Cannot be maintained because the decree in the earlier suit put an end to the contract between the parties so that the plaintiffs ceased to be the equitable assignees of the copyright. The fallacy of this contention lies in the fact that the copyright suit claims damages for an infringement alleged to have been committed while the earlier suit was under preparation. At that time, if the plaintiffs had, in fact, acquired the sole right to publish defendant 1's panehangam for the year Darana, they must be entitled to sue for damages for the infringement of that right by defendant 3, notwithstanding the fact that as against defendant 1, the plaintiffs have successfully claimed damages for the breach of the contract which led to the infringement.

14. We do not think that there is any difficulty in coming to the conclusion that the Tamil Vakya Panehangam is a literary work for the purpose of the Copyright Act. In dealing with the question of the degree of originality necessary to constitute original literary work for the purpose of the Copyright Act, 1911, the Privy Council in Macmillan & Co. Ltd. v. K. & J. Cooper A.I.R. 1924 P.C. 75 observed:.it is the product of the labour, skill and capital of one man which must not be appropriated by another, not the elements, the raw material, if one may use the expression, upon which the labour and skill and capital of the first have been expended. To secure copyright for this product it is necessary that the labour, skill and capital expended should be sufficient to impart to the product some quality or character which the raw material did not possess, and which differentiates the product from the raw material.

15. Then again at p. 327 quoting the observations of Peterson J. in University of London Press Ltd. v. University of Tutorial Press Ltd. (1916) 2 Ch. 601 their Lordships approved the following passage in Connection with the meaning of the words 'original literary work' in Section 1, Sub-section (1) of the Act of 1911:

The word 'original' does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of 'literary work,' with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work'-that it should originate from the author.

Their Lordships go on to state:

What is the precise amount of the knowledge, labour, judgment or literary skill or taste which the author of any book or other compilation must bestow upon its composition in order to acquire copyright in it Within the meaning of the Copyright Act, 1911, cannot be defined in precise terms. In every case it must depend largely on the special facts of that case, and must in each case be very much a question of degree.

16. The appellant on this part of the case has relied strongly on the decision in Cramp & Sons Ltd. v, Frank Smythson Ltd. (1944) A.C. 329 That was a case in which copyright was claimed for an ordinary diary containing a calendar and a certain amount of information regarding postal rates, weights and measures, lighting up times and so on. The Lord Chancellor after quoting the observations of Lord Atkinson in the case just cited came to the conclusion that copyright had not been established for the diary in question which was a mere calendar with the addition of a certain amount of miscellaneous information, all accessible in official publications and a feature of all diaries of the kind. The learned Lord Chancellor observes:

There would, indeed, as it seems to me, be considerable difficulty in successfully contending that ordinary tables which can be got from, or checked by, the postal guide or the Nautical Almanac are a subject of copyright as being original literary work. One of the essential qualities of such tables is that they should be accurate so that there is no question of variation in what is stated. The Sun does in fact rise, and the Moon set, at times which have been calculated, and the utmost that a table can do on such a subject is to state the result accurately. There is so far no room for taste or judgment. There remains, I agree, the element of choose as to what information should be given, and the respondents contend that the test of originality is satisfied by the choice of the tables inserted; but the bundle of information furnished in the respondents' diary is common place information which is ordinarily useful and is, at any rate to a large extent, commonly found prefixed to diaries, and, looking through the respondents' collection of tables, I have difficulty in seeing how such tables, in the combination in which they appear in the respondents' 1933 diary, can reasonably claim to be 'original work.' There was no evidence that any of these tables was composed specially for the respondents' diary. There was no feature of them which could be pointed out as novel or specially meritorious or ingenious from the point of view of the judgment or skill of the compiler. It was not suggested that there was any element of originality or skill in the order in which the tables were arranged. My own conclusion is that the selection did not constitute an original literary work.

17. Now, if the Tinnevelly Vakya Panehangam was nothing more than a handy extract from published official tables, the reasoning of the Lord Chancellor in the case just cited might well be applicable; but the evidence in this case does show that this panehangam is an original composition worked out by a series of calculations based on a fairly elaborate set of rules in the knowledge of which defendant 1 is an admitted specialist. He does not compile his panehangam by copying information from other publications. He has a specialised knowledge of a fairly elaborate system for working out these matters year by year, and it is the result of his own caleutations made with reference to the particular locality that enables him to fix not only the dates but the precise hour and minute for the commencement and termination of each particular period, the fixation of which is essential in order to know the proper time for performing a particular ceremony or celebrating a particular festival or for casting the horoscope of a person born on a particular date and hour. We have, therefore, no difficulty in holding that the work in question is an original literary work for the purpose of the Copyright Act, 1911.

18. Having decided that the panehangam in question is a work in which copyright exists and having decided that the agreement, Ex. P-1, binds defendant 1 to transfer to plaintiff 1 the copyright in the manuscript of that work in each succeeding year as soon as that manuscript is completed, we will next consider whether the plaintiffs as equitable assignees of the copyright of defendant 1's panehangam for the year Darana can maintain an action for damages for infringement of their copyright by defendant 3 on the basis that they have joined in that action the legal owner of the copyright. On this question, the decision of the House of Lords in Performing Bight Society Ltd. v. London Theatre of Varities Ltd. (1924) A.C. 1 question at precisely the question just formulated. The pliantiffs in that case were a company which alleged an infringement of their copyright in certain musical works. They had taken assignments from the firms of Messrs. Chappell and Co. and Keith, Prowse and Co., of the right of performance of every song or musical work then belonging to or which might thereafter be acquired by the said firms. The songs in question were admittedly not in existence on the date of the contracts. The plaintiffs, when objection was taken to the maintenance of the action in the absence of the legal owners of the copyrights elected to fight the case on the contention that the presence of the legal owners as parties to the action was unnecessary. It was held by the Court of appeal that as the plaintiffs' interest in the songs was purely equitable and as the defendants were mere infringers claiming no interest thereof, the plaintiffs were not entitled to maintain the action in their own names without joining the owners of the copyright and this decision was confirmed by the House of Lords. The importance of this decision for the purpose of the present ease is that the learned Judges of the Court of appeal and the majority of Lordships who decided the matter in the House of Lords were of opinion that the action could have been maintained if the plaintiffs as equitable assignees had joined the legal owners of the copyright as parties. In the judgment of the Court of appeal, Bankes L.J. says:

I can see nothing in the statute from which I can draw the inference that an owner of copyright, whether the first owner, or any subsequent owner by legal assignment, ceases to be an owner within the meaning of the statute when he executes an equitable assignment of the whole or part of his right. If this is so it follows either (a) that the equitable assignee is not an owner at all within the meaning of the statute, or (b) that the statute recognises under these circumstances two owners, the legal and the equitable; of the one right. Whichever view is correct, it appears to me that apart from authority the result in this action is the same, namely, that the plaintiffs should not be allowed to maintain the present action without adding the legal owners of the copyright. If the first conclusion is the correct one then the action cannot proceed without them. If the second is correct then the Court in the exercise of its discretion should not allow the action to proceed in the absence of a party who may be interested and who ought to be bound, or whose presence might faced a defence to the defendants. There are difficulties in the way of accepting either conclusion, but the difficulty of accepting the second appears to me to be less than that of accepting the first. If the first is accepted the logical conclusion appears to be that no equitable assignee of copyright can ever maintain a claim for infringement in either a Court of law or equity, because the Act of Parliament only recognizes the owner as the person who can claim the assistance/of the Courts, and on this assumption the equitable assignee is not the owner, and can never become the owner unless and until it either becomes possible for the owner to make a legal assignment of the right, or he can be persuaded or compelled by process of law to make such an assignment. I do not think that the language of the statute justifies such a conclusion, and I prefer a construction which includes the equitable owner in the expression 'owner' and then leaves it to the ordinary practice of the Courts to secure all proper parties being before the Court.

Younger L.J. after pointing out how under the law as it existed before the Judicature Act the owner of the equitable title could compel the legal owner to permit the use of his name at law in an action against an invader of the right or might even have compelled the defendant in equity to admit at law the legal title of the equitable owner, comes to the conclusion that it was not to be expected that an enabling statute like the Copyright Act, 1911, would take away from any class of persons interested in a copyright a right of action enjoyed by them under the statute which it superseded.

19. In the House of Lords, Viscount Cave L.C. came to the conclusion that the appellants could not claim to be assignees, whether legal or equitable, of the songs then in question by reason of the instrument which was signed when their songs were not in existence; but he observed:

The appellants have a right in equity to have the performing rights assigned to them and in that sense are equitable owners of those lights; but they are not assignees of the rights within the meaning of the statute.

He goes on to observe:

That an equitable owner may commence proceedings alone, and may obtain interim protection in the form of an interlocutory injunction, is not in doubt; but it was always the rule of Court of Chancery, and is, I think, the rule o the Supreme Court, that, in general when a plaintiff has only an equitable right in the thing demanded, the person having the legal right to demand it must in due course be made a party to the action;

Viscount Finlay observed:

In my opinion, the power of assignment given by the fifth Section is not confined to an assignment of the legal property, but will apply to the transfer of any interest, whether legal or equitable .... The society became entitled to sue in respect of the interests so acquired, but their right to sue is subject to the general rule that the owner of the legal estate should be joined as a party.

Lord Atkinson takes a Somewhat different view. He observes:

When one reada through all the provisions of this statute and realises how almost every state of things, every event and contingency, is dealt with and provided for, one is, I think, reasonably led to the conclusion that the supplementary provisions contained in Section 31 were designed to deprive every person of copyright to whom it was not secured by the provisions of the Act of 1911, or by those of some other statute for the time being in force. It is, in my view, impossible to suppose that the mode of acquisition of an equitable interest in copyright under a grant or licence made or given before the author's work or the copyright in it is in existence would have been left unnoticed or unprovided for by this statute as it hag been, if it had not been intended to exclude and, impliedly, to prohibit it.

Lord Sumner however observes:

A remedy is conferred by our present law on equitable owners, subject to compliance with certain legal requirements, and the owner of copyright is entitled to all remedies. I can find nothing to show any intention in the Act to ignore equitable rights throughout so wide and important a subject as copyright, nor, in view of the long history of equitable rights and of the enactment in favour of the rules of equity contained in the Judicature Act, 1873, does it seem practicable to hold that the words 'owner' in Section 6, Sub-section (1) and 'title' in Section 6, Sub-section (3), mean exclusively legal owner and legal title as those terms were thereto understood. So limited a meaning of the words would not be a natural one to place on legal language enacted in 1911.

Later on, he concludes:

I think that the statute leaves equitable assignees to enjoy such position as is given to them by the general law, when they require to vindicate the right, which the Copyright Act, 1911 expressly confers and regulates.

20. Lord Phillimore takes the stricter view which was taken by Lord Atkinson, and he is of opinion that the grant of a mere equitable right which is not an assignment of the copyright is not sufficient to support an action for breach of copyright against a third party. It will thus the seen that the majority of their Lordships agree with the Court of appeal in holding that a person who has an equitable right to compel a legal owner to assign a copyright can maintain an action for breach of copyright if he joins the legal owner' in that action. In Halsbury's Laws of England, Edn. 2, vol. 7, Para. 871 the position resulting from this decision is summarised as follows:

An agreement to assign a work not yet in existenca, and an agreement which contemplates that a further document of assignment is to be executed have been held to take effect as equitable assignments.

An equitable assignee cannot sue in his own name in respect of infringements of the right assigned, but must make the assignor a party to the action....

21. Copinger on the Law of Copyright, Edn. 7, P. 99 dealing with Sub-section (3) of Section 5, Copyright Act, 1911, states:

This Section has no application to a document purporting to assign a non-existent work, since such a document cannot be signed by the owner of the right therein, and the author is to be the first owner of the copyright in a work. Consequently, although such a document might be enforced as an equitable assignment, it would not entitle the assignee to sue for the infringement without joining the author or legal owner.

22. On this state of the authorities, we are constrained to hold that plaintiff 1 having by reason of the agreement Ex. P-1, become the equitable owner of the copyright in defendant 1' spanchangam for the year Darana, as soon as the work came into existence, is entitled to maintain the suit, be having impleaded not only plaintiff 2 who is claiming an interest in the rights but also defendant 1 who was the legal owner of the copyright at the relevant dates.

23. There remains the question of the amount of damages. On this question, the appellant re-lies mainly on a statement made by plaintiff 1 in his plaint in the earlier suit in Para. 9 where he says:

The publication of the Tinnevelly Vakya Panchangam is a profitable business and will yield a net profit of not less than Rs. 300 per annum to the plaintiff.

24. In the plaint in the copyright suit he has, as already indicated, explained this statement by saying that he was limiting his claim for damages in view of the poverty of defendant 1. He has adduced positive evidence from the printer employed by defendant 3 regarding the actual cost of printing defendant 3's panchangam. The rate of commission allowed to the retailers is not in dispute, and the number of copies sold is also established. On the basis of these figures and allowing a substantial margin for contingencies, the learned District Judge has estimated the profit of defendant 3, from the sale of the panchangam at RS. 1000. Defendant 3's own evidence on the subject is frankly incredible. He states that the cost of printing 8300 copies was Rs. 4000, that is to say, an amount approximately equal to the gross sale price of the edition. He has not produced the accounts which he was directed to maintain in the proceedings for an ad interim injunction; nor has he restricted his sales to the 5000 copies which he was then authorised to sell. He has produced practically no materials to set against the detailed evidence adduced for the plaintiffs. On this state of the evidence, we see no reason to differ from the conclusion of the learned District Judge. In view of our decision in Second Appeal No. 750 of 1945, the question of allowing the appellant credit for the amount of damages awarded in that suit no longer arises.

25. The result, therefore, is that Appeal No. 301 of 1945 is dismissed with costs of the plaintiffs. Half the costs of printing the evidence will be apportioned to each of the two appeals.


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