Calcutta High Court
Saregama India Limited vs Whackedout Media Pvt. Ltd. & Anr on 20 April, 2017
Author: Soumen Sen
Bench: Soumen Sen
GA No.138 of 2017
CS No.426 of 2014
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
ORIGINAL SIDE
SAREGAMA INDIA LIMITED
-Versus-
WHACKEDOUT MEDIA PVT. LTD. & ANR.
Appearance:
Mr. Pratap Chatterjee, Sr. Adv.
Mr. Ranjan Bachawat, Sr. Adv.
Mr. Debnath Ghosh, Adv.
Mr. Soumya Roy Chowdhury, Adv.
Mr. S. Dasgupta, Adv.
Mr. Gautam Banerjee, Adv.
...for the plaintiff.
Mr. Ratnanko Banerjee, Sr. Adv.
Mr. Subhasis Sengupta, Adv.
...for the defendant No.1.
Mr. Rudraman Bhattacharyya, Adv.
Mr. Prithwiraj Sinha, adv.
Ms. Pragya Mishra, Adv.
...for the defendant No.2.
BEFORE:
The Hon'ble JUSTICE SOUMEN SEN
Date : 20th April, 2017.
The Court : This is an application for revocation of leave
under Clause 12 of the Letters Patent. The defendant no.1 has
already entered appearance and filed written statement. The
application filed by the defendant no.1 for vacating the ad
2
interim order of injunction was dismissed on merit on 19th January,
2015. The grounds are:
a) no part of the cause of action has arisen within the
jurisdiction of this Court; and,
b) access of website does not confer jurisdiction on
this Court.
The plaintiff has filed a suit after obtaining leave
under Clause 12 of the Letters Patent alleging infringement of
copyright. The plaintiff claims to be the owner of the copyright
of all the musical and literary works and sound recordings of the
songs forming the subject-matter of the suit.
Leave under Clause 12 of the Letters Patent was
obtained on the basis of the averments made in paragraphs 22, 28
and 31 of the plaint which read:
22. In such circumstances, the plaintiff is entitled to
restrain the defendants and/or their men, servants,
agents and/or distributors and/or anyone claiming
through them from uploading, streaming the impugned
contents and making them accessible to the whole
world including India both within and outside the
jurisdiction of this Hon'ble Court including at
various places including but not limited to
Chowringhee Road, Park Street, Esplanade, Central
Avenue, Hare Street, within the jurisdiction of
3
this Hon'ble Court, containing the infringing sound
recordings and underlying literary and musical
works of the said songs as stated above and/or
marketing internet Download rights containing the
infringing works.
28. The plaintiff is entitled to and claims orders of
perpetual injunction against the defendants.
Injunction is also necessary to prevent the
multiplicity of judicial proceedings. Such invasion
of the rights of the plaintiff has occurred all
over the world as well as in India including at its
place of business at 2, Chowringhee Approach,
Kolkata 700 072 within the aforesaid jurisdiction.
31. Further the plaintiff is the owner of the copyright
of all the musical and literary works and sound
recording of the said songs under the provisions of
the Copyright Act, 1957 and has been carrying on
business at 2, Chowringhee Approach, Kolkata 700
072 within the aforesaid jurisdiction and is thus
entitled to file the instant suit in this Hon'ble
Court under Section 62 of the Copyright Act, 1957."
Mr. Ratnanko Banerjee, learned Senior Counsel along with
Mr. Subhasis Sengupta, Advocate on behalf of the petitioner
submits that in view of the law laid down by the Hon'ble Supreme
4
court in the case of Indian Performing Rights Society Ltd. vs.
Sanjay Dalia & Anr. reported in 2015(10)SCC 161 and a Division
Bench judgment of the Delhi High Court in Banyan Tree Holding (P)
Ltd. vs. A. Murali Krishna Reddy & Anr. reported in 2009 SCC
OnLine Del 3780, this Court has no jurisdiction. Apart from the
aforesaid judgment the learned Senior Counsel has also relied upon
a subsequent Division Bench unreported judgment of the Delhi High
Court delivered in FAO(OS) No.290/2016 & CM No.37465/2016 (P.K.
Sen vs. Exxon Mobile Corporation & Anr.) on 4th January, 2017 where
Sanjay Dalia (supra) was considered.
The learned Senior Counsel has submitted that the
plaintiff has proceeded on the basis that a part of the cause of
action has arisen within the jurisdiction of this Court. The said
basis is erroneous since the plaintiff is having its registered
office at Dumdum and the office at Chowringhee is immaterial and
inconsequential for the purpose of invoking the jurisdiction of
this Court for alleged infringement of copyright in view of the
ratio of the judgment in Sanjay Dalia (supra). The branch office
of the plaintiff at Chowringhee within the jurisdiction of this
Court cannot confer jurisdiction having regard to the fact that it
has its head office or the principal place of business is at
Dumdum. A subordinate office cannot be considered as a place of
business within the meaning of 'carrying on business' under
Section 62(2) of the Copyright Act, 1957. The learned Senior
5
Counsel taking inspiration from some of the observations made by
the Hon'ble Division Bench of Delhi High Court in Banyan Tree
Holding (P) Ltd. Vs. A. Murali Krishna Reddy reported at 2010 (42)
PTC 361 (Del). submitted that there is no averment made in the
plaint which would show that there has been an active use of the
website within the jurisdiction of this Court and in absence
thereof, the Court cannot assume any jurisdiction.
Par contra Mr. Ranjan Bachawat, learned Senior Counsel
with Mr. Debnagh Ghosh, Advocate submitted that assumption of
jurisdiction by this Court is under Clause 12 of the Letters
Patent. In view of the averments made in the paragraphs 22, 28
and 31, it cannot be said that no part of the cause of action has
arisen within the jurisdiction of this Court. An unreported
judgment of a co-ordinate Bench in Hindustan Unilever Limited vs.
Sushil Kumar Sitaldas Dhirani decided on 1st July, 2016, has been
relied upon to show that the learned Single judge, upon
consideration of Sanjay Dalia (supra) held that for the purpose of
jurisdiction, the High Court would be guided by Clause 12 of the
Letters Patent and accordingly the contention raised by the
defendants in the said proceeding that by virtue of Section 62(2)
of the Copyright Act, 1957 this Court has no jurisdiction, was
turned down.
6
An unreported judgment of the Bombay High Court in
(Veritas Exports v. Bank of Baroda) reported in 2016 SCC OnLine
Bom 3816, and the two decisions of the Hon'ble Supreme Court,
namely, Union of India Vs. Chajju Ram reported in AIR 2003 SC 2339
and Bhuwalka Steel Industries Ltd. Vs. Bombay Iron and Steel
Labour Board & Anr. reported in (2010) 2 SCC 273, which appear to
have been taken into consideration by Justice Harish Tandon in
Hindustan Unilever Ltd. vs. Sushil Kumar Sitaldas Dhirani being GA
No.1802 of 2016, GA No.1805 of 2016 With CS No.100 of 2016 and
Hindustan Unilever Limited vs. Nitin Kukreja being GA No.1037 of
2016 With CS No. 101 of 2016 are also placed for the proposition
that the jurisdiction of this Court is to be decided on the basis
of Clause 12 of the Letters Patent and not otherwise. An
unreported judgment of this Court in ITC Limited vs. Irinjalakuda
Town Co-Operative Bank Ltd. & Ors. Being GA No. 3382 of 2016 is
relied upon to show that accessibility to the web-page can also in
appropriate cases constitute a cause of action.
The jurisdiction of the High Court to try, see and determine
a proceeding in the Original Side is guided by Clause 12 of the
Letters Patent. The said Clause 12 reads:-
"12. Original Jurisdiction as to suits.- And We do further
ordain, that the said High Court of Judicature at Fort
William in Bengal, in the exercise of its ordinary
original civil jurisdiction, shall be empowered to
receive, try and determine suits of every description,
7
if, in the case of suits for land or other immovable
property such land or property shall be situated, or in
all other cases if the cause of action shall be arisen,
either wholly, or, in case the leave of the Court shall
have been first obtained, in part, within the local
limits of the ordinary original jurisdiction of the said
High Court, or, if the Defendant at the time of the
commencement of the suit shall dwell, or carry on
business, or personally work for gain within such
limits; except that the said High Court shall not have
such original jurisdiction in cases falling within the
jurisdiction of the Small Cause Court at Calcutta in
which the debt or damage, or value of the property sued
for, does not exceed One hundred rupees."
The other provisions of law governing jurisdiction of a Court
as has come up for consideration are Section 20 of the Code of
Civil Procedure and Section 62(2) of the Copyright Act which read
as follows:
Section 20 of the Code of Civil Procedure
20. Other suits to be instituted where defendants
reside or cause of action arises.- Subject to the
limitations aforesaid, every suit shall be instituted in a
Court within the local limits of whose jurisdiction-
(a) the defendant, or each of the defendants where
there are more than one, at the time of the
commencement of the suit, actually and
voluntarily resides, or carries on business,
or personally works for gain; or
8
(b) any of the defendants, where there are more
than one, at the time of the commencement of
the suit, actually and voluntarily resides,
or carries on business, or personally works
for gain, provided that in such case either
the leave of the Court is given, or the
defendants who do not reside, or carry on
business, or personally work for gain, as
aforesaid, acquiesce in such institution; or
(c) the cause of action, wholly or in part,
arises.
1. [ * * * ]
2. [Explanation]. - A corporation shall be deemed to carry
on business at its sole or principal office in India
or, in respect of any cause of action arising at any
place where it has also a subordinate office, at such
place.
Section 62(2) of the Copyright Act
62. Jurisdiction of Court over matters arising
under this Chapter.- (1) Every suit or other civil
proceeding arising under this Chapter in respect of the
infringement of copyright in any work or the infringement
of any other right conferred by this Act shall be
instituted in the district Court having jurisdiction,
(2) For the purpose of sub-section (1), a "district Court
having jurisdiction" shall, notwithstanding anything
contained in the Code of Civil Procedure, 1908 (5 of
1908), or any other law for the time being in force,
include a district Court within the local limits of whose
jurisdiction, at the time of the institution of the suit
or other proceeding, the person instituting the suit or
9
other proceeding or, where there are more than one such
persons, any of them actually and voluntarily resides or
carries on business or personally works for gain."
In Muttra Electric Supply Co. Ltd. Vs. Gopal Saran reported
at 59 CWN 419 the scope of Clause 12 has been succinctly stated by
Justice P.B. Mukharji, J. a former Chief Justice of this Court and
an eminent jurist in the following words:-
"The basic character of the jurisdiction of this Court
under clause 12 of the Letters Patent requires a more
thorough investigation than it has received so far. Under
this clause there is first a grant of power to this Court to
receive, try and determine suits of every description. Then
there is a broad classification of such suits into two
divisions. The first classification is concerned with suits
for land and immovable property and the second classification
is with regard to other suits. Regarding the first class of
suits relating to land and immovable property the limitation
of jurisdiction of this Court is that such land or immovable
property must be situated within its jurisdiction. Regarding
the second class of suits other than those for land and
immovable property the first limitation is that the cause of
action must arise wholly within its jurisdiction. Then this
clause deals with those cases where part of the land or part
of the cause of action is outside the jurisdiction of this
Court. It is here that the leave of this Court has first to
be obtained before the suit can be instituted in this Court,
with the one exception where the defendant at the time of the
suit dwells or carries on business or personally works for
gain within the jurisdiction of the Court.
10
A close scrutiny of this clause, therefore, reveals that
there are certain total and absolute jurisdictions of this
Court. They are where the whole of the land or immovable
property is situated within its jurisdiction when the suit is
for such land or immovable property. That is also the case
where the whole of the cause of action arises within the
jurisdiction of the Court in suits other than suits for land
and immovable property. Also that is the case in such cases
where the defendant at the time of the institution of the
suit dwells or caries on business or personally works for
gain within the jurisdiction of this Court irrespective of
the fact where the cause of action arises. These three are
the categories of total and absolute jurisdiction of the
Court under the grant of power in clause 12 of the Letters
Patent. No question of the litigant having to take the leave
of the Court arises in these three cases. So long as the
litigant satisfies the test laid down in these three cases
his right to institute the suit in this Court is absolute and
unfettered. The court can neither assume nor renounce such
jurisdiction.
But then there is another class of jurisdiction which
this Court can avail under clause 12 of the Letters Patent
where the reality or the cause of action is not wholly but
only partly within its jurisdiction. It is an inchoate
jurisdiction which comes into action upon the Court granting
the leave to institute the suit. It is the nascent
jurisdiction which lies dormant in this Court and can only be
put into life and operation by an act of the Court in
granting leave to institute the suit. No act of the Court is
necessary to assume jurisdiction in those three cases, which
I have just described where the jurisdiction is total and
absolute. There the Court in its inception is invested with
11
jurisdiction. But here the Court has to acquire it. Here
the jurisdiction does not depend only on the fact of the
Court but also on the act of the Court."
The circumstances under which a suit under Clause 12 of the
Letters Patent would lie has also been elaborately discussed in
Chainrup Sampatram v. Punjab & Sind Bank, reported at 2009 (1) CHN
346 at Paragraph 24 which reads:
"24. There are three limbs to Clause 12 of the Letters
Patent : the first limb covers suits for land or other
immovable property, which is not germane for the present
purpose; the second limb speaks of the place of accrual of
the cause of action in the suit, requiring no previous leave
if the cause of action arises wholly within jurisdiction but
requiring previous leave if only a part - however
infinitesimal or significant - of the cause of action
arises within jurisdiction; and, the third is the suits of
the defendant at the time of commencement of the suit. A
suit for land (or other immovable property) stands on a
different pedestal and it is unnecessary to go into that
aspect of Clause 12 here. But in a suit which is not a suit
for land (or other immovable property) the plaintiff has a
choice of invoking the jurisdiction of this Court on either
of the two remaining limbs of Clause 12. If there is a
solitary defendant in a suit which is not a suit for land
(or other immovable property), the plaintiff may
unquestionably institute it on the Original Side of this
Court if the entirety of the cause of action arises within
the original jurisdiction of the Court and irrespective of
where the defendant may dwell or carry on business or
12
personally work for gain. If there is a solitary defendant
in a suit which is not a suit for land (or other immovable
property), the plaintiff may institute it on the original
side of this Court if a part of the cause of action arises
within the original jurisdiction of this Court irrespective
of where the defendant may dwell or carry on business or
personally work for gain, subject, however, to obtaining
prior leave under Clause 12 to institute the suit. It there
is a solitary defendant in a suit which is not a suit for
land (or other immovable property), the plaintiff may
institute it on the original side of this Court if the
defendant, at the time of the commencement of the suit,
dwells or carries on business or personally works for gain
within the original jurisdiction of this Court, irrespective
of where the cause of action may be arisen. The second and
third limbs of Clause 12 that cover suits other than suits
for land (or other immovable property) are, in a sense,
mutually exclusive; in that the plaintiff has the choice of
either founding territorial jurisdiction on suits of cause
of action or on location of the defendant at the time of
commencement of the suit. In a suit other than a suit for
land (or other immovable property) where the plaintiff sues
more than one defendant, either of the last two limbs of
Clause 12 of the Letters Patent has to be satisfied in
respect of each defendant in the suit for the action to be
launched on the Original Side of this Court."
Section 62(2) of the Copyright contains a non-obstante clause
whereby provision of Section 20 of the Code of Civil Procedure or
any other law concerning the jurisdiction in case of an
13
infringement of a copyright stands abrogated and the said
provision only has to be taken into consideration for deciding the
jurisdiction of a Court. Unlike Section 20 of the Code of Civil
Procedure or Clause 12 of the Letters Patent a very valuable and
special right is given to the plaintiff to institute a proceeding
in a Court of Law within which the person or persons actually and
voluntarily resides or caries on business or personally works for
gain. The question may arise as to whether the expression "any
other law for the time being in force" under Section 62(2) of the
Copyright Act would include Clause 12 of the Letters Patent. In
view of the long catena of decisions, it is now well settled that
Letters Patent stands on a different footing and dose not stand
abrogated by the said expression. There has to be a specific
exclusion (See Vidyawati Gupta & Ors. Vs. Bhakti Hari Nayak & Ors.
reported in AIR 2006 SC 1194 and Iridium India Telecom Ltd. Vs.
Motorola Inc. reported in AIR 2005 SC 514). Neither CPC nor its
principles can be made applicable to the Letters Patent qua
Sections 16, 17 and 20 CPC. (see Jindal Vijayanagar Steel (JSW
Steel Ltd.) vs. Jindal Praxair Oxygen Co. Ltd. reported in 2006
(11) SCC 521). However, since granting a leave under Clause of 12
of the letters patent presupposes that another Court has also
jurisdiction as a part of the cause of action may have arisen
elsewhere also, the Court in an appropriate situation may revoke
the said leave on the ground of forum inconvenience or may in a
14
situation like this by taking into consideration the purposive
interpretation given in Sanjay Dalia (supra) revoke such leave.
The leave under Clause 12 is discretionary. The jurisdiction of
the Court under Clause 12 of the Letters Patent is in no way
affected by Section 62(2) of the Copyright Act, 1967. In Sanjay
Dalia (supra) the Hon'ble Supreme Court was considering a matter
in which the principal place of the business of the plaintiff was
at Mumbai and cause of action also arose at Mumbai. The plaintiff
however, chose Delhi for suing the defendants. On such facts, the
Supreme Court on a purposive construction under Section 62(2) of
the Copyright Act and Section 134(2) of the Trademark Act, 1999
held that the said provisions cannot be interpreted in a manner
which would be prejudicial to the defendants when the fact remains
that the cause of action arises at a place where the head office
of the plaintiff is situated and the defendants are also carrying
on their business at the same place. The Hon'ble Supreme Court
applied the Heydon's Rule to remedy the mischief that my result in
invoking the jurisdiction of a Court at a far flung place,
motivatedly chosen by the plaintiff in order to harass the
defendants. The same would be evident from the paragraphs 17, 18,
19, 20, 21, 22, 23, 25, 26 and 52 which read as follows:
"17. Accrual of cause of action is a sine qua non
for a suit to be filed. Cause of action is a bundle of
facts which is required to be proved to grant relief to
the plaintiff. Cause of action not only refers to the
15
infringement but also the material facts on which right
is founded. Section 20 of the CPC recognises the
territorial jurisdiction of the courts inter alia where
the cause of action wholly or in part arises. It has to
be decided in each case whether cause of action wholly
or in part arises at a particular place. As held by this
Court in Rajasthan High Court Advocates Association v.
Union of India & Ors. [AIR 2001 SC 416]. Thus, a
plaintiff can also file a suit where the cause of action
wholly or in part arises.
18. On a due and anxious consideration of the
provisions contained in Section 20 CPC, Section 62
of the Copyright Act and Section 134 of the Trade
Marks Act, and the object with which the latter
provisions have been enacted, it is clear that if a
cause of action has arisen wholly or in part, where
the plaintiff is residing or having its principal
office / carries on business or personally works for
gain, the suit can be filed at such place(s). The
plaintiff(s) can also institute a suit at a place
where he is residing, carrying on business or
personally works for gain dehors the fact that the
cause of action has not arisen at a place where he /
they are residing or any one of them is residing,
carries on business or personally works for gain.
However, this right to institute suit at such a
place has to be read subject to certain
restrictions, such as in case the plaintiff is
residing or carrying on business at a particular
place / having its head office and at such place
cause of action has also arisen wholly or in part,
16
the plaintiff cannot ignore such a place under the
guise that he is carrying on business at other far-
flung places also. The very intendment of the
insertion of provision in the Copyright Act and the
Trade Marks Act is the convenience of the plaintiff.
The rule of convenience of the parties has been
given a statutory expression in Section 20 CPC as
well. The interpretation of provisions has to be
such which prevents the mischief of causing
inconvenience to the parties.
19. The intendment of the aforesaid provisions
inserted in the Copyright Act and the Trade Marks Act
is to provide a forum to the plaintiff where he is
residing, carrying on business or personally works for
gain. The object is to ensure that the plaintiff is
not deterred from instituting infringement proceedings
"because the court in which proceedings are to be
instituted is at a considerable distance from the
place of their ordinary residence". The impediment
created to the plaintiff by Section 20 CPC of going to
a place where it was not having ordinary residence or
principal place of business was sought to be removed
by virtue of the aforesaid provisions of the Copyright
Act and the Trade Marks Act. Where the corporation is
having ordinary residence / place of business and
cause of action has also arisen at that place, it has
to institute a suit at the said place and not at other
places. The provisions of Section 62 of the Copyright
Act and Section 134 of the Trade Marks Act never
intended to operate in the field where the plaintiff
is having its principal place of business at a
particular place and the cause of action has also
17
arisen at that place so as to enable it to file a suit
at a distant place where its subordinate office
situated though at such place no cause of action has
arisen. Such interpretation would cause great harm
and would be juxtaposed to the very legislative
intendment of the provisions so enacted.
20. In our opinion, in a case where cause of action
has arisen at a place where the plaintiff is residing
or where there are more than one such persons, any of
them actually or voluntarily resides or carries on
business or personally works for gain would oust the
jurisdiction of other place where the cause of action
has not arisen though at such a place, by virtue of
having subordinate office, the plaintiff instituting a
suit or other proceedings might be carrying on business
or personally works for gain.
21. At the same time, the provisions of
Section 62 of the Copyright Act and Section 134 of the
Trade Marks Act have removed the embargo of suing at
place of accrual of cause of action wholly or in part,
with regard to a place where the plaintiff or any of
them ordinarily resides, carries on business or
personally works for gain. We agree to the aforesaid
extent that the impediment imposed under Section 20
CPC to a plaintiff to institute a suit in a court
where the defendant resides or carries on business or
where the cause of action wholly or in part arises,
has been removed. But the right is subject to the
rider in case the plaintiff resides or has its
principal place of business / carries on business or
personally works for gain at a place where cause of
18
action has also arisen, suit should be filed at the at
place not at other places where the plaintiff is
having branch offices, etc.
22. There is no doubt about it that the words
used in Section 62 of the Copyright Act and Section
134 of the Trade Marks Act, "notwithstanding anything
contained in CPC or any other law for the time being
in force", emphasise that the requirement of Section
20 CPC would not have to be complied with by the
plaintiff if he resides or carries on business in the
local limits of the court where he has filed the suit
but, in our view, at the same time, as the provision
providing for an additional forum, cannot be
interpreted in the manner that it has authorised the
plaintiff to institute a suit at a different place
other than the place where he is ordinarily residing
or having principal office and incidentally where the
cause of action wholly or in part has also arisen.
The impugned judgments, in our considered view, do not
take away the additional forum and fundamental basis
of conferring the right and advantage to the authors
of the Copyright Act and the Trade Marks Act provided
under the aforesaid provisions.
23. The provisions of Section 62(2) of the
Copyright Act and Section 134 of the Trade Marks Act
are in pari materia. Section 134(2) of the Trade
Marks Act is applicable to clauses (a) and (b) of
Section 134(1) of the Trade Marks Act. Thus, a
procedure to institute suit with respect to Section
134(1)(c) in respect of "passing off" continues to be
governed by Section 20 CPC.
...
19
25. Considering the first aspect of the aforesaid principle, the common law which was existing before the provisions of law were passed was Section 20 CPC. It did not provide for the plaintiff to institute a suit except in accordance with the provisions contained in Section 20. The defect in existing law was inconvenience / deterrence caused to the authors suffering from financial constraints on account of having to vindicate their intellectual property rights at a place far away from their residence or the place of their business. The said mischief or defect in the existing law which did not provide for the plaintiff to sue at a place where he ordinarily resides or carries on business or personally works for gain, was sought to be removed. Hence, the remedy was provided by incorporating the provisions of Section 62 of the Copyright Act. The provisions enabled the plaintiff or any of them to file a suit at the aforesaid places. But if they were residing or carrying on business or personally worked for gain already at such place, where cause of action has arisen, wholly or in part, the said provisions have not provided additional remedy to them to file a suit at a different place. The said provisions never intended to operate in that field. The operation of the provisions was limited and their objective was clearly to enable the plaintiff to file a suit at the place where he is ordinarily residing or carrying on business, etc. as enumerated above, not to go away from such places. The legislature has never intended that the plaintiff should not institute the suit where he ordinarily resides or at its or at its head office 20 or registered office or where he otherwise carries on business or personally works for gain where the cause of action too has arisen and should drag the defendant to a subordinate office or other place of business which is at a far distant place under the guise of the fact that the plaintiff corporation is carrying on business through branch or otherwise at such other place also. If such an interpretation is permitted, as rightly submitted on behalf of the respondents, the abuse of the provision will take place. Corporations and big conglomerates, etc. might be having several subordinate offices throughout the country. Interpretation otherwise would permit them to institute infringement proceedings at a far-flung place and at an unconnected place as compared to a place where the plaintiff is carrying on their business, and at such place, cause of action too has arisen. In the instant case, the principal place of business is, admittedly, in Mumbai and the cause of action has also arisen in Mumbai. Thus, the provisions of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act cannot be interpreted in a manner so as to confer jurisdiction on the Delhi Court in the aforesaid circumstances to entertain such suits. The Delhi Court would have no territorial jurisdiction to entertain it.
26. The avoidance of counter-mischief to the defendant is also necessary while giving the remedy to the plaintiff under the provisions in question. It was never visualised by the lawmakers that both the parties would be made to travel to a distant place in spite of the fact that the plaintiff has a remedy of 21 suing at the place where the cause of action has arisen where he is having head office / carrying on business, etc. The provisions of the Copyright Act and the Trade Marks Act provide for the authors / trade mark holders to sue at provisions of law never intended to be oppressive to the defendant. The Parliamentary debate quoted above has to be understood in the manner that suit can be filed where the plaintiff ordinarily resides or carries on business or personally works for gain. Discussion was to provide remedy to the plaintiff at convenient place; he is not to travel away. Debate was not to enable the plaintiff at convenient place; he is not to travel away. Debate was not to enable the plaintiff to take the defendant to farther place, leaving behind his place of residence / business, etc. The right to remedy given is not unbridled and is subject to the prevention of abuse of the aforesaid provisions, as discussed above. Parliament never intended that the subject provisions be abused by the plaintiff by instituting suit in wholly connected jurisdiction. In the instant case, as the principal place of business is at Mumbai the cause of action is also at Mumbai but still the place for suing has been chosen at Delhi. There may be a case where the plaintiff is carrying on the business at Mumbai and cause of action has arisen in Mumbai. The plaintiff is having branch offices at Kanyakumari and also at Port Blair, if interpretation suggested by the appellants is acceptable, mischief may be caused by such plaintiff to drag a defendant to Port Blair or Kanyakumari. The provisions cannot be 22 interpreted in the said manner devoid of the object of the Act."
52. In our opinion, the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act have to be interpreted in the purposive manner. No doubt about it that a suit can be filed by the plaintiff at a place where he is residing or carrying on business or personally works for gain. He need not travel to file a suit to a place where defendant is residing or cause of action wholly or in part arises. However, if the plaintiff is residing or carrying on business etc. at a place where cause of action, wholly or in part, has also arisen, he has to file a suit at that place, as discussed above." (emphasis added) The problem can be viewed from another angle. Let us consider the issue where the plaintiff is having its head office at Kolkata and also carries on business at Mumbai both are Chartered High Courts and governed by Clause 12 of the Letters Patent for the purpose of invoking the jurisdiction. The plaintiff has its principal office at Kolkata and the defendants have also having their office at Kolkata, but not within the Original jurisdiction of this Court. A part of the cause of action has arisen within Kolkata but the plaintiff sued the defendants at Mumbai where the defendants have no place of business and no part of cause of action has arisen there. The plaintiff may contend by reason of Section 62(2) of the Copyright Act, the plaintiff is also carrying on business at Mumbai and hence, would invoke the jurisdiction at 23 Mumbai Court by taking advantage of Clause 12 of the Letters Patent. This would not be permissible in view of the decision in Sanjay Dalia (supra) as the defendants cannot be dragged to a place where either it does not have any office or no part of cause of action has arisen there and more particularly, having regard to the fact that the cause of action for the suit has arisen in Kolkata where the defendants have also having their office. The place at Kolkata inextricably connected with the dispute.
Mr. Banerjee, Learned senior counsel has relied upon paragraphs 21 and 22 of P.K.Sen (supra) a Division Bench Judgment of Delhi High Court where Sanjay Dalia (supra) was considered. In P.K. Sen (supra) the Delhi High Court found that the place of the plaintiff no.1's principal office was in USA whereas the cause of action if at all, arose in Kolkata. The plaintiff no.1 is a company registered in USA and therefore, cannot take advantage of the said Act. The Division Bench in paragraph 21 has taken into consideration the four conditions that are required to be taken into consideration in invoking a jurisdiction under Section 134(2) of the Trademark Act and 62(2) of the Copyright act. The said paragraphs 21 and 22 read:-
21. In Ultra Home Construction Pvt Ltd v. Purushottam Kumar Chaubey & Others, in FAO(OS) 494/2015 decided on 11.01.2016, a Division Bench of this court had considered the issue of territorial jurisdiction in the backdrop of Section 134(2) of the said Act. While doing so, the Division Bench 24 had, inter alia, considered the decision of the Supreme Court in Indian Performing Rights Society Limited v. Sanjay Dalia:
2015 (10) SCC 161 as also the earlier Supreme Court decision in the case of Dhodha House v. S.K. Maingi: 2006 (9) SCC 41. The Division Bench observed as under:-
"13. It is evident from the above observations that the interpretation given to the expression ―carries on business in the context of a defendant under section 20 of the Code has also been employed in the context of a plaintiff under the said sections 134(2) and 62(2). Thus, in addition to the places where suits could be filed under section 20 of the Code, the plaintiff can also institute a suit under the Trade Marks Act, 1999 and the Copyright Act, 1957, as the case may be, by taking advantage of the provisions of section 134(2) or section 62(2), respectively. Both the latter provisions are in pari materia. Under these provisions four situations can be contemplated in the context of the plaintiff being a corporation (which includes a FAO (OS) No.290/16 Page 20 of 22 company). First of all, is the case where the plaintiff has a sole office. In such a case, even if the cause of action has arisen at a different place, the plaintiff can institute a suit at the place of the sole office. Next is the case where the plaintiff has a principal office at one place and a subordinate or branch office at another place and the cause of action has arisen at the place of the principal office. In such a case, the plaintiff may sue at the place of the principal office but cannot sue at the place ofthe subordinate 25 office. The third case is where the plaintiff has a principal office at one place and the cause of action has arisen at the place where its subordinate office is located. In this eventuality, the plaintiff would be deemed to carry on business at the place of his subordinate office and not at the place of the principal office. Thus, the plaintiff could sue at the place of the subordinate office and cannot sue (under the scheme of the provisions of section 134(2) and 62(2)) at the place of the principal office. The fourth case is where the cause of action neither arises at the place of the principal office nor at the place of the subordinate office but at some other place. In this case, the plaintiff would be deemed to carry on business at the place of its principal office and not at the place of the subordinate office. And, consequently, it could institute a suit at the place of its principal office but not at the place of its subordinate office. All these four cases are set out in the table below for greater clarity:
S.No Place of Place of Place Place
Plaintiff's Plaintiff's where where
Principal Subordinate cause of Plaintiff
Office /Branch action can
(Sole Office arose additional
office in ly
s.no.1) sue under
section
134(2)
and
section
62(2)
1 A -- C A
2 A B A A
3 A B B B
26
4 A B C A
"
22. Let us see as to under which of the 4 situations, if any, referred to in the table in the above extract does the present case fall? For this, let us assume that the office of the respondent No.2 is the respondent No.1's subordinate / branch office. The place of the plaintiff No.1's principal office is in USA, whereas the cause of action, if at all, arose in Kolkata. Therefore, S.No.1 would have normally applied had the plaintiff No.1 been an Indian company and its principal place of business been in Delhi. But, the plaintiff No.1 is a company registered in USA and, therefore, it cannot take advantage of Section 134(2) of the said Act which is available only to suits under the Trade Marks Act, 1999 filed in India. Similarly, it is not a case falling under S. No.2 inasmuch as the cause of action did not arise at the place of principal office of the plaintiff No.1. It is also not a case which would fall under S.No.3, even if we assume that the office of the respondent No.2 is the subordinate / branch office of the plaintiff No.1. This is so because no part of the cause of action is alleged to have arisen in Delhi. This leaves us with the case falling under S.No.4 where the plaintiff no.1's principal office is in USA and its assumed subordinate office in New Delhi. But the cause of action has arisen in Kolkata. Unfortunately, the place where the plaintiff No.1 could additionally sue under Section 134(2) FAO (OS) No.290/16 Page 22 of 22 would then be in USA which is not available to it because Section 134(2) is in respect of the suits filed in India alone.27
In Banyan Tree Holding (P) Limited vs. A. Murali Krishna Reddy & Anr. reported at 2010(42)PTC 361 (Del), where the question of jurisdiction for a passing off suit, in which neither the plaintiff nor the defendant is located within the territorial jurisdiction of the court was considered. The plaintiff is at Singapore and the defendants in Hyderabad, and the suit is an action for passing off in which neither the plaintiff nor the defendant voluntarily resides or carries on business within the local limits of Delhi.
On a reference of this question by single Judge and after reviewing the decisions in other common law jurisdictions (Canada, UK, Australia and India), the Division Bench of the High Court held as follows:
1. For the purpose of a passing off action, or an infringement action where the plaintiff is not carrying on business within the jurisdiction of a court, and in the absence of a long-arm Statute, in order to satisfy the Forum Court that it has jurisdiction to entertain the suit, the plaintiff would have to show that the defendant "purposefully availed" itself of the Jurisdiction of the Forum Court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of 28 the forum state by the defendant resulted in an injury or harm to the plaintiff within the forum state.
2. For the purposes of Section 20(c) CPC, in order to show that some part of the cause of action has arisen in the forum state by the use of the internet by the defendant the plaintiff will have to show prima facie that the said website, whether euphemistically termed as "passive plus" or "interactive", was specifically targeted at viewers in the forum state for commercial transactions. The plaintiff would have to plead this and produce material to prima facie show that some commercial transaction using the website was entered into by the defendant with a user of its website within the forum state resulting in any injury or harm to the Plaintiff within the forum state.
3. The commercial transaction entered into by the defendant with an internet user located within the jurisdiction of the Forum Court cannot possibly be a solitary trap transaction since that would not be an instance of "purposeful" availment by the defendant.
It would have to be a real commercial transaction that the defendant has with someone not set up by the plaintiff itself. If the only evidence is in the form of a series of trap transactions, they have to be shown as having been obtained using fair means. The plaintiff seeking to establish jurisdiction on the basis of such trap transactions would have to aver unambiguously in the plaint, and also place along with it supporting material, to prima facie show that the trap transactions relied upon satisfy the above test.
29Banyan Tree Holding (P) Ltd. (supra) was subsequently considered in (World Wrestling Entertainment INC vs. M/S. Reshma Collection & Ors.) reported in 2014(58)PTC 52 (Del) where it was held that merely because the plaintiff's website is accessible to its client in Delhi, it would not confer a jurisdiction upon the plaintiff to sue the defendants at Delhi. The basis of the observation can be culled out from paragraphs 21, 22, 23 and 26 of the said report which read:
21. I may deal with the plaintiff's submission regarding territorial jurisdiction on account of its website being accessible in Delhi first, as bulk of the submissions have been advanced on this issue. Section 134(2) of the Act uses the expression "carries on business". The objective of inserting Section 134(2) was to provide the plaintiff a convenient forum to file a suit for infringement, as long as the plaintiff voluntarily resides, carries on business or personally works for gain at such place. The said provision goes beyond the normal rules laid down in the C.P.C. for vesting jurisdiction in Courts. The test to be satisfied as regards the aspect of carrying on business has been laid down in Dhodha House (supra). The sum and substance of the criteria laid down in Dhodha House (supra) is that an essential part of the plaintiff's business, coupled with an element of control exercised by the plaintiff, must exist in such place where the plaintiff claims to be carrying on business either on its own or through an exclusive agent.30
22. The aforementioned criteria will be equally applicable to a party that concludes transactions with its customers over the medium of internet as opposed to a physical retail space. Internet is another medium which provides audio-visual interactive facility for doing business. Merely because it is a more advanced or superior medium, it does not impinge on the determination of the issue whether the merchandiser is carrying on business at a particular place. Prior to the advent of e-commerce over the internet, and even now, business was and continues to be done over telephone and fix. Merely because a person has embarked upon an e-commerce business model, the tests which apply for determination of issues, such as -
when and where the contract is made, or whether the vendor carries on business at the place where the merchandise may be sold, or service may be offered, would not change and would be the same as apply to communications over telephone and fax (see Bhagwan Goverdhandas Kedia Vs. Girdharilal Parshottamdas & Co. AIR 1966 SC 543). In such cases, the plaintiff would have to show that it actually has business interest at the relevant place; a voice in what is done; a share in the gain or loss and some control thereover. For example, the plaintiff could show that it has an exclusive C & F operator in the forum State, or an exclusive dealer that stocks the goods or services of the plaintiff in the forum State - to be delivered or shipped as per a consumer's convenience. The plaintiff could show that it has an exclusive tie up with an agent to manufacture the plaintiff's goods for a particular geography. In the present case, no 31 essential part of the plaintiffs business is carried on at Delhi. In fact, the plaintiff has not pleaded to having any branch office or exclusive agent anywhere in India, let alone Delhi. Merely because the website of the plaintiff is accessible in Delhi is not sufficient to clothe this court with jurisdiction.
23. If the plaintiff's submission were to be accepted, it would mean that the plaintiff could file a suit at any place which provides internet access to the plaintiffs website, irrespective of the defendant's location, only on account of the plaintiff's website being accessible in that State. The insertion of Section 134(2) was with a view to enable the plaintiff to institute a suit where it has actual and substantial business interest so that an additional forum convenient to the plaintiff is available. If the intent of the legislature had been to vest jurisdiction solely on account of accessibility of plaintiff's website at the place of suing, then the same would have been expressly provided for, especially keeping in mind plaintiff's submissions that the legislature has recognized new media on account of various amendments.
26. Therefore, the test in Banyan tree (supra) is with respect to the defendant's use of a website that results in injury to the plaintiff in the forum state, and not a test for the plaintiff's claim of jurisdiction based upon the "carrying on business"
clause. This decision is founded upon the premise that a part of cause of action arises at the place where the defendant sells its offending merchandise/services. Even there, the court imposed a 32 rider that the website of the defendant must be an interactive one, specifically targeting the consumers in the forum State, because mere hosting of a website which can be accessed by anyone from any jurisdiction, is not sufficient for the purpose of jurisdiction. In view of the aforesaid, the decision in Banyan Tree (supra) does advance the case of the plaintiff as it is not the plaintiff's averment that the defendant is hosting a website which sells the plaintiff's infringed products within the jurisdiction of this Court by specifically targeting the customers in Delhi.
The changes made in the Copyright Act and the Trademark law has to be considered by taking into consideration the revolution that had taken place in information and technology where a passive use of the said website may not confer jurisdiction upon the Court merely because such website is accessible at that place but interactive use of the website can confer a jurisdiction at a place where such website is accessible and where such interactive activities have taken place. Internet is a medium which provides audio-visual interactive facility and it cannot be doubted that the plaintiff has business interest at the relevant place. In view of averment made in paragraph 22 of the plaint it cannot be said that no part of the cause of action has arisen within the jurisdiction of this Court. The defendants have not pleaded forum inconvenience. If the defendant's plea is accepted then this 33 plaint is required to return the plaint to Barasat Court which is only few kilometers from here. However, that is not the consideration for not revoking the leave under Clause 12 of the Letters Patent as this Court finds that in view of the averments made in paragraph 22, 28 and 31 of the plaint this Court is having the jurisdiction to try, determine and adjudicate the suit. This Court is in agreement with the view expressed by a coordinate bench in Hindustan Unilever Ltd. vs. Sushil Kumar Sitaldas Dhirani being GA No.1802 of 2016, GA No.1805 of 2016 With CS No.100 of 2016 and Hindustan Unilever Limited vs. Nitin Kukreja being GA No.1037 of 2016 With CS No. 101 of 2016 that the Chartered High Court shall be guided by Clause 12 of the Letters Patent and the jurisdictional issue has to be considered on the anvil of Clause 12 of the Letters Patent. None of the judgments relied upon by Mr. Banerjee has considered the effect of Clause 12 of the Letters Patent vis-à-vis Section 62(2) of the Copyright Act or Section 134 (2) of the Trademark Act. However, the Court would be guided by such provisions while considering a prayer for leave under Clause 12 of the Letters Patent and may decline leave in appropriate cases by taking into consideration the ratio of Sanjay Dalia (Supra).
This application stands dismissed.
However, there shall be no order as to costs.
34At this stage the defendant no.2 has prayed for extension of time to file written statement. Mr.Phiroze Edulji, advocate-on-
record on behalf of the defendant no.2 waived service of writ of summons upon the said defendant no.2.
The plaintiff shall serve a copy of the writ of summons along with a copy of the plaint to the respondents within a week from date. Learned advocate-on-record shall enter appearance of the suit within a week from date and shall file written statement eight weeks thereafter.
Since the Court has proceeded on the basis that the averments made in the plaint is true and correct, the issue as to whether there has been a passive or active use of the website within a jurisdiction of this Court is left open to be decided at the trial of the suit as at this stage it is not possible to arrive at a definite finding on such use of the website within a jurisdiction of this Court.
(SOUMEN SEN, J.) AS/DG2