The Bombay High Court has held that once an action is initiated for the alleged infringement of copyright by the person who claims to be the owner thereof, albeit bona fide and with due diligence, the remedy for the alleged groundless threat of legal proceeding (under Section 60 of the Copyright Act), with the opponent, ceases to operate.
According to the Court, the fact that such action for infringement of the copyright is initiated, by the person claiming the copyright, subsequent to the institution of the suit under the main part of Section 60, is of no consequence.
The High Court hence held that even if a proceeding for infringement of a copyright is instituted after the institution of the suit under the main part of Section 60, still the proviso to said section becomes operative and the suit thereunder for groundless threat, etc., becomes infructuous.
Further, the Court was of the view that it depends on the facts of a given case whether a FIR constitutes a threat of groundless action under the main part of Section 60 or constitutes an ‘action’ under the proviso thereto.
The Court in this regard noted that where a private complaint is lodged before the criminal court or FIR is lodged with all the particulars requisite for determination of the question of infringement of copyright, which eventually leads to a trial on the question of infringement of copyright, it would be difficult to hold that the FIR would not constitute an action within the meaning of the proviso to Section 60.
However, considering the facts of the case, the Court held that the FIR in the present case was denuded of the character of proceeding in which the issue of infringement of copyright could be agitated and adjudicated.
Also, observing that subsequent to the impugned order by the District Court, the defendant had filed a suit for infringement also, the Court remitted the matter to the District Judge observing that it would be necessary to have the determination by the trial Court on the issue as to whether the aforesaid suit for infringement of the copyright falls within the ambit of the proviso to Section 60 and its resultant effect on the instant suit and the order passed therein.
The High Court in Manya Vejju v. Sapna Bhog also noted that the impugned order by the District Court transgressed the remit of determination under the enacting part of Section 60, as it ventured deep into the arena of infringement of the copyright or otherwise, in substance, at an interim stage.