Delhi High Court
Metro Tyres Ltd vs The Advertising Standards Council Of ... on 17 March, 2017
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
*IN THE HIGH COURT OF DELHI AT NEW DELHI
% DATE OF DECISION: 17TH, MARCH 2017
+ CS(COMM) 1484/2016 & IA No.13737/2016 (u/O XXXIX R-1&2
CPC)
METRO TYRES LTD ..... Plaintiff
Through:Mr. Pravin Anand & Ms. Kruttika
Vijay, Advs.
Versus
THE ADVERTISING STANDARDS COUNCIL
OF INDIA & ANR ..... Defendants
Through: Ms. Avni Singh, Adv. for D-1.
CORAM:-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The plaintiff, a manufacturer of tyres and tubes for two wheelers and
three wheelers, instituted this suit i) for restraining the defendant no.2 MRF
Limited (MRF), also a manufacturer of tyres and tubes, from issuing
groundless threats to the plaintiff of the plaintiff in the advertisement of its
products having plagiarised/infringed the copyright of MRF in the
advertisement of MRF‟s products and liability therefor; ii) for restraining the
defendant no.2 MRF from promoting unfair competition with reference to
plaintiff in any manner; iii) for declaration that such threats of institution of
legal proceedings contained in MRF‟s letter dated 18th October, 2016 are
unjustifiable and the plaintiff does not infringe or copy the advertisement of
MRF; iv) for restraining MRF from defaming the plaintiff in any oral or
written communication; v) for restraining the defendant no.1 Advertising
Standards Council of India (ASCI) from assessing or proceeding with the
CS(COMM) No.1484/2016 Page 1 of 21
complaint of MRF; vi) for recovery of damages in the sum of Rs.1 crore
from MRF on account of loss of reputation and goodwill of the plaintiff
owing to the illegal activities of the defendants.
2. It was inter alia the case of the plaintiff in the suit titled "SUIT
SEEKING RESTRAINT OF GROUNDLESS THREATS OF LEGAL
PROCEEDINGS AND DECLARATION OF NON-INFRINGEMENT OF
COPYRIGHT, DEFAMATION, DAMAGES ETC.":
(i) that the plaintiff, in September, 2016, unveiled a new range of
tyres for 150cc segment to 200-250cc segments and also high-
end sports motorcycles;
(ii) that the plaintiff, to promote its new product, got created
advertisement from Prominent Advertising Services and the
said advertisement appears on television, on the plaintiff‟s
website as well as through online content providers such as
YouTube;
(iii) that on 25th October, 2016, the plaintiff was shocked to receive
a letter dated 21st October, 2016 from ASCI forwarding
therewith complaint dated 18th October, 2016 received from
MRF against the TV commercial of plaintiff and inviting
plaintiff‟s response thereto and informing the plaintiff that the
complaint had been placed for deliberation before the
Consumer Complaints Council of ASCI;
CS(COMM) No.1484/2016 Page 2 of 21
(iv) that the MRF has complained that plaintiff‟s advertisement
blatantly copied MRF‟s advertisement for its product REVZ
Radial Tyres;
(v) that the plaintiff has been wrongly accused of plagiarism /
infringement;
(vi) that the plaintiff sought extension of time from the ASCI for
filing reply and denied any intent to plagiarise / infringe the
copyright of MRF;
(vii) that there is no visual similarity between plaintiff‟s
advertisement and MRF‟s advertisement;
(viii) that none can claim monopoly over the common underlying
concept and idea;
(ix) that ASCI does not have any authority to assess or even request
the plaintiff to cease and desist from displaying the offending
advertisement on national television;
(x) that MRF‟s act of sending such false, frivolous and baseless
complaint to ASCI whose Board comprises of reputed members
of the media and other eminent persons in the corporate sector
clearly evidences the intention of MRF to defame and harm the
reputation and goodwill of the plaintiff.
3. The suit came up for admission on 7th November, 2016 when being
not convinced about the maintainability of the suit, the counsel for the
CS(COMM) No.1484/2016 Page 3 of 21
plaintiff was heard. After hearing the counsel for the plaintiff further on 15 th
November, 2016, the following order was passed:
―1. The counsel for the plaintiff has been heard further today.
2. I am today also not satisfied about the maintainability of the
present suit.
3. The plaintiff has instituted this suit to restrain the defendant
No.2 MRF Limited from issuing groundless threats to the plaintiff of
liability for infringement of copyright in the defendant No.2 MRF
Limited's advertisement for its product REVZ and for restraining the
defendant No.1 Advertisement Standards Council of India (ASCI)
from in any manner assessing or proceeding with the complaint filed
by the defendant No.2 MRF Limited against the plaintiff and for
ancillary reliefs.
4. It is inter alia the case of the plaintiff that the defendant No.2
MRF Limited in its complaint to the defendant No.1 ASCI has
accused the plaintiff of having plagiarised the advertisement of the
defendant No.2 MRF Limited qua a same / similar product and of
infringing the copyright of the defendant No.2 MRF Limited therein;
that the defendant No.1 ASCI is not empowered to go into the
question of infringement of copyright and passing off and the
complaint of the defendant No.2 MRF Limited to the defendant No.1
ASCI amounts to a ―threat‖ within the meaning of Section 60 of the
Copyright Act, 1957.
5. I have enquired from the counsel for the plaintiff as to how
there can be an injunction against the defendant No.2 MRF Limited
from invoking legal proceedings. Sections 41(a) & 41(b) of the
Specific Relief Act, 1963 is an absolute bar to the grant of permanent
injunction to restrain another from invoking legal proceedings and
Supreme Court in Cotton Corporation of India Limited Vs. United
Industrial Bank Limited (1983) 4 SCC 625 has held that the
grounds specified in Section 41(b) of the Specific Relief Act apply
also to injunction under Order XXXIX Rules 1 & 2 of Code of Civil
Procedure, 1908 (CPC).
CS(COMM) No.1484/2016 Page 4 of 21
6. The counsel for the plaintiff has argued that though the
defendant No.2 MRF Limited is a member of the defendant No.1
ASCI and the plaintiff is not.
7. I am of the view that once an industrial body has been
established, it is not open to a member of that industry to contend
that it is not a member and not bound by the procedures and
mechanism of that body. More so, when the Code for Self-
Regulation in Advertising of the defendant No.1 ASCI has now been
given the statutory flavour by Rule 7(9) of Cable Television Network
Rules, 1994.
8. As far as the contention of the counsel for the plaintiff, of the
defendant No.1 ASCI being not authorised to go into the questions of
infringement and passing off is concerned, it appears that the said
pleas have to be raised by the plaintiff before the defendant No.1
ASCI and this Court cannot in this suit pre-empt the defendant No.1
ASCI from doing so. I have informed the counsel for the plaintiff
that suits are coming before this Court against the decision finally
taken by the ASCI and though a doubt has been raised as to the
maintainability of the suit but as of now, the suits are being
entertained and hearing going on, on the said aspect.
9. The counsel for the plaintiff has sought to contend that the
suit is under Section 60 of the Copyright Act.
10. However, there is no plea to the said effect. Rather, in most
of the plaints in suits under Section 60 of the Copyright Act which
have come before me, it is found that the suit in the title thereof
mentions it to be under Section 60 of the Copyright Act. The plaintiff
herein has shied away from doing so.
11. I have also drawn the attention of the counsel to the proviso
to Section 60 of the Copyright Act and have enquired from him that
once the defendant No.2 MRF Limited has already invoked the
jurisdiction of the defendant No.1 ASCI, how can a suit under
Section 60 of the Copyright Act would be maintainable.
12. The counsel for the plaintiff has contended that since the
defendant No.1 ASCI is not empowered to go into a question of
infringement of copyright and only on institution of which action the
CS(COMM) No.1484/2016 Page 5 of 21
proviso to Section 60 of the Copyright Act applies, the said proviso
would not be applicable.
13. It is still to be decided whether the defendant No.1 ASCI is
empowered to go into the said questions or not. I may at this stage
only notice that Clause 4.2 of Chapter IV titled ‗Fair In Competition'
of the Code for Self-Regulation in Advertising of ASCI provides that
―advertisements shall not make unjustifiable use of the name or
initials of any other firm, company or institution, nor take unfair
advantage of the goodwill attached to the trademark or symbol of
another firm or its product or the goodwill acquired by its
advertising campaign‖. Similarly, Clause 4.3 provides that
―advertisements shall not be similar to any other advertiser's earlier
run advertisements in general layout, copy, slogans, visual
presentations, music or sound effects, so as to suggest plagiarism‖.
14. The counsel for the plaintiff then seeks adjournment to
consider amending the plaint to challenge the Code aforesaid as well
as Rule 7(9) of the Cable Television Network Rules.
15. The counsel for the plaintiff while doing so, to also consider
the interplay of Section 60 of the Copyright Act and Sections 41(a) &
41(b) of the Specific Relief Act which prohibit injunction against
invocation of legal proceedings. It appears that there is conflict
between the two. If that is so, how the same is to be resolved.
16. List on 29th November, 2016.‖
4. The plaintiff thereafter applied for amendment of plaint and which
was allowed on 29th November, 2016. The plaintiff in the amended plaint
has amended the title of the suit as under:
"SUIT SEEKING RESTRAINT OF GROUNDLESS THREATS OF
LEGAL PROCEEDINGS UNDER SECTION 60 OF THE COPYRIGHT
ACT AND SECTION 142 OF THE TRADE MARKS ACT AND
DECLARATION OF NON-INFRINGEMENT OF COPYRIGHT,
DEFAMATION, DAMAGES ETC."
and has added the pleas:
CS(COMM) No.1484/2016 Page 6 of 21
(i) that ASCI cannot consider the complaint of MRF as an action for
infringement and passing off as such an action would necessarily have
to be instituted in a Court of law in accordance with the provisions of
the Copyright Act, 1957 and Trade Marks Act, 1999;
(ii) that ASCI is not competent to decide any legal disputes;
(iii) that ASCI‟s Consumer Complaints Council if finds merit in the
complaint and the alleged offender does not voluntarily comply with
the decision of the Council, forwards the recommendation to the
concerned Regulatory Authority or government department for
appropriate action;
(iv) that Rule 7(9) of the Cable Television Networks Rules, 1994 (CTN
Rules) provides that any advertisement which violates ASCI‟s Code
for Self-Regulation in Advertising will not be carried on cable service;
(v) that Section 19 and Section 2(a) of the Cable Television Networks
(Regulations) Act, 1995 (CTN Act) make it clear that power to
prohibit such transmission of advertisements in violation of
Advertisement Code vests with an authorised officer who is either a
District Magistrate, a Sub-Divisional Magistrate, a Commissioner of
Police or any other officer notified in the Official Gazette by the
Central or the State government;
(vi) that Rule 7(9) of the CTN Rules is in direct contravention of Section
62(1) of the Copyright Act whereunder determination of infringement
of copyright can only be made by a District Court as well as in
contravention of Section 134 of the Trade Marks Act, which also
CS(COMM) No.1484/2016 Page 7 of 21
states that no suit for infringement and passing off of a trade mark
shall be instituted in any Court inferior to a District Court; thus no
Authorised Officer as defined in CTN Act can prohibit the
transmission of any advertisement on account of the fact that such
advertisement may be plagiarising or taking unfair advantage of the
goodwill of any other persons‟ advertising campaign;
(v) that though MRF is a member of ASCI but the plaintiff is not;
(vi) that ASCI cannot decide a complaint of a member against a non-
member.
5. The reliefs of i) injunction restraining the MRF from issuing
groundless threats to plaintiff with liability to causing confusion i.e passing
off; ii) a direction to ASCI to amend its Code for Self-Regulation; iii)
revocation of CTN Rules or amendment of Rule 7(9) thereof, have also been
added in the amended plaint.
6. The counsel for the plaintiff was heard further on 20 th December,
2016 and order reserved.
7. As far as the relief in the amended plaint, of impugning CTN Rules is
concerned, the said Rules being statutory in character, the challenge if any
thereto can, as per the Roster of this Court, be considered only by the
Division Bench. Therefore the suit claiming the said relief and which suit as
per Roster is to be considered by a Single Bench of this Court, cannot be
subject matter of this suit. Though Order XXVIIA of the CPC provides the
procedure to be followed in suits involving a substantial question of law as
to interpretation of the Constitution or as to validity of any Statutory
CS(COMM) No.1484/2016 Page 8 of 21
Instrument but by the suit court only and the limitation of roster would
remain. I therefore, need not go into the said aspect and suffice it is to
observe that the plaintiff would be at liberty to claim the said relief in
accordance with law. The said relief claimed in the suit thus has to be
rejected.
8. That brings me to the crux of the dispute i.e. whether ASCI, in view
of jurisdiction to adjudicate disputes of passing off and infringement of
copyright having been vested in a Court not below the District Court, or for
any other reason, is not competent to deal with the complaint of MRF of the
plaintiff having plagiarised and infringed the copyright of MRF.
9. ASCI was established in 1985 as a company under Section 25 of the
Companies Act, 1956 and with advertisers, media, advertising agencies and
other professional / ancillary services, industries connected with advertising
as its sponsors and with the purpose of „self-regulating the advertisements‟
and to ensure that the advertisements conform to the Code of self-regulation.
„The Code for self-regulation in Advertising‟ („The Code‟) of ASCI has
been drawn up by people in the profession and industries in or connected
with advertising, in consultation with representatives of people affected by
advertising and has been accepted by individuals, corporate bodies and
associations engaged in or otherwise concerned with the practice of
advertising. The Code drawn up by ASCI for self-regulation in advertising,
in Chapter IV thereof titled "Fair in Competition" in Clause 4.2 thereof
provides "advertisements shall not make unjustifiable use of the name or
initials of any other firm, company or institution, nor take unfair advantage
of the goodwill attached to the trademark or symbol of another firm or its
CS(COMM) No.1484/2016 Page 9 of 21
product or the goodwill acquired by its advertising campaign" and in Clause
4.3 thereof provides "advertisements shall not be similar to any other
advertiser‟s earlier run advertisements in general layout, copy, slogans,
visual presentations, music or sound effects, so as to suggest plagiarism"
10. I have since, in Procter & Gamble Home Products Private Limited
Vs. Hindustan Unilever Ltd. 2017 SCC OnLine Del 7072, held that a) ASCI
has been established as a self regulatory body in the field of advertising and
cannot be said to have been established for dispute resolution or for
resolution of claims such as those made by the plaintiffs therein in the suits,
of disparagement, against the defendant; b) ASCI, though has a Complaints
Committee but only to „self regulate‟; c) The principles applicable to grant
of injunction contained in Order XXXIX Rules 1 & 2 of CPC and in the
Specific Relief Act, 1963 though provide that injunctive relief shall not be
granted when equally efficacious alternative remedy is available but the
remedy available before ASCI cannot be said to be equally efficacious
remedy; d) ASCI, even if finds merit in complaint, can only recommend to
the advertiser to remove the advertisement but has no mechanism to compel
removal of the advertisement or to grant any interim relief or to award
damages; e) Moreover, membership of ASCI is not mandatory for all
concerned; f) Reference was made to Century Plyboards (India) Ltd. Vs.
The Advertising Standards Council of India MANU/MH/0030/2000 and
Dish TV India Ltd. Vs. Advertising Standards Council of India
MANU/DE/3049/2016 holding that the rules and machinery of ASCI are
designed to complement legal controls, not to usurp or replace them; g) The
CTN Act enacted to regulate the operation of cable television networks and
CS(COMM) No.1484/2016 Page 10 of 21
for matters connected therewith, in Section 6 titled "Advertisement Code"
prohibits transmitting or re-transmitting through a cable service of any
advertisement unless such advertisement is in conformity with the
prescribed Advertisement Code; h) Section 11 of the CTN Act provides
for seizure of the equipment of any cable operator found violating inter alia
Section 6 of the Act and Section 19 of the CTN Act empowers the
Government to prohibit the cable operator from transmitting or re-
transmitting any advertisement not in conformity with the prescribed
Advertisement Code; i) Section 22 of the CTN Act empowers the Central
Government to by notification in the Official Gazette make rules inter alia
for the Advertisement Code; j) The CTN Rules framed in exercise of said
power, under Rule 7 titled "Advertising Code", while providing that
advertisements carried in cable service shall be so designed as to conform to
the laws of the country and should not offend morality, decency and
religious susceptibilities of the subscribers, vide sub-rule (9) thereof
provides that no advertisement which violates The Code for self regulation
in Advertising, as adopted by the ASCI from time to time for public
exhibition in India, shall be carried in the cable service; k) However the said
statutory flavour given to the Code would also not bar the jurisdiction of the
Civil Court, even after ASCI has been approached and does not find any
merit in the complaint, because the remedy available before ASCI is distinct
from that available before the Civil Court; l) ASCI, even if finds any merit
in the complaint with respect to any advertisement, can only make a
recommendation for rectification thereof and if the recommendation remains
un-complied, forward the same to the Authorised Officer under the CTN Act
CS(COMM) No.1484/2016 Page 11 of 21
and which officer is empowered to then prohibit the broadcast of the subject
advertisement; m) The said route though may be available, will not bar a
person aggrieved from the advertisements from approaching the Civil Court.
11. Sections 62 of the Copyright Act as under:
―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, 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 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.‖
and Section 134 of the Trade Marks Act as under:
―134. Suit for infringement, etc., to be instituted before
District Court.-- (1) No suit--
(a) for the infringement of a registered trade
mark; or
(b) relating to any right in a registered trade
mark; or
(c) for passing off arising out of the use by the
defendant of any trade mark which is identical
with or deceptively similar to the plaintiff's
CS(COMM) No.1484/2016 Page 12 of 21
trade mark, whether registered, or
unregistered,
shall be instituted in any court inferior to a District
Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-
section (1), a ―District Court having jurisdiction‖ shall,
notwithstanding anything contained in the Code of Civil
Procedure, 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
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.
Explanation. - For the purposes of sub-section(2),
―person‖ includes the registered proprietor and the
registered user.‖
on the basis whereof it is contended that the ASCI would not have
jurisdiction, only make a provision for the suits for infringement and / or for
proceedings under those Acts. The same cannot be read as ousting the
jurisdiction of any self-regulatory body as ASCI. It is nobody‟s case that a
complaint before ASCI is a suit. The provisions aforesaid relating to suits
cannot be made applicable to proceedings which do not qualify as „suit‟
within the meaning of CPC. It may be taken note of that both Copyright Act,
vide Section 63 thereof and Trade Marks Act, vide Section 103 thereof, also
constitute infringement as an offence and provide for prosecution thereof.
Certainly it cannot be said that such prosecutions are also governed by
Sections 62 and 134 supra.
CS(COMM) No.1484/2016 Page 13 of 21
12. No merit is thus found in the contention of the counsel for the plaintiff
that ASCI, by virtue of Section 62 of the Copyright Act and/or Section 134
of the Trade Marks Act is barred from entertaining the complaint as made by
MRF against the plaintiff before ASCI.
13. Rather, I am of the view that such industry/sector specific self-
regulatory bodies should be encouraged. Functioning thereof curtails
litigation and allows an opportunity to constituents of the same
industry/sector to have their inter se disputes and differences settled
amicably. In fact long back Abraham Lincoln also observed "Discourage
litigation. Persuade your neighbours to compromise whenever you can".
CPC was also amended w.e.f. 1st July, 2002 inter alia by incorporating
Section 89 therein providing for settlement of disputes outside the Court.
The Courts themselves have been encouraging settlement of disputes, not
only by arbitration, conciliation judicial settlement including settlement
through Lok Adalat, mediation after the parties have approached the Court
but also prior thereto by introducing pre-litigation mediation. Such spirit is
also the basis of enactment of the Legal Services Authorities Act, 1987
Chapter VIA whereof titled "Pre-litigation Conciliation and Settlement" in
Section 22B thereunder requires setting-up of Permanent Lok Adalats in
respect of public utility services viz. transport services, postal, telegraph and
telephone services, supply of power or light or water to the public by any
establishment, insurance services, service in hospital or dispensary etc. It is
thus too late in the day for the plaintiff to contend that the Court should
strike down the self regulatory mechanism evolved in the industry/sector of
advertising. Supreme Court, in Subramanian Swamy Vs. Union of India
CS(COMM) No.1484/2016 Page 14 of 21
(2016) 7 SCC 221, in the context of constitutional fraternity and
fundamental duty observed that fraternity means brotherhood and common
interest; right to censure and criticise does not conflict with constitutional
objective to promote fraternity; brotherliness does not abrogate and rescind
the concept of criticism; in fact brothers can and should be critical-fault
finding and disagreement is required even when it leads to disquiet or
disquietude.
14. The Division Bench of this Court in Indraprastha People Vs. Union
of India (2013) 200 DLT (CN) 25, in the context of CTN Act and CTN
Rules, held that under self-regulation the media voluntarily commits to
uphold a code of ethics that it itself drafts; it establishes a complaints
mechanism to which the public can complain about perceived breaches of
the Code and an independent council adjudicates on the complaints and
enforces the code of practice. It was held that compliance with the Code is
voluntary and the media does so out of a desire to secure the credibility of its
profession and the trust of the public. Self-regulation was held to be a
combination of standards setting out the appropriate code of behaviour for
the media that are necessary to support freedom of expression and process
how those behaviours will be monitored or held to account. The advantages
and disadvantages of self-regulation were expounded upon.
15. A Division Bench of this Court of which the undersigned was a
member also, in Sai Lok Kalyan Sanstha Vs. Union of India (2014) SCC
OnLine Del 7024, dealing with a petition filed in public interest and flagging
the issue of broadcasting of a large number of programmes/advertisements
on television channels based on Astrology, „Lal Kitab‟, Tarot, Numerology,
CS(COMM) No.1484/2016 Page 15 of 21
„Devi Shakti aur Kripa‟, by so called self made astrologers, „swamiji‟,
„panditji‟, „guruji‟ and „babaji‟ who promise cures of various ailments, held
that since (i) CTN Act and the CTN Rules and the programme code framed
thereunder and Downlinking Guidelines empower the Ministry of
Information and Broadcasting to impose penalty inter alia of suspension of
the permission / registration granted thereunder and prohibit broadcast up to
a period of 30 days; (ii) there also exists a Broadcasting Content Complaints
Council (BCCC), a self-regulatory body of the television broadcasters, the
code of ASCI, also a voluntary self- regulatory council to control the
content of advertisements, provide a regulatory mechanism, the petitioner
therein must first approach the said foras before rushing to the Court. I have
as a member of the Division bench in Viacom 18 Media Private Ltd. Vs.
Union of India (2015) 216 DLT 222 also held against the petitioner therein
inter alia for the reason of taking the matter of self- regulation very lightly.
Supreme Court also in Destruction of Public and Private Properties, in Re
Vs. State of Andhra Pradesh (2009) 5 SCC 212 accepted the
recommendations of the Nariman Committee of the need for self- regulation
in the media at the industry level and observed that the appropriate
authorities should take steps for implementation. Much has been said in the
context of self-regulation through in-house procedure, also for Advocates
and Judges. Reference may be made to C. Ravichandran Iyer Vs. Justice
A.M. Bhattacharjee (1995) 5 SCC 457.
16. Once ASCI has been constituted as a Self-Regulatory body for the
purpose of advertisements and the Code drafted and changed from time to
time by ASCI has been given a statutory flavour, I am unable to perceive
CS(COMM) No.1484/2016 Page 16 of 21
any other ground on which the plaintiff can restrain ASCI from so
functioning. Though the CTN Rules make the Code of ASCI one of the
criteria with which the advertisements should comply with and for non-
compliance wherewith the Authorised Officer under the CTN Act can be
approached and the Complaints Procedure devised by ASCI is not part of
The Code but I am of the view that once The Code devised by a Self-
Regulatory Body as ASCI has been conferred the statutory flavor, the
opinion of such Self-Regulatory Body, whether its Code has been violated or
not, formed in accordance with the procedure prescribed therefor shall
certainly be a relevant factor for the Authorised Officer to take a decision
under the CTN Act. The complaint procedure devised by ASCI for framing
such opinion cannot be said to be illegal or unlawful or contrary to any law.
17. Section 60 of the Copyright Act, invoking which the suit has been
filed, as under:
―60. Remedy in the case of groundless threat of legal
proceedings--Where any person claiming to be the owner of
copyright in any work, by circulars, advertisements or
otherwise, threatens any other person with any legal
proceedings or liability in respect of an alleged infringement of
the copyright, any person aggrieved thereby may,
notwithstanding anything contained in section 34 of the Specific
Relief Act, 1963 (47 of 1963), institute a declaratory suit that
the alleged infringement to which the threats related was not in
fact an infringement of any legal rights of the person making
such threats and may in any such suit--
(a) obtain an injunction against the continuance of
such threats; and
CS(COMM) No.1484/2016 Page 17 of 21
(b) recover such damages, if any, as he has sustained
by reason of such threats:
Provided that this section does not apply if the person
making such threats, with due diligence, commences and
prosecutes an action for infringement of the copyright claimed
by him.‖
allows a person, who though is threatened with legal proceedings or liability
for infringement but against whom no legal proceedings are initiated, to
institute a suit as provided therein. However, here, MRF is not threatening
but has already initiated proceedings before ASCI. Section 60 thus has no
application. The proviso thereto expressly provides so. The argument of
counsel for plaintiff that the proceedings before ASCI are not within the
meaning of proviso cuts both ways. If that be so, then the body of Section
60 also will have no application. Moreover, Section 60 has to be read
harmoniously with the CTN Act and CTN Rules and in my view both can
operate and serve their respective purpose without one being nugatory of the
other. Similarly, there can be no defamation of the plaintiff by MRF, in
MRF, in accordance with the complaint procedure of ASCI, preferring the
complaint against the plaintiff.
18. Though the plaintiff is not a member of ASCI but the plaintiff is
indulging in activity, viz. of advertising, qua which the defendant no.1 ASCI
has made a Code and for breach whereof ASCI entertains complaints. The
plaintiff also admits that the advertisement was got prepared from an
advertising agency and it is not the case of the plaintiff that the said
advertising agency is not a member of ASCI. Similarly, the said
advertisement is aired on media such as television and it is not the case of
CS(COMM) No.1484/2016 Page 18 of 21
the plaintiff that the television channels on which its advertisement is aired
are not members of ASCI. Thus, if ASCI makes a recommendation and in
pursuance thereto the advertising agency or the television channel refuse to
air the advertisement of the plaintiff, they would be entitled to do so. No
merit is thus found in the argument of the counsel for the plaintiff of plaintiff
being not a member of ASCI and ASCI thus having no jurisdiction over the
plaintiff.
19. The Division Bench of this Court in Viacom 18 Media Private Ltd.
supra held that with the advent of technology enabling individual homes and
other establishments to, instead of via cable, directly download satellite
television channels, the Ministry of Information & Broadcasting,
Government of India formulated policy Guidelines for Downlinking of all
satellite television channels downlinked / received / transmitted and re-
transmitted in India for public viewing; the same provide that no person /
entity shall downlink a channel, which has not been registered by the
Ministry under the said Guidelines; accordingly, all persons / entities
providing Television Satellite Broadcasting Services (TV Channels)
uplinked from other countries to viewers in India as well as any entity
desirous of providing such a Television Satellite Broadcasting Service (TV
Channel), receivable in India for public viewership, is required to obtain
permission from the Ministry in accordance with the said guidelines known
as the Downlinking Guidelines; Clause 5 of the said Guidelines prescribes
basic conditions / obligations including of the company permitted to
downlink registered channels complying with the Programme Code and
empower the Ministry of Information & Broadcasting to impose penalty. It
CS(COMM) No.1484/2016 Page 19 of 21
would thus be seen that compliance with Programme Code/Advertisement
Code is a condition for transmitting programmes/advertisements through
television channels.
20. This Court in Star India Pvt. Ltd. Vs. Union of India (2011) 185
DLT 519 held that there is tacit acknowledgement by the Information &
Broadcasting Ministry that the complaints received by it about objectionable
content of television programmes require to be examined by a broad-based
expert body. It was held that the suitability of the content concerns large
cross-sections of the society.
21. The counsel for the plaintiff during the hearing relied on order dated
27th September, 2013 in CS(OS) No. 1877/2013 titled Quick Telemall
Marketing Pvt. Ltd. Vs. The Advertising Standards Council of India
whereby a co-ordinate Bench of this Court while issuing summons of the
suit and granting ex parte order staying the operation of the order of ASCI
recommending suspension of advertisement failing which it will be reported
to the Authorised Officer, prima facie observed that the directions of ASCI
could not bind the non-members. However not only are those observations
prima facie but the reasoning given hereinabove was not considered or
adjudicated. The counsel for the plaintiff also relied on Century Plyboards
(India) Ltd. supra where also a Single Judge of Bombay High Court
expressed a prima facie view that directions issued by ASCI adversely
affecting the trade or profession of a non-member would be without
jurisdiction and that the direction of ASCI for suspension of advertisement
was in the nature of mandatory injunction which only a Court could issue
and that ASCI could not usurp upon itself the jurisdiction of the Court and
CS(COMM) No.1484/2016 Page 20 of 21
that the Complaint Procedure of the ASCI could not be elevated to the status
of arbitration proceedings. I have hereinabove given my reasons for holding
to the contrary and to that extent, with respect, differ from the prima facie
view taken by the Bombay High Court.
22. The plaintiff thus, by instituting this suit, cannot be permitted to
scuttle the proceedings on complaint of MRF before ASCI. Similarly the
plaintiff, by pursuing this suit cannot prevent its Advertising Agency and the
TV Channels and other medium on which the advertisement of the plaintiff
is airing from, if chose to abide by recommendation of ASCI with respect to
said advertisement, doing so. However in the event of ASCI finding merit
in the complaint and making a recommendation to the Authorised Officer,
all remedies available in law shall be open to the plaintiff.
23. The suit of the plaintiff is premature and the plaintiff as of today has
no cause of action and the plaint is rejected.
No costs.
RAJIV SAHAI ENDLAW, J.
MARCH 17, 2017 „gsr‟ CS(COMM) No.1484/2016 Page 21 of 21