Bombay High Court
Darshan Jain And Another vs Piyush Surana on 1 March, 2019
Equivalent citations: AIRONLINE 2019 BOM 881
Author: S.J.Kathawalla
Bench: S.J. Kathawalla
kpd 1 / 13 CPCDL-30-2019.doc IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION IN ITS COMMERCIAL DIVISION CONTEMPT PETITION (L) NO. 30 OF 2019 IN COMMERCIAL IP SUIT NO. 1490 OF 2018 1) Darshan Jain, doing business under ) the name and style of Darshan's having ) office at 4A, 801 Wallfort House, ) Nr. Citi Centre Mall, Above Bandhan ) Bank, Goregaon (W), ) Mumbai - 400 062. ) 2) Indrakumar Jain, doing business under ) the name and style of Sushil Enterprises,) having office at 14A, 801 Wallfort House,) Nr. Citi Centre Mall, Above Bandhan ) Bank, Goregaon (W), Mumbai - 400 62. ) ... Petitioners/Plaintiffs Versus Piyush Surana, doing business under the name ) and style of K.M. International, having his ) residence at 202, 2nd Floor, Evershine Halley ) Tower, Thakur Village, Kandivali (East), ) Mumbai - 400 101. ) ... Respondent/Defendant Mr. Vinod Bhagat alongwith Ms. Laher Shah instructed by G.S. Hegde and V.A. Bhagat for the Petitioners/Plaintiffs. Mr. M.M. Vashi, Sr. Advocate alongwith Ms. A. Devkar instructed by M.P. Vashi & Associates for the Respondent. Mr. Sharan Jagtiani alongwith Mr. Aditya Pimple for the Court Receiver. Mr. Shetty, Court Receiver, present. ::: Uploaded on - 04/03/2019 ::: Downloaded on - 12/03/2019 19:09:39 ::: kpd 2 / 13 CPCDL-30-2019.doc Mr. Piyush Surana, Respondent present. CORAM : S.J. KATHAWALLA, J. DATED : 1st MARCH, 2019 JUDGEMENT :
1. The above Contempt Petition is filed by Shri. Darshan Jain/Petitioner No.1 and Shri. Indrakumar Jain/Petitioner No.2 (Original Plaintiff Nos.1 and 2 respectively) in Commercial IP Suit (L) No.1533 of 2018 (the 'said Suit') against Shri. Piyush Surana - Respondent (Original Defendant).
2. The brief facts which have led to the filing of the above Contempt Petition are as under :
2.1. The Petitioner No.1 is a graphic designer engaged in creating and designing digital textile print drawings since more than one and a half decade. The digital textile print drawings created by the Petitioner No.1 are used as patterns in the form of templates which are to be printed on various fabrics. Such textile design print drawings are created by the Petitioner No.1 on the computer and then compiled into a book, wherein each book consists of 45 different digital textile print drawings/designs. 2.2. Each such textile design book is given a title and name which forms a part of the Petitioner No.1's collection. Some of the titles owned by the Petitioner No.1 are 'GARDENORD', 'DRESSAPP', 'ETHNICS & MORE', 'BRIDAL' etc. Further, every quarter these textile design books are updated with new drawings. Coloured representations of a few of the Petitioner No.1's digital textile print drawings, are annexed and marked Exhibit 'A', to the Plaint.
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kpd 3 / 13 CPCDL-30-2019.doc 2.3. The digital textile print drawings are original artistic works. Being the owner of such original works of art, the Petitioner No.1 claims copyright therein. The Petitioner No.1 has granted necessary authority and permission to the Petitioner No.2 to publish, distribute, market, sell and/or use the textile design books. 2.4. Around 4 years ago, the Petitioner No.1 started conceptualising various digital textile print drawings suitable for printing patterns on fabrics meant for salwar kurta/churidar sets. This collection was named as 'DRESSAPP'. Colour representations of Volumes 10 and 13 of the textile design books under the 'DRESSAPP' collection are annexed and marked Exhibit 'C', to the Plaint. Similarly, about a year ago, the Petitioner No.1 also designed digital textile print drawings mainly featuring floral and floral inspired prints for use upon and in relation to fabric, under a collection titled as 'GARDENORD'. Colour representations of Volume 4 of the textile design books under the 'GARDENORD' collection are annexed and marked Exhibit 'D', to the plaint.
2.5. In or around February 2018, the Respondent was found to be engaged in unauthorizedly showcasing coloured photocopies/digital printouts of the Petitioners' digital textile print drawings described in a textile design book and also displaying soft copy versions thereof on his laptop in an exhibition named 'GMMSA Machinery Expo', held in Ludhiana, Punjab. While unauthorizedly displaying the infringed pirated works, the Respondent was also then found to be engaged in selling to various customers, by displaying them on his laptop and electronic tablet. The said soft copies ::: Uploaded on - 04/03/2019 ::: Downloaded on - 12/03/2019 19:09:39 ::: kpd 4 / 13 CPCDL-30-2019.doc of the textile design books as designed by the Petitioners were stored by him in his hard disk. It was further observed by the Petitioners that the Respondent is a habitual infringer, and it is not the first time that the Respondent had indulged in such acts of infringement.
2.6. The Petitioner No.1 filed an FIR against the Respondent with the Pandesara Police Station, Surat, on 25th July, 2018. Upon questioning, the Respondent admitted his guilt and in his statement to the Police stated that he is engaged in printing coloured photocopies from the Petitioners' textile design books from a soft copy present in his laptop which was at his residence in Mumbai. The Respondent was therefore arrested by the Police.
2.7. The Petitioners thereafter filed Commercial IP Suit (L) No.1533 of 2018 inter-
alia seeking a restraint order against the Respondent from reproducing, printing, publishing, distributing, selling and/or using in any manner whatsoever the impugned pirated artworks being the digital textile print drawings compiled into textile design books, so as to infringe upon the Petitioners' subsisting copyrights in its said original works.
2.8. In the said Commercial IP Suit (L) No.1533 of 2018, the Petitioners/Plaintiffs took out Notice of Motion (L) No.2700 of 2018, seeking appointment of the Court Receiver to make an inventory, seize and then seal the goods, stationery, production registers, printing materials, screens etc. bearing the impugned pirated artworks and other material and also seeking injunction against the Respondent from passing off the ::: Uploaded on - 04/03/2019 ::: Downloaded on - 12/03/2019 19:09:39 ::: kpd 5 / 13 CPCDL-30-2019.doc goods and business as and for those of the Petitioners or as if the Respondent was in some way connected or associated therewith.
2.9. By an Order dated 2nd November, 2018, this Court appointed the Court Receiver, High Court, Bombay as a Receiver to conduct raid, search and seize the impugned digital textile print drawings, bearing the impugned pirated artworks. Accordingly, the Court Receiver visited the premises of the Respondent, and found the Respondent to be in possession of certain infringing material bearing the impugned pirated artworks of 'DRESSAPP' and 'GARDENORD' amongst others. The same were found in the Respondent's residential premises, during which his wife Mrs. Poonam Surana was present. During the raid, the Court Receiver also came across digital textile print drawings under the names 'CACHMIERE', 'FEMININE', 'DIGITAL KAFTANS', 'FOCUS ON PRINTS', 'ETHNICS & MORE', 'PRIZMATTO' and 'SKIRTAPP', which formed part of the Petitioners' textile design books titled the very same names. After conducting the raid, the representative of the Court Receiver in the presence of the wife of the Respondent, inter-alia put seven CDs and one Hard Disk in a box, packed the same and affixed the seal of the Court Receiver in the presence of the parties. The representative of the Court Receiver also obtained an undertaking from the wife of the Respondent, Mrs. Poonam Surana, to safeguard the box and preserve the contents of the same.
2.10 Thereafter, on 4th December, 2018 the Respondent agreed to settle the said Suit amicably with the Petitioner and Consent Terms were executed by the parties. ::: Uploaded on - 04/03/2019 ::: Downloaded on - 12/03/2019 19:09:39 :::
kpd 6 / 13 CPCDL-30-2019.doc Vide the said Consent Terms, the Respondent gave an undertaking to pay Rs.60 Lakhs as and by way of costs. Under Clause 7 of the Consent Terms, the Respondent also gave an undertaking to the Court to destroy the goods seized by the Court Receiver on 22nd November, 2018, in the presence of Petitioners' representative. 2.11 On 4th December, 2018 this Court passed an order in terms of the Consent Terms and accepted the undertakings given by the Respondent including the undertaking to destroy all the goods, viz. textile design books, printing material disks, CDs, floppies, laptops, computers, books and papers, which were seized by the Court Receiver in the said matter, at his own costs in the presence of the Petitioners' representative.
2.12 Thereafter, it was agreed between the parties that the said destruction will be carried out on 21st January, 2019. On that day, the sealed box bearing the seized goods was brought by the Respondent to the Office of the Court Receiver when the Petitioners were also present. However, when the box was unsealed and the contents thereof opened, it was observed that the CDs shown in the photographs which were taken while conducting the raid and the CDs present in the said box were different. The markings on the CDs, were also different from the markings found on the CDs which were seized by the Court Receiver. It was therefore evident that the Respondent had tampered with the seized goods viz. the property of the Court Receiver.
2.13 In view thereof, Mr. Kailash Javare, representative of the Court Receiver filed
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an Affidavit setting out the details with regard to the tampering of the goods which were seized and sealed by him and thereafter left in the custody of the Respondent (represented by his wife) as per the normal practice. This Court thereafter directed the Respondent to file his Affidavit in Reply to the Court Receiver's Affidavit. 2.14 The Respondent thereafter filed his Affidavit in Reply dated 7 th February, 2019, to the Affidavit of the representative of the Court Receiver. In paragraph 1 of the said Affidavit, he admitted on oath that he has tampered with the property seized and sealed by the Court Receiver, by opening the same on 25 th January, 2019 and thereafter, replacing the 7 CDs originally sealed, with empty CDs, and has deleted all files pertaining to the infringed material from the Hard Disk. 2.15 The Petitioners have thereafter filed the present Petition and have prayed that the Respondent be punished, by committing him to civil prison for a term of six months and fine of Rs. 2,000/-, or with such term and fine as this Court deems fit and proper, for having committed contempt of this Court, by willfully, deliberately, knowingly and contemptuously tampering with the contents of the property seized and sealed by the Court Receiver and replacing the seven CDs and one hard disk bearing the infringed material, and thereafter by suppressing the said fact of tampering, giving a false undertaking to destroy all the goods, viz. textile design books, printing materials disks, CDs, floppies, laptops, computers, books and papers, which have been seized by the Court Receiver in the said matter at his own costs, in the presence of the Petitioners' representative.
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3. The Respondent thereafter filed his Affidavit dated 26th February, 2019 wherein he once again admitted having opened the sealed packet containing the material seized and sealed by the Court Receiver and left in his custody and also admitted having destroyed the 7 CDs and removing the data contained in the hard disk which was also in the same cover, and tendered his unconditional apology.
4. On 15th February, 2019, this Court passed the following Order in the above Contempt Petition :
1. Not on board. Upon mentioning, taken on board.
2. I am prima facie satisfied that the Respondent has committed willful breach of the order dated 4 th December, 2018 passed by this Court. In view thereof, Office to issue show cause notice to the Respondent under Rule 1035(1) read with Rule 1036(1) of the High Court (Original Side) Rules, 1980 to regulate proceedings under the Contempt of Courts Act, 1971.
2. The Respondent is present in Court along with his Advocate. He waives service of notice.
3. By consent of the parties, the Contempt Petition is placed for hearing and final disposal on 27th February, 2019."
5. Today, the above Contempt Petition is taken up for final hearing, and I have heard the Advocates for the parties. Mr. Mukesh Vashi, Senior Advocate appearing for the Respondent has submitted that his client is tendering an unconditional apology and is not pressing any of the contentions raised in his Affidavit dated 26 th February, ::: Uploaded on - 04/03/2019 ::: Downloaded on - 12/03/2019 19:09:39 ::: kpd 9 / 13 CPCDL-30-2019.doc 2019.
6. In Suits seeking protection of intellectual property rights, the Courts in order to prevent the Defendant/s from destroying the impugned goods/material regularly pass ex-parte orders appointing the Receiver to visit the premises of the Defendant/Respondent and seize the impugned goods and thereafter to seal the same and leave the sealed goods in the custody of the Defendant/Respondent upon an undertaking that the Defendant/Respondent will safeguard and produce the same before the Court as and when directed by the Court. However, since such goods are seized by the Receiver appointed by the Court and only kept for safe keeping with the Respondent, the custody of the same is with the Court Receiver and therefore custodia legis.
7. It is relevant to point out that in the instant case, the Respondent in his Affidavit dated 7th February, 2019 admitted as under :
"8. .......... I took the ill-advised step of opening the sealed packet, taking out the DVDs and replacing the same with the other DVDs. After replacing the DVDs, I have destroyed all the seven DVDs taken out from the sealed packet. I say that after taking out the hard disk, I deleted data and replaced the same by some other Chinese material. I say that all the above steps were taken by me in the late evening on 25th November, 2018.
9. I say that the Consent Terms were filed on 4 th December, 2018. At that time, I did not inform this Hon'ble Court about replacement and destroying of 7 DVDs and deleting the data from the hard disk, as under the Consent Terms, in any case, 7 DVDs and hard disk were required to be destroyed. ::: Uploaded on - 04/03/2019 ::: Downloaded on - 12/03/2019 19:09:39 :::
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11. ............. I assure this Hon'ble Court that all the 7 DVDs are destroyed, without there being any copy of such DVDs. Similarly, all the data from the hard disk is deleted and replaced by some other Chinese material. The deleted contents of the hard disk or contents of 7 DVDs are not transferred on any other hard disk, DVDs or on any other form of electronic or physical storage."
8. The Respondent has therefore admittedly broken open the seal and replaced the material therein, thereby tampering with the goods which are in the custody of the Court, but only left with the Respondent for safe keeping (termed as 'supardari' in many Courts), on an undertaking that he will safeguard the same and produce the same before the Court as and when required. The Respondent did not stop at this. After the said contemptuous act of breaking open the seal and deleting and replacing the material, he gave an undertaking to the Court on 4 th December, 2019 that he will destroy all the goods, namely textile design books, printing materials disks, CDs, floppies, laptops, computers, books and papers, seized by the Court Receiver. When the Respondent gave the said undertaking to the Court he was very well aware that he has already destroyed the material seized by the Court Receiver but yet gave a false undertaking to the Court knowing the same to be false. Again, he produced before the Court a packet representing to the Court that the same contained the material seized and sealed by the Court Receiver, knowing full well that the representation was false. I therefore hold that the Respondent is guilty of committing willful contempt of Court by indulging in the aforestated contemptuous and fraudulent acts. ::: Uploaded on - 04/03/2019 ::: Downloaded on - 12/03/2019 19:09:39 :::
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9. I have in my orders repeatedly recorded that most of the litigants carry an impression that they can unabashedly, flout the orders of the Court, breach the undertakings given to the Court and thereafter get away by giving an unconditional apology. The fault lies also at the door of the Court, since many a times despite serious contemptuous acts on the part of a party, the Courts, except for accepting an unconditional apology, do not pass any stern orders against the contemnors, condemning such behavior. In some cases, where stern orders are passed, an appeal is preferred therefrom, which is initially admitted and when the same reaches final hearing after a few years, the stern order is substituted by an unconditional apology thereby excusing the contemptuous act/behavior of the contemnor with a mere apology. In the instant case, the conduct of the Respondent is admittedly contemptuous and in the circumstances, I pass the following Order :
The Respondent - Shri. Piyush Surana is sentenced to simple imprisonment for a period of four weeks.
10. The Respondent - Shri. Piyush Surana through Senior Advocate Shri. Mukesh Vashi submits that he admits that he is guilty of committing willful contempt by opening the packet containing the goods seized and sealed by the Court Receiver and left with him for safe keeping, and thereafter destroying the seven CDs therefrom and deleting the data contained in the hard disks and later giving a false undertaking to the Court in terms of Clause 7 of the Consent Terms. He also accepts the punishment pronounced by the Court. However, he submits that he is a family man residing with ::: Uploaded on - 04/03/2019 ::: Downloaded on - 12/03/2019 19:09:39 ::: kpd 12 / 13 CPCDL-30-2019.doc his old parents, wife and two small children, and therefore urges the Court to impose an appropriate fine sentence in lieu of the sentence of simple imprisonment of four weeks imposed upon him. Keeping his family circumstances and acceptance of guilt of committing willful contempt of this Court's Order, I am inclined to impose a sentence of fine of Rs. 15,00,000/- in lieu of the sentence of simple imprisonment of four weeks imposed upon him. The Respondent undertakes to pay the said fine amount of Rs.15 Lacs to a charitable organization within a period of four weeks from today, his undertaking to this effect be accepted, and pending payment of the said fine his sentence be suspended. The Respondent has through his Advocate also suggested that he may be placed under arrest till the rising of the Court. The Respondent also undertakes that in the event of him failing to pay the fine amount of Rs.15 Lacs within four weeks, he will surrender before the police authorities and serve his sentence of simple imprisonment of four weeks imposed by the Court.
11. Keeping in mind that the Respondent at the first instance admitted his guilt and further that he is a young man residing with his aged parents, wife and two minor children, I pass the following further Order :-
(i) The Respondent - Shri. Piyush Surana is hereby placed under arrest till the rising of the Court.
(ii) The sentence of four weeks simple imprisonment, as ordered above, is suspended for a period of four weeks, to enable the Respondent to pay the fine amount of Rs. 15,00,000/ .
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kpd 13 / 13 CPCDL-30-2019.doc (iii) The undertaking of the Respondent to pay a fine of Rs.15 Lacs within a period
of four weeks from today is accepted. The Demand Draft shall be drawn in favour of "Society for Rehabilitation of Crippled Children" and the same shall be handed over to Ms. Kunte, Associate, on or before 28th March, 2019, who in turn shall forward the same to the Beneficiary.
(iv) The undertaking of the Respondent that, if within a period of four weeks he fails to pay the fine of Rs.15 Lacs as undertaken, he shall on 28 th March, 2019, surrender before this Court, after which he be handed over to the Police Authorities to serve the sentence of simple imprisonment of four weeks, is accepted.
(v) Needless to say, that in the event that Mr. Piyush Surana pays the fine amount of Rs.15 Lacs on or before 28th March, 2019, then in that event his sentence of simple imprisonment for a period of four weeks shall stand rescinded.
The above Contempt Petition is accordingly disposed of.
( S.J.KATHAWALLA, J. ) ::: Uploaded on - 04/03/2019 ::: Downloaded on - 12/03/2019 19:09:39 :::