Calcutta High Court
Dev Sahitya Kutir Pvt. Ltd. & Anr vs Samir Kumar Roy & Ors on 6 March, 2017
Author: Soumen Sen
Bench: Soumen Sen
ORDER SHEET
GA No.444 of 2017
With
CS No.22 of 2017
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
ORIGINAL SIDE
DEV SAHITYA KUTIR PVT. LTD. & ANR.
Versus
SAMIR KUMAR ROY & ORS.
BEFORE:
The Hon'ble JUSTICE SOUMEN SEN
Date : 6th March, 2017.
Appearance:
Mr. Ranjan Bachawat, Sr. Adv.
Mr. Paritosh Sinha, Adv.
Mr. Debnath Ghosh, Adv.
Mr. Sayan Roychowdhury, Adv.
Mr. Saubhik Chowdhury, Adv.
Ms. Meenakshi Manot, Adv.
Ms. Garima Singh Jhawar, Adv.
...for the plaintiffs/petitioners.
Mr. Nabi Chowdhury, Adv.
Mrs. Soma Roy Chowdhury, Adv.
...for the respondent nos.1 to 5.
Mr. R. Ghosh, Adv.
Mr. M.A. Jabbar, Adv.
Mr. N. Khanjoy, Adv.
Mrs. S. Das, Adv.
...for the respondent no.7 The Court : Ashu Tosh Dev Majumdar is the pioneer of English to Bengali and English Dictionary. He made and published the Students' Favourite Dictionary (English to Bengali and English) sometimes in 1940s. Mr. Dev died on 14th October, 1943. The plaintiff no.1 was incorporated sometimes in 1945 and is an existing company within the meaning of the Companies Act, 1913. The object clause of the company shows that the 2 company would enter into an agreement for the acquisition of the business as a going concern which was at the relevant time carried on by Subodh Chandra Mazumdar, Nirode Chandra Mazumdar, Kshirode Chandra Mazumdar and Madhusudan Mazumdar under the names and stiles of A.T. Dev, B.P. M's Press, P.C. Mazumdar & Bros., Dev Sahitya Kutir, Dev Library, Baroda Type Foundry and Moslem Book Depot in terms of the draft which provides for acquisition by the company of the aforesaid business.
The company since its incorporation have been using the marks and/or trade name 'A.T. Dev 'and 'Dev Sahitya Kutir.' The plaintiff nos.1 and 2 were being run by the family members of Ashu Tosh Dev. At present, the business of 'Dev Sahitya Kutir' Group of Companies consist of three companies, namely, Dev Sahitya Kutir Private Limited, A.T. Dev Private Limited and New Bengal Press Private Limited. The principal business of Dev Sahitya Kutir Private Limited is publishing of books, periodicals and magazines. After the incorporation of the plaintiff no.1, the plaintiffs dictionary, namely, English to Bengali and English, Concise Dictionary, Students' Favourite Dictionary (Bengali to English) were sold, marketed and distributed under the mark 'A.T. Dev'. The dispute arose when the respondent no.2 who is the daughter of Prabir Kumar Majumder, the respondent no.7 herein published 'A.T. Dev Classic Anglo- Bengali & English Dictionary, Popular Edition in which reference was made to Ashu Tosh Dev Majumder (A.T. Dev) in the following words :
"A.T. Dev, the pioneer of evolving the trend of English-to-Bengali-to-English dictionary in Bengal, is the inspiration behind this dictionary which will definitely serve the variegated needs of any user - from the learner to the scholar, in fact, any non-academic user as well. But 'time's fell hand' has defaced thelden pages of A.T. Dev's monumental work. So, we have come forward with this dictionary, a veritable knowledge dossier.3
A look into the 'Knowledge Dossier' and the 'Appendices' will confirm the claim. In the present times we live in a knowledge society. We kept this burning fact in mind in designing the dictionary. Today, an advanced learner is, in fact, a 'netizen' who is very much alive to 'netiquette'. The present dictionary will surely serve such an e-personality in his pursuit of 'netlish' (Internet English) or 'Weblish' (Website English)."
The plaintiffs objected to the uses of the trade name 'A.T. Dev' in the said dictionary as well as on the contents of the said dictionary alleging that there is copyright violation.
Mr. Ranjan Bachawat, learned senior counsel appearing on behalf of the plaintiffs submits that the plaintiffs have been using the word 'A.T. Dev' since 1945 and the said word 'Dev' is associated with the plaintiffs. Although the word mark Dev has as such not been registered independent of the composite mark 'Dev Sahitya Kutir' but a part of the word, namely, Dev by reason of long passage of time has acquired a considerable goodwill and the respondent has dishonestly coined and/or adopted the said mark 'Dev' in order to create confusion in the mind of the public that these are works of A.T. Dev published by the plaintiffs. The learned senior counsel has also tried to impress upon this Court that the contents of both the books are almost identical and the methodology adopted are same and/or similar. Mr. Bachawat has relied upon a single Bench decision of the Madras High Court in 'V. Govindan vs. E.M. Gopalakrishna Kone and Another' reported AIR 1955 MADRAS 391 for the proposition that copyright can be claimed in dictionaries compilations, guide books etc. The paragraphs 9 and 11 which reads as follows:
"9. The next contention was that no originality can be claimed in Dictionaries compilations, guide books, maps etc., as they involve no 4 brains, skill and labour, and the compilation by one man will be exactly the same as the compilation by any other man. I cannot agree. Many men have not got the brains, skill and labour to compile dictionaries, gazetteers, grammars, maps, almanacs, encyclopaedias and guide books. Nor are all of such compilations of the same nature. Then it will be obvious that only one dictionary gazetteer, grammar, map almanac, encyclopaedia or guide book will sell, and not the rest. Any man who refers to the Oxford Dictionary, Webster dictionary and Chambers dictionary can easily find out the difference between these dictionaries. There is considerable difference in dealing with the subject-matter. That will be specially so when the dictionary is not of all the words in the language, but of 'select words' considered suitable for high school boys, where the very same words in one dictionary being taken over to another and later dictionary will certainly prove piracy.
11. The next contention was that the words and meanings in Ex.A.2 were not copied from Ex.A.1, though both contain the same words and meanings, but from the earlier dictionaries of Percival and Swaminatha Aiyar and others, who alone can sue the defendants, if their copyright has been infringed, and not the plaintiff, who also borrowed from those dictionaries and committed infringement of copyright regarding them. Regarding this plea of "common source", it is well-known that a person relying on it must show that he went to the common source from which he borrowed, employing his skill, loabour and brains and that he did not merely do the work of the copyist, by copying away from a work like Ex.A.1, as D.W.1 has done here. So, the plea of common source will not help the defendants in this case."5
In anticipating that an argument could be made with regard to delay and laches in approaching this Court having regard to the fact that the respondent nos.1 and 2 have published the work in January, 2016, a reference was made to a single Bench decision of Delhi High Court in 'M/s. Hindustan Pencils Pvt. Ltd. vs. M/s. India Stationery Products Co. and Another' reported at AIR 1990 DELHI 19 for the proposition that if the Court is satisfied that the use and/or adoption of the mark by the defendants are fraudulent, the plaintiff would not be denied the interim relief of injunction. The passages relied upon in support of the said submission are paragraphs 21 to 31 which can be summarized by stating that if there is a conscious infringement or fraudulent imitation and lack of good faith, the Court would not be hesitant in passing an interim injunction. Mr. Bachawat, learned senior counsel, has also relied upon Section 58 of the Copyright Act to show that once the Court is satisfied that there has been infringement of the copyright work, the infringing copies are immediately required to be removed and taken possession of.
On the other hand, Mr. Nabi Chowdhury, learned counsel appearing on behalf of the defendant nos.1 and 2 submits that there is no similarity between the contents of the work published by the respondent nos.1 and 2 and the publication by the plaintiffs. It is submitted that no one can claim copyright over the original work authored by A.T. Dev since he died in 1943 and by reason of Section 22 of the Copyright Act, 1957 anyone is entitled to publish the work.
It is submitted that the plaintiff is also not claiming copyright as such of the original work of the Ashu Tosh Dev as by their own showing various edition of the said dictionary were edited by different authors. They claim that the original work has been edited and accordingly, each work constitutes a separate publication. The learned counsel has relied upon the copyright registration to show that in the year 2012, the 6 plaintiffs claim copyright over the works of which Narayan Debnath was claimed to be the author. This clearly shows that the plaintiffs are not claiming copyright of the original work of Ashu Tosh Dev. It is submitted that since the books only refer to the name of the common ancestor, as author of the original work there is no violation of either trademark or copyright law.
In a passing off action registration of a mark or a part of the mark may assume importance if it is shown that the said mark has been continuously and uninterruptedly used for a considerable period of time and at times a prior adoption of the mark without having registration protects the right of the owner of the mark over registered proprietor in an infringement action. There cannot be any doubt that the plaintiff was incorporated in the year 1945 and has been using the name Dev Sahitya Kurhir and publishing the dictionary in various names and styles in which the name of A. T. Dev has been prominently mentioned. Although the plaintiff could not have claimed any right with regard to the original work and has failed to impress upon this Court that the contents of both the works are same and/or similar, however, the adoption of the name A.T. Dev or use of the name Dev by the defendant nos.1 and 2 in the said dictionary cannot be satisfactorily explained at this stage. The only explanation offered was that A.T. Dev was the common ancestor.
The defendants in the preface of their book has said that the said work by passage of time has lost much of its importance but still then adopted the mark A.T. Dev to identify its publication with A.T. Dev. Until January, 2016 there was no other publication on record to show that any company has published any dictionary of this kind using the name A.T. Dev.
Under such circumstances, the respondent nos.1 to 6 are restrained from using the word A.T. Dev or Dev in the dictionary they have published since January, 7 2016. The plaintiff is given two weeks time to change the get up of the said dictionaries and shall not use the name "A.T. Dev" or "Dev" in relation to compact dictionary, periodicals, books and/or magazines of like nature as the use of the said names may create a confusion in the mind of public that these are all publications of the plaintiffs. However, this order shall not prevent the defendants to exploit the original work of Ashu Tosh Dev and using the name of Ashu Tosh Dev in any other manner. It is recorded that no releif is claimed against the respondent no.7. The preface to the offending book, however, can be retained with a disclaimer that this dictionary is not published by Dev Sahitya Kutir.
Affidavit-in-opposition shall be within three weeks from date. Affidavit-in-reply thereto, if any, shall be filed within two weeks thereafter. The matter shall appear in the list under the heading 'Motion Adjourned' six weeks hence.
The statement of account for the year 2015-2016 and 2016-2017 filed by the defendants are kept with the record.
(SOUMEN SEN, J.) B.Pal/AS