A. Introduction
Imagine this- You have a cinephile with an aspiration to start your own film production house. Having that goal in mind you draft and complete the story, script and title of your first film, about to begin the next steps. After a year investing a lot of time, money and other resources, you are informed about a film having near identical script and title to your proposed film is made and released by Mr. X. During proceedings in a suit instituted by you, a defense is taken by Mr. X that your proposed film is not registered.
Is registration of a work with the Copyright Office necessary or mandatory under the law in India? Let us look at a certain key judgments where this question has been decided.
B. Judgments
i. Sanjay Soya Pvt. Ltd. v. Narayani Trading Company–
• The Bombay High Court in 2021 ruled that it is not mandatory to register copyright under the Copyright Act, 1957.
• In this case, Sanjay Soya Pvt. Ltd. (SSPL) was engaged in the business of manufacturing and selling edible oils, including soya bean oil for many years. It was the case of SSPL that Narayani Trading Company (NTC) sold its products with a label deceptively similar to SSPL’s label, thereby causing confusion amongst its consumers. However, NTC made its submissions around the point that the design in question was not registered by SSPL.
• The Bombay High Court observed that the Copyright Act, 1957 (‘Act’), even without prior registration provides a range of rights and privileges to the first owner of a copyright.
• Light was thrown by the Single Judge bench of Justice G.S. Patel on the use of the term ‘may’ in Section 45(1) of the Act which provides that the aforesaid section provides that the copyright owner ‘’may’ make an application for registration.
• Stress was also laid on Section 51 of the Act, 1957 which deals with copyright infringement, and in relation to the same, that the provision does not have any mention of copyright registration.
• Notably, the High Court also referred to Burroughs Wellcome (India) Ltd. v. Uni-Sole Pvt. Ltd. wherein it was held that the Copyright Act, 1957 does not have any provision in itself which deprives an author/creator of his rights under the Act merely by reason of non-registration of copyright.
ii. Asian Paints (I) Ltd. v. M/s Jaikishan Paints & Allied Products–
• Asian Paints (I) Ltd. (the Plaintiff), engaged in the business of manufacturing and marketing of paints, sold one of its product under the label “Utsav”. The Defendant, Jaikishan Paints & Allied Products sold its products under the label “Utkarsh”.
• It was the case of the Plaintiff that the design of the packaging and the label of the Defendant was deceptively similar to the Plaintiff’s label “Utsav”.
• The Defendant contended that it was not liable for infringement of Plaintiff’s copyright since the Plaintiff’s work in question was not registered by the Plaintiff.
• It was held by the court that registration under the Act, 1957 is optional and not mandatory, to claim copyright. The court ruled that “Registration is not necessary to claim a copyright. Copyright subsists as soon as the work is created and given a material form even if it is not registered.”
C. Key Provisions of The Copyright Act, 1957
i. Section 45 – Entries in Register of Copyrights-
“The author or publisher of, or the owner of or other person interested in the copyright in, any work may make an application in the prescribed form accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the work in the Register of Copyright.”
The use of ‘may’ is an indication that the Act itself does not make registration of copyright a mandate.
ii. Section 48 – Register of Copyrights to be prima facie evidence of particulars entered therein- The provision states that registration is a prima-facie evidence and acts as an evidence in all courts of law, and that there is no other proof of originality required.
D. Conclusion
Does the Indian law mandate registration of a work with the Copyright Office? Will a author/creator of a work be deprived of relief in cases of infringement of his/her work only because he/she has not registered the work?
Certainly not. Copyright protection is automatic and there is no necessity for registration. However, it is advisable to opt for getting your work registered. Registration of a work provides the following benefits:
a. It is a legal protection to owners for their work and such registration confirms the rights of a creator in the work.
b. Registration notifies the public about the work and its ownership, thereby helping the creator/author asserting his/her rights in the same.
c. Registration acts as a prima-facie evidence and can be used an evidence in all courts of law in cases of infringement.
Authors: Malabika Boruah, Tushar Gerewal & Isha Chokshi