Delhi High Court - Orders
Sap Se vs Intellipaat Software Solutions Pvt. ... on 22 October, 2020
Author: Mukta Gupta
Bench: Mukta Gupta
$~10
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 303/2020
SAP SE ..... Plaintiff
Represented by: Mr. Ranjan Narula, Advocate.
versus
INTELLIPAAT SOFTWARE SOLUTIONS
PVT. LTD. & ORS. ...... Defendant
Represented by: Mr. Mohit Goel, Mr. Sidhant Goel,
Mr. Aditya Goel, Mr. Faizan Mir,
Advs. for D-1 with D-1 in person.
CORAM:
HON'BLE MS. JUSTICE MUKTA GUPTA
ORDER
% 22.10.2020 Hearing has been conducted through Video Conferencing.
1. The present suit has been filed by the plaintiff impleading Intellipaat Software Solutions Private Limited as defendant No.1, Ashok Kumar as defendant No.2 and the internet connectivity companies being BSNL, MTNL, MTNL Mumbai, Bharti Airtel etc. from defendant No.3 to 24. Defendant No.25 and 26 in the suit are Union of India through Department of Telecommunication and Ministry of Electronics & Information Technology. Defendant No. 27, 28 and 29 in the suit are GoDaddy.com LLC, Cloudflare Inc. and ICICI Bank Limited, Mansarovar Branch, Jaipur, Rajasthan respectively.
2. The present suit was filed by the plaintiff claiming that the company incorporated in Germany and has coined and adopted the use of the mark 'SAP' in the year 1972 and as SAP R/2 and R/3 software in which it has CS(COMM) 303/2020 Page 1 of 8 copyright registration.
3. Grievance of the plaintiff in the suit is to the infringing activities of the defendant No.1 qua the plaintiff's copyrights vested in the softwares SAP R/2 and R/3. Despite the plaintiff having issued a cease and desist notice and the defendant responding that it was not using any of the copyrighted material of the SAP or its course material, same had been developed by the trainers hired by it, defendant No.1 did not stop the said pirated material and hence plaintiff filed the suit.
4. During the course of the present proceedings a settlement has been arrived at between the plaintiff and defendant No.1 before the Delhi High Court Mediation and Conciliation Centre on 1st October, 2020 on the following terms and conditions:
"a) That the Second Party acknowledges that the First Party, based on the representations made in the Plaint, is the sole proprietor of the copyright in respect of the software, training manuals and materials and other confidential and/or copyright-
protected works and information developed and marketed by it ("SAP Materials") including the software SAP HANA, SAP S/4 HANA, SAP BW/4HANA, SAP FICO, SAP SD, SAP MM, SAP QM, SAP PP, SAP BI/BW, SAP NefWeaver, etc., and their various versions, training modules and copies thereof, and SAP materials related thereto.
b) That the Second Party acknowledges that the First Party is the registered proprietor of the marks SAP, SAP logo and other SAP formative marks including SAP HANA in classes 9, 16, 35, 38,41 and 42 and that SAP trademark/ house mark forms an integral part of the First Party's trade and business.
c) The Second Party, their principal officers, directors/partners (if any), employees, agents, franchisees, affiliates, servants and CS(COMM) 303/2020 Page 2 of 8 all other persons acting for and on their behalf undertake to refrain themselves, unless they aequire requisite licenses from the First Party, from hosting, streaming, reproducing, distributing, making available to the public and/or communicating to the public, or facilitating the same, in any manner/ through online platforms including the website www.intellipaat.com and any third parties or social media platforms including but not limited to Facebook, Linkedin, Twitter, Youtube, Instagram or any other cloud based platforms, unlicensed SAP software and/or installing unlicensed SAP software, certification and training material of various SAP modules inclusive but not limited to instruction handbook, teaching materials, manuals, SAP online or classroom training videos, and/or offering remote server access to First Party's software programs for various SAP courses including but not limited to SAP HANA, SAP S/4 HANA, SAP BW/4HANA, SAP FICO, SAP SD, SAP MM, SAP QM, SAP PP, SAP BI/BW, SAP NetWeaver, etc., without the express written authorization in writing of the First Party.
d) The Second Party confirms that it is not providing any classroom and/or imparting online SAP training to third party and/or students since the court's order dated 05.08.2020. Further, the Second Party confirms that it has completely ceased its activities of availing and distributing any remote or otherwise access to any SAP software and/or SAP materials to third party and/or students since the court's order dated 05.08.2020. The Second Party further confirms that it is not providing any assistance whether technical or monetary to any other institute or individual for imparting training or facilitating unauthorised access to SAP pirated software since the court's order dated 05.08.2020.
e) Subject to acquiring requisite permission from the First Party, the Second Party further undertakes not to unauthorizedly use the SAP brand name or SAP corporate logo or any other SAP-owned trademark including SAP CS(COMM) 303/2020 Page 3 of 8 HANA and/or HANA, SAP FICO or FICO at any time in the future and in any form whatsoever {including without limitation in the form of trademark, domain name, email address, copyright, trade name, etc.) and/or in any other manner whatsoever, in respect of their present and future business ventures of any kind without authorization from the First Party, including but not limited to imparting classroom and/or online SAP trainings.
f) Subject to acquiring requisite permission from the First Party, the Second Party undertakes not to directly or indirectly operate and/or use any domain name and/or website containing the mark/s SAP and/or SAP HANA and/or HANA for conducting unauthorised SAP trainings and/or advertisement and promotion of activities involving unauthorized use of SAP brand name or logo, or any other SAP-owned trademarks. The Second Party further undertakes to remove its social media profiles (if any) offering SAP training and/or server access including profiles placed on Facebook, Twitter, YouTube, Instagram and Linkedin, and other online business listings in respect of its aforementioned unauthorised SAP related business activities within 7 days of signing this settlement and not later than the date on which the present suit is decreed by the Hon'ble Court.
g) The Second Party further agrees and confirms that it had obtained the pirated SAP software from SAP CLOOUDS having its web address https://www.sapcloouds.com/ and paid a sum of Rs. 13,68,842 (Rupees Thirteen Lacs Sixty-Eight Thousand Eight Hundred and Forty-Two Only) between 1 -Aug - 2019 to 31 -Aug-2020 to the abovesaid entity towards procuring pirated software. The copy of the agreement/correspondence and invoice/payment acknowledgement issued by the above entity is annexed herewith as "Annexure C".
h) The Second Party further agrees to re-format/erase all of their computer systems, harddisks, compact disks and/ or any other storage media containing First Party's trademarks, software, training manuals, SAP course contents and other SAP CS(COMM) 303/2020 Page 4 of 8 Materials, and destroy all printed materials or any other publication or materials bearing the mark SAP/SAP logo for which the First party holds copyright and trademark.
i) The Second Party agrees to provide the First Party and/or its authorized representative access to their all known addresses and right to audit their servers/ computer systems, records, etc. at any time in future to ensure compliance of the terms of the undertaking. However, it is clarified that before undertaking any auditing of servers/ computer systems, records of the Second Party, the First Party will inform the Second Party in writing and will provide 48 hrs advance notice in writing outlining the purpose of the auditing. The date and time of the visit would be mutually decided by both the parties.
j) This intimation at point (i) will be made on a. Intellipaat Software Solutions Private Limited Attention:- Diwakar Chittora Email: - dchittora@intelIipaat. com Mobile No.:- 9008311988
k) Further, as a part of the undertakings, the Second Party further agree to pay an amount of INR 7,60,000 {Rupees Seven Lacs and Sixty Thousand Only) by way of bank transfer to SAP India Pvt. Ltd to their account No. 6049001 (CITIBANK) having IFSC code CITI0000004 (Swift Code:- CITIINBX) towards compensation and legal fees incurred by the First Party in enforcing its rights. This amount will be paid within 7 days of signing this settlement and not later than the date on which the present suit is decreed by the Hon'ble Court.
1) All the aforesaid undertakings shall be binding on the Second Party, their directors, their officers, servants, agents, legal heirs, successors, representatives, assigns in business, etc. and upon any business in which or any of their directors are directly or indirectly involved.
CS(COMM) 303/2020 Page 5 of 8m) The Second Party agrees that if any of the terms of this settlement is violated by the Second Party after the passing of the decree, it shall be liable to pay compensatory damages to the tune of earnings made by use of unlicensed materials and software. It shall also be liable to reimburse actual cost incurred by the First party in taking recourse to legal action to stop violation of the terms of the settlement.
n) In view of the aforesaid terms of settlement, the First Party agrees to give up its claim of damages against the Second Party in the instant suit proceedings.
o) The Parties agree that in view of the above undertakings and acknowledgements, a decree of permanent injunction be passed in favour of the Plaintiff/ First Party and against the Second party as per Paragraph Nos. 52 (a) to (d) of the prayer clause of the Plaint."
5. Authority letter in favour of Ms. Sonu Kapur and in favour of Mr. Diwakar Chittora has been filed by the plaintiff and defendant No.1 along with the settlement agreement.
6. Mr. Diwakar Chittora, the authorized representative of the defendant is also present in Court through video conferencing. Thus, as per the terms of settlement as noted above, the defendant No.1 has informed the plaintiff from whom the defendant No.1 had taken infringing software.
7. Mr. Diwakar Chittora who is present through video conferencing affirms the terms of settlement and undertakes that the defendant No.1 will abide by the terms of settlement arrived at before the Delhi High Court Mediation and Conciliation Centre on 1st October, 2020. Mr. Diwakar Chittora states that the defendant No.1 has already paid the compensation amount of ₹7,60,000/- as agreed to between the parties which fact is CS(COMM) 303/2020 Page 6 of 8 affirmed by learned counsel for the plaintiff.
8. Considering that the settlement had been arrived at between the plaintiff and defendant No.1, learned counsel for the plaintiff and defendant No.1 states that the suit be decreed in terms of the settlement viz-a-viz the defendant No.1. The plaintiff be permitted to proceed in the suit against newly sought to be added defendants as per prayers in IA 9713/2020.
9. Suit is accordingly decreed in favour of the plaintiff and against the defendant No.1 in terms of the settlement as noted above. Decree sheet will incorporate the terms of settlement.
10. The suit will now however proceed against defendant No.2 to 24 the internet connectivity intermediaries and defendant No.25 and 26.
11. Learned counsel for the plaintiff states that he be permitted to delete defendant No. 27, 28 & 29 as the same were domain name Registrar, Webhost and the Bank of defendant No.1.
12. Consequently, the defendant No.27, 28 and 29 are directed to be deleted from the array of parties.
13. List the suit on 8th February, 2021.
14. Order be uploaded on the website of this Court. I.A.9713/2020 (under Order I Rule 10 CPC-by plaintiff)
1. By this application the plaintiff seeks to implead defendants No. 30, 31, 32 and 33, defendant No. 30 alleged infringer from whom defendant No.1 had obtained the infringing software; the defendant No.31 being the Domain name Registrar, defendant No.32 being the Webhost and defendant No.33 being the Bank.
2. Issue notice to the proposed defendant No.30, 31, 32 & 33 on the plaintiff taking steps through e-mail/SMS/Whatsapp/speed post and courier CS(COMM) 303/2020 Page 7 of 8 returnable before this Court on 8th February, 2021. I.A. 6558/2020 (under Order XXXIX Rule 1 and 2 CPC) List on 8th February, 2021.
MUKTA GUPTA, J.
OCTOBER 22, 2020 'ga' CS(COMM) 303/2020 Page 8 of 8