Delhi High Court
Gotham Entertainment Group Llc & Ors. vs Diamond Comics Pvt. Ltd. on 8 December, 2009
Author: Manmohan Singh
Bench: Manmohan Singh
* HIGH COURT OF DELHI : NEW DELHI
+ IA No.12890/2006, 672/2007 & 4669/2002 in CS (OS) No.229/2002
Gotham Entertainment Group LLC & Ors. ......Plaintiffs
Through: Mr. Gaurav Bahl, Adv.
Versus
Diamond Comics Pvt. Ltd. .....Defendant
Through: Mr. Amarjit Singh, Adv. with
Mr. Dhruv Bhagat, Ms. Navneet Momi
and Ms. Surpeet Kaur, Advs.
Judgment reserved on: 25th November, 2009
% Judgment decided on : 8th December, 2009
Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH
1. Whether the Reporters of local papers may
be allowed to see the judgment? No
2. To be referred to Reporter or not? Yes
3. Whether the judgment should be reported
in the Digest? Yes
MANMOHAN SINGH, J.
1. By this order I shall dispose of three applications, i.e. two filed by the plaintiffs under Section 151 of the Code of Civil Procedure, 1908 (hereinafter referred to as 'CPC') and the third filed by the defendant under Order XXV Rule 1 of the CPC.
2. The brief facts in order to decide these three applications are as under :
(a) The plaintiffs have filed the aforesaid suit seeking a CS (OS) No.229/2002 Page 1 of 12 judgment and decree of perpetual injunction restraining the defendant from publishing or printing the copyright character of the plaintiffs viz. SPIDER-MEN, BATMAN and TARZAN or any character bearing resemblance to the above copyright character in any magazine, periodical, journal or any other publication whatsoever and for infringement of the plaintiff's copyright and have further sought a decree of perpetual injunction restraining the defendant from using in relation to any magazine, periodical, journal, comic book or any other publication or article or stationery, the trademark SPIDER-MAN and other mark identical with and/or deceptively similar to the trademark so as to infringe the plaintiff's trademarks.
(b) The plaintiffs have also sought a decree of perpetual injunction restraining the defendant from using in relation to any magazine, periodical, journal, comic book or any other publication or article or stationery the trademark SPIDER-MAN, BATMAN and TARZAN or any other mark identical or deceptively similar to the above said trademarks so as to pass off such magazine, periodical, journal, comic book as the plaintiffs' magazine, periodical, journal, comic book bearing the trademark SPIDER-MAN, BATMAN and TARZAN. The plaintiffs have further sought rendition of accounts, damages and various other reliefs in the suit.
CS (OS) No.229/2002 Page 2 of 12
3. In the first application IA No.12890/2006, the plaintiffs have stated that they desired to file the original documents which are relied upon world wide by them in aid of their rights including rights forming subject matter of the present suit.
4. In the second application IA No.672/2007, the plaintiffs have sought the leave of this court to file certain original/additional documents which are already filed alongwith the list of documents. It appears from the record that vide order dated 21st August, 2006 the plaintiffs were granted four weeks' time to file the original documents subject to cost of Rs.50,000/-.
5. Learned counsel for the plaintiffs has submitted that the cost has been paid, however, since the plaintiffs are from outside India, it took some time to file the original/additional documents and they are filed beyond the period granted by the court. As far as the additional documents are concerned, learned counsel for the plaintiffs has argued that these documents are in the nature of legal proceeding certificate and renewal of trademarks copyright registration certificate and copies of agreement and licenses etc., some of them are already on record, therefore, no prejudice would be caused to the defendant if the same are taken on record.
6. Both the applications have been strongly opposed by the learned counsel for the defendant, who has argued that the order dated 21st August, 2006 is a very specific order wherein the CS (OS) No.229/2002 Page 3 of 12 plaintiffs were only directed to file the original documents within four weeks.
7. It is stated by him that neither have the documents been filed on time nor was there was any order by the court for filing of the additional documents. It has also been argued by him that these documents were already in power and possession of the plaintiffs but no valid reason has been assigned by the plaintiffs as to why these documents were not filed by them alongwith the plaint.
8. It has further been argued that some of the documents as alleged by the plaintiffs are actually in the nature of affidavits, which cannot be treated as documents and are not the original documents. As per direction of the court vide order dated 21st August, 2006.
9. Thus, it is pleaded that both the applications are totally misconceived, and could not have been filed under Section 151 CPC in the presence of the specific provision of Order 7 Rule 14 CPC. Lastly, it is argued that documents referred in the two applications and filed with the plaint alongwith the list of documents are not the original documents already filed but these are, in fact, additional documents which have been filed contrary to the order dated 21st August, 2006.
10. In support of his contentions, he has referred to the CS (OS) No.229/2002 Page 4 of 12 order passed by this Court in CM (Main) No.231/2009 Haldiram (India) Pvt. Ltd. & Ors. Vs. M/s. Haldiram Bhujiawala & Anr. passed on 8.4.2009 by Manmohan, J. and Asia Pacific Breweries Vs. Superior Industries, 2009 (40) PTC 108 wherein the prayer of taking the documents on record has been rejected by the court.
11. Now dealing with the submissions of the parties, the fact of the case is that the plaintiffs have filed the suit for infringement of copyrights as well as trademarks, which are being infringed by the defendant as per the case of the plaintiffs. No ex parte interim order is passed in favour of the plaintiffs. The interim application being IA No.1009/2002 is pending for disposal.
12. As regards the documents filed by the plaintiffs, it appears that the plaintiffs have filed copies of some of the documents which are photostat copies and some which are original documents alongwith with the plaint. A second set of documents was filed alongwith the list of documents dated 30th October, 2006 i.e. after the expiry of more than six weeks from the date of the order when time was granted by the court vide order dated 21st August, 2006.
13. Another set of documents have been filed on 18th January, 2007 by the plaintiffs which are mostly certified copies of the registration certificates, renewal certificates and copyright CS (OS) No.229/2002 Page 5 of 12 registration and the same have been filed after the expiry of about three and a half months. Undisputedly, there are averments with regard to the registration of copyrights and trademarks as mentioned in the plaint.
14. The case of Haldiram's (supra) relied upon by the learned counsel for the defendant is different as compared to the present matter. In that case, the suit was filed in 1992 and the application for filing the documents was filed after the expiry of ten years. Yet another application for framing the additional issues was filed on 20th January, 2009 despite the direction issued by Supreme Court to District Judge to dispose of the suit preferably within six months from 1st October, 2008. Inspite of the direction issued by the Apex Court, various applications were filed by the plaintiff with an aim to defeat the spirit of orders of the Apex Court and to delay the matter. The application for additional documents under these circumstances was refused and CM(M) was also dismissed. The order passed in that matter is based upon its own facts hence cannot be applied to the facts in the present case.
15. The second order cited by the defendant in the case of Asia Pacific Breweries (supra) can not be applied to the facts of the present case as in the first para of the order itself, it is mentioned that the plaintiffs are seeking to file around 70 CS (OS) No.229/2002 Page 6 of 12 documents alongwith affidavit of the witnesses. But in the present case, no such situation has arisen as the issues in the matter are yet to be framed. Further, most of the documents filed by the plaintiffs are certified copies of legal proceeding certificates, renewal certificates and copyright registration certificates which are admissible in evidence under Section 137 of the Trademarks Act, 1999 and under the Copyright Act, 1957 and rest of the documents are in the nature of agreement/licenses and affidavits alongwith copies of agreement are filed on the basis of the pleadings.
16. I find no force in the contention of the defendant that the application is not maintainable as it should have been filed under Order 7 Rule 14 CPC in view of the settled law that it is the substance of the application that matters and not the nomenclature given in the cause title of the application. Under Section 151 CPC, the court has inherent power to consider an application wherein a wrong provision is mentioned. It cannot be an obstacle for granting the relief made out from the contents of the application.
17. It is settled law that no party can be permitted to sidetrack the main issue and be allowed to control the court proceedings, either by going to elementary procedural law or by pressing hyper-technical issues with the sole motive of delaying the disposal of the main suit.
18. Under Order 7 Rule 14 CPC, where the plaintiff relies on any documents in support of his claim, he should enter such CS (OS) No.229/2002 Page 7 of 12 documents in a list to be annexed with the plaint and the court can allow the production of such documents during the suit on sufficient cause being shown for non production. (1979 Mah LJ
236). If the suit relates to a document, the furnishing of a copy of such document is necessary or imperative in the interest of justice. The court can in exercise of its inherent powers direct the plaintiff to furnish a copy of the documents (Sreenivas Basudev V. Vineet Kumar Kothari, AIR 2007 Gau 5).
19. In case the said documents are not taken on record, the plaintiff will suffer irreparable injury and grave prejudice would be caused on merits of the case.
20. After thoughtful consideration, I am of the view that in the interest of justice, equity and fair play, these applications are allowed and the documents filed by the plaintiffs are taken on record subject to payment of costs of Rs.10,000/- which shall be paid by the plaintiffs to the defendant within four weeks from the date of this order. Both the applications are disposed of with these directions.
IA No.4669/2002 (under Order 25 Rule 1 CPC by the defendant)
21. As far the present application is concerned, it is stated that plaintiff Nos.1, 2 and 4 are companies incorporated under the laws of USA and they have their principal place of business at USA. None of the plaintiffs have any branch office in India nor CS (OS) No.229/2002 Page 8 of 12 any of the said plaintiffs are residing in India.
22. It is submitted in this application that the plaintiffs have no assets, tangible or intangible, within the jurisdiction of this court nor have the plaintiffs provided any evidence in this regard. It is pleaded that in case the suit is decided against the plaintiffs, the defendant would not be able to recover the costs of the proceedings from the plaintiffs.
23. It is argued by the learned counsel for the defendant on merit that since the plaintiffs have failed to establish their right and reputation in the comic character SPIDER-MAN, BATMAN and TARZAN in India, there is every likelyhood that the plaintiffs would not be forthcoming if the suit is decided against them and the defendant would not be able to recover the cost of the proceedings.
24. It is also argued by the learned counsel for the defendant that the defendant has a strong prima facie case in its favour. Balance of convenience also lies in favour of the defendant and against the plaintiffs.
25. During the course of the arguments, the counsel for the defendant has argued that the copyrights in relation to the characters have already expired and the said fact has not been disclosed by the plaintiffs in the plaint. The defendant prayed in this application that the plaintiffs be directed to deposit a CS (OS) No.229/2002 Page 9 of 12 security amount of Rs.10 lac as estimated cost of the trial incurred and likely to be incurred by the defendant.
26. In the reply filed by the plaintiffs, it is contended that the defendant has no valid defence in the suit and the plaintiffs are world renowned entities with a substantial global presence and worldwide reputation and goodwill.
27. It is also denied by the plaintiffs that they have failed to establish their right and reputation for their comic characters SPIDER-MAN, BATMAN and TARZAN in India.
28. The learned counsel for the defendant has referred to the judgment reported as S A Brothers & Co. & Anr. Vs. John Bartholomow & Son Ltd. & Ors., 88 [2000] DLT 425 wherein the respondent No.1 in that case was directed to furnish a security of Rs.6000/- in trial court within three months. The said judgment, however, has been passed as per its own facts. In that case, there were rival claims and counter claims between the parties and the said order was passed against the respondent No.1, who was outside India.
29. Second case cited by the defendant is Revlon Inc. & Ors. Vs. Kemco Chemicals & Ors. AIR 1987 Calcutta 28 wherein the High Court of Calcutta directed the plaintiff to furnish security to the extent of Rs.50,000/- by way of bank draft. In this case, there was controversy between the parties regarding the CS (OS) No.229/2002 Page 10 of 12 representative capacity of the authorised person and in spite of repeated demands on behalf of the defendant, inspection of the original power of attorney was not given to the defendant. Moreover, the plaintiff was admittedly outside India.
30. In the third judgment referred by the defendant reported as Hearst Corporation Vs. Dalal Street Communication, 1996 PTC (16) 133, the Calcutta High Court while issuing the interim order directed the plaintiff to furnish security to the extent of Rs.50,000/- by referring the abovesaid decision of Revlon case (supra).
31. The case of the plaintiffs is for infringement of copyrights as well as trademarks against the defendant on the basis of registrations granted in their favour. The plaintiffs are claiming the relief of rendition of accounts of Rs.20 lac as well as damages to the tune of Rs.1 crore from the defendant. Admittedly, the defendant has not filed any counter claim against the plaintiffs for recovery of any amount nor any suit is stated to be pending.
32. I agree with the view taken by the Calcutta High Court in the two decisions referred by the defendant. The rule, however, does not take away the discretion of the Court with respect to the quantum of the amount. The amount of Rs.10 lac as security amount prayed in the application by the defendant CS (OS) No.229/2002 Page 11 of 12 appears to be unreasonable. The defendant is only entitled for the costs if the suit is dismissed as presumed by the defendant, therefore, I direct the plaintiffs to deposit Rs.50,000/- within two weeks with the counsel for the plaintiffs on record as security who will hold the said amount and will invest the same in a fixed deposit not exceeding one year with a nationalized bank and file the photocopy of fixed deposit receipt before this court alongwith an undertaking by way of affidavit of the counsel on record that in case any cost is awarded in favour of the defendant, the same shall be paid accordingly against the said amount.
With these observations, the application is disposed of. List the matter for disposal of IA No.1009/2002 and 4669/2002 at the end of short cause matters on 22.12.2009.
MANMOHAN SINGH, J.
DECEMBER 8, 2009 sa.
CS (OS) No.229/2002 Page 12 of 12