Supreme Court settles jurisdiction questions

The identical jurisdiction provisions of the Copyright Law and the Trademarks Law stipulate that the competent court to try an infringement suit is the court within whose territorial jurisdiction the plaintiff resides, carries on business or works for gain, irrespective of whether the cause of action arose at such place. These provisions have been the subject of much debate, centred around two main contentions:

• The cause of action element inherent in jurisdictional jurisprudence should be read into the provisions in order to stop plaintiffs from forum shopping. This argument is advanced in spite of the clear legislative mandate via the inclusion of the non-obstante clause, whereby such provisions have been given overriding effect above any other law.
• Foreign copyright owners cannot be said to “carry on business” within India and thus are not entitled to claim the benefits of such provisions through their Indian subsidiaries.

The Supreme Court settled these issues back in 2004 in Exphar SA v Eupharma Lab Ltd.

On the first point, while recognising that the object of the provisions was not to restrict the rights of owners when exercising their rights, but rather to remove any impediment from them doing so, the Supreme Court categorically held that the provisions cannot be read as limiting the court's jurisdiction, but rather prescribe an additional ground for attracting the jurisdiction of a court over and above the usual grounds (eg, a cause of action available under the Civil Procedure Code). The use of a non-obstante clause in the provisions, which confers a special right on the plaintiff, is done with a view to giving the provisions overriding effect, implying that the provisions would prevail notwithstanding anything contained in the Civil Procedure Code or other law. This was clarified in Wipro Ltd v Oushadha Chandrika Ayurvedic India (P) Ltd. Thus, it is clear that the scope of the provisions cannot be curtailed by attempting to introduce the cause of action element while determining jurisdiction.

Often, the Delhi High Court’s decisions (IPRS v Sanjay Dalia (2008), Microsoft v Dhiren Gopal (2009) and Archie Comic Publications Inc v Purple Creations Pvt Ltd (2010)) are cited in support of the argument that the plaintiff cannot benefit from the provisions unless it further establishes that the cause of action also arose within the jurisdiction of the court. However, these decisions were passed without consideration of the Supreme Court’s decision in Exphar. Consequently, they hold no precedential value.

This interpretation does not imply that a plaintiff can maintain an infringement suit irrespective of whether a cause of action exists under the Copyright Law or the Trademark Law. It merely implies that, provided there is a cause of action under one of these laws, when a plaintiff seeks to benefit from the provisions it need not also show that the cause of action for the suit has arisen within the jurisdiction of the court.

On the second point, the Copyright Law provision is a self-contained code so far as jurisdiction relating to matters arising under that law is concerned (Ritiki Limited v Pramod Kumar (2002, Delhi High Court)). Consequently, who can assert jurisdiction under the provisions and claim their benefits can be answered by reference to the provisions alone. From a bare reading of the provisions, in which the phrase “the person instigating the suit or other proceeding” as opposed to “the owner of copyright” is used, it is clear that the geographical location of the copyright owner is irrelevant for determining jurisdiction in an infringement suit. This is so for two reasons:

• The provisions do not restrict the right to instigate legal proceedings for infringement to the owner of the copyright or trademark alone. Since the provisions use the phrase “the person instigating the suit”, they recognise that an infringement suit may be instigated by a third party such as an agent so authorised for the purpose (Phonographic Performance Limited v Lizard Lounge (2008, Delhi High Court)).
• The provisions give no importance to the geographical location of the copyright or trademark owner when determining jurisdiction. Rather, the geographical location of “the person instigating the suit” is relevant.

Consequently, even if the copyright or trademark owner is a foreign entity and has no base in India, its geographical location is irrelevant. It is the place of business of the person instigating the suit (eg, the Indian subsidiary, which is substantially affected by the infringement of its parent’s rights) which determines jurisdiction. Consequently, while a subsidiary company may not be entitled to the relief claimed in the suit (since only the owner or exclusive licensee is entitled to the same), this is no reason for holding that it was not a person who instigated the suit within the meaning of the provisions (Exphar v Eupharma (2004, Supreme Court)).

The law as to jurisdiction in copyright and trademark infringement suits has now been settled. The jurisdictional rules under the Copyright and Trademark Laws cannot be circumscribed by reference to any other law, including the jurisdictional rules of the Civil Procedure Code, and jurisdiction is to be determined not by reference to the place of business of the copyright or trademark owner, but by reference to the place of business of the “person instigating the suit”.