IN IN IN THE HIGH COURT OF JUDICATURE AT BOMBAY THE HIGH COURT OF JUDICATURE AT BOMBAY THE HIGH COURT OF JUDICATURE AT BOMBAY CIVIL CIVIL CIVIL APPELLATE JURISDICTION APPELLATE JURISDICTION APPELLATE JURISDICTION APPEAL APPEAL APPEAL FROM ORDER NO. 609 OF 2002. FROM ORDER NO. 609 OF 2002. FROM ORDER NO. 609 OF 2002. Deshmukh & Co.(Publishers) Pvt.Ltd., a Company incorporated under the Indian Companies Act, 1956 and having its registeered office at 473, Sadashiv Peth, ‘Savali’, Pune- 4110-30, through its Director Shri Girish Vinayak Dange, Age about- 40 years, Occu:Business, r/o 37/2/13, Appellants. Yashashri, Pune- 411038. (Ori.Plaintiff) vs. 1.Avinash Vishnu Khandekar age about 65 years occupation retired residing at "Usha" Plot No.47,Pratibhanagar Kolhapur. 2.Smt. Mandakini Khandekar. age about 64 years, occupation retired residing at "Nandadeep" 5th Lane, Rajarampuri Kolhapur. 3.Smt. Supriya Pendharkar. Age about 57 years, residing at "Kadambari" Plot No.98/1 Ward No.6, Ambarnath (E), Thane. 4.Smt. Surekha Atul Kapdadi Age about 58 years, residing at "Ashish", Subhashnagar, Kolhaplur. 5.Smt. Kalpalata Khare. Age 61 years, residing at 2113, Shilpayatan Aprt. Pune. 6.Sunilkumar Lawate. Age about 45 years,residing at Nishankar, Kolhapur. 7.M/s Mehta Publishing House. ( 2 ) 8.Anil Mehta Age about 60 years, residing at 2349, Shanivar Peth, "C" Ward, Kolhapur. 9.M/s Pressograph Printers. .. Respondents. (Ori.Defts.) WITH FIRST FIRST FIRST APPEAL NO. 276 OF 2001 APPEAL NO. 276 OF 2001 APPEAL NO. 276 OF 2001 Deshmukh and Company (Publishers) Private Limited, a Company registered under the provisions of the Companies Act, 1956 and having its office and place of business at 473, "Savli" Sadashiv Peth, Pune ..... APPELLANT (ori.plaintiff) VERSUS 1. Shri Anil Mehta aged about 55 years,occupation publisher, residing at 1216, Sadashiv Peth Near Perugate, Pune- 411 030. 2. Ms.Mandakini Khandekar age about 64 years, occupation retired residing at "Nandadeep" 5th Lane, Rajarampuri Kolhapur. 3. Avinash Khandekar, Age about 65 years, Occ: Retired, residing at "Usha", Plot No.47, PratibhaNagar, Kolhapur. 4. Mrs.Lata Khare age about 61 years, occupation housewife residing at 3/13, Shilpayatan Apartments, Karve Road Erandwane, Pune 411 004. ( 3 ) 5. Mrs.Sulabha Kapadi age about 59 years, occupation housewife residing at C/o Atul Kapadi "Ashish" 21/1, Vishwas Society, Subhashnagar Kolhapur. 6. Mrs.Mangala Pendharkar age about 57 years, occupation housewife residing at "Kadambari" Plot No.98/1, House No.831 No.6 Sai Action Ambarnath (E). 7. Mehta Publishing Company a firm carrying on business of publication of books at 1216, Sadashiv Peth, near Perugate, Pune 411 030 through its proprietor/partner Respondent No.1 above) ... RESPONDENTS (Ori.Defts.) Dr. V.V.Tuljapurkar, Senior Advocate, i/b S/Shri R.G.Ketkar and S.G.Karandikar, Advocates, for the appellant. Mrs. Kalyani Pathak, Advocate with Mrs. Madhavi Deshpande i/b Shri Uday Warunjikar, Advocate, for respondent nos. 1 to 7. CORAM CORAM CORAM : : : V.C.DAGA, V.C.DAGA, V.C.DAGA, J J J RESERVED RESERVED RESERVED ON: ON: ON: 29.4.2005 29.4.2005 29.4.2005 DELIVERED DELIVERED DELIVERED ON: ON: ON: 4.5.2005 4.5.2005 4.5.2005 JUDGMENT JUDGMENT JUDGMENT : : : . The unsuccessful plaintiff in the Court below in the suit claiming copyright in the Literary work of late Shri V.S. Khandekar is the appellant herein. The substantive First Appeal is directed against the judgment and decree dated 3.2.2001 in Civil Suit No. 2 of 1998 passed by the learned Third ( 4 ) Additional District Judge, Pune, whereby the suit filed by the appellant came to be dismissed, whereas Appeal from Order is against the order dated 20.2.2002 passed below Ex.5 in Copyright Suit No.2 of 2002 by the Vth Additional District Judge, Pune, whereby interim injunction came to be refused. . The parties are same, issues involved are identical, facts are common, so a single judgment will dispose of both appeals. Hereinafter parties will be referred to as arrayed in the original suits. The The The Factual Matrix : Factual Matrix : Factual Matrix : ------------------ ------------------ ------------------ 1. The factual matrix giving rise to the present appeals in nutshell can be summarised as under: 2. M/s.Deshmukh & Company Publishers (P) Ltd. Pune, a leading publisher of books; carrying on business at Pune, filed a suit under Section 62 of the Copyrights Act, 1957, inter alia, claiming - (i) a declaration that the plaintiff (appellant herein) has a subsisting copyright in publication of 14 books mentioned in the Schedule annexed to the plaint; with (ii) negative declaration that none of the defendants has any right to print or publish the same during the subsistence of the copyright in its favour; with ( 5 ) (iii) a further decree for permanent injunction; to restrain the respondents - defendant Nos.2 to 6 from dealing with, transferring, destroying or printing or publishing or otherwise authorising others from publishing or printing or selling or otherwise dealing with the books listed in the Plaint Schedule in any manner whatsoever. In addition, the plaintiffs have also claimed compensation in the sum of Rs.10,000/-. 3. The respondent No.1 herein is also a publisher of the books, whereas the respondent Nos.2 to 6 are the legal heirs of well known Marathi literary figure late Shri V.S.Khandekar, who had won "Gyanpeeth Award" for his literary work; crowned with a very distinguished honour for his literary work in the Marathi language. He was a person of very high repute. 4. The plaintiff’s case is that Shri Ram Jayawant Deshmukh was a publisher based at Pune. He was carrying on his proprietary business of publishing books in his own name. He had published books / literary work of late Shri V.S.Khandekar for several years since 1939 or so. On 19.5.1974 late Shri V.S.Khandekar entered into a written agreement with Late Shri R.J.Deshmukh under which exclusive publishing rights of his books were given to him. Shri V.S.khandekar left for heavenly abode on 2.9.1976 leaving behind his ‘Will’ under which another literary ( 6 ) celebrity and well known author Shri Ranjeet Desai was appointed as Executor of his Will. 5. The respondent No.2 to 6 herein, legal heirs of late V.S.Khandekar; after his death had raised a dispute in the company of Shri Ranjeet Desai, an executor of the Will of late Shri V.S.Khandekar, who had strain relations with late Shri Ram Jaywant Deshmukh. As a result, the first litigation by way of civil suit being Civil Suit No.1174 of 1981 came to be filed against Shri Deshmukh and his proprietorship firm (At the relevant time plaintiff-Company was not in existence) in the Court of Civil Judge, Junior Division, Kolhapur, alleging that heirs of Late Shri V.S. Khandekar had revoked the said agreement dated 19.5.1973 and claimed declaration to that effect and also claimed relief of injunction against Shri R.J. Deshmukh. Shri Deshmukh expired on 2.6.1985. Mrs. Sulochana Deshmukh was brought on record as his legal representative. The said suit was dismissed. However, certain directions to delete some part from the autobiography of Shri V.S.Khandekar, "Eka Panachi Kahani" were given by the trial Court and permanent injunction to that limited extent was issued. 6. The aforesaid Decree passed in Civil Suit No.1174 of 1981 was assailed in Regular Civil Appeal No.40 of 1989 filed in the District Court at Kolhapur. ( 7 ) The said appeal was partly allowed by the learned Additional District Judge, Kolhapur by judgment and order dated 11.2.1991 under which the defendants were restrained by perpetual injunction from printing, and/or publishing or getting printed and/or published sixty books of late Shri V.S.Khandekar since those books were not published during the stipulated time frame prescribed in the agreement however, with respect to 13 books which were published within time frame permanent injunction to print and publish came to be refused. The said suit with respect to other twelve books came to be dismissed. So far as another book ‘Eka Panahi Kahani’ is concerned, the decree of the trial Court was confirmed. In other words, it was held that the defendants had lost their right to publish 60 books except twelve + one mentioned in the decree; The present dispute relates to the nature of rights of the publisher with respect to the said excluded twelve books together with one more book viz. " Sonerin Swapna Bhangaleli" which does not find place in the agreement dated 19.5.1973. 7. As per plaint allegations, Late Shri R.J. Deshmukh, as per his will had bequeathed all his property to his wife Mrs.Sulochana Deshmukh, who later on, formed and incorporated the plaintiff company in the year 1989 and transferred all her publishing rights in the books of late Shri V.S.Khandekar in ( 8 ) favour of the plaintiff Company vide written document dated 12.3.1996. Based on this document, the plaintiff-appellant herein claimed exclusive publishing rights with respect to fourteen books referred to hereinabove. In order to assert their right they filed a civil suit to claim reliefs prayed therein, the details of which are mentioned in para-2 (supra). 8. The respondent No.2 (defendant No.1) Anil Mehta, who is the proprietor of defendant No.7- firm, is also engaged in publishing business and claimed to have obtained Power of Attorney from defendant Nos.2 to 6 to represent their interest in the suit. He tried to publish and print 14 books set out in the schedule to the plaint i.e. the books spared or excluded in the judgment and decree passed in Civil Suit No.1174 of 1981 by the learned Civil Judge, Junior Division, Kolhapur, as modified in Regular Civil Appeal No.40 of 1989 by the learned Additional District Judge, Kolhapur. 9. On being summoned, the defendants appeared in the suit. Anil Mehta and Mehta Publishing Company, defendant Nos. 1 and 2 respectively filed their written statement. The very same written statement was adopted by the other defendants vide their purshis dated 27.4.2000 (Exhibit 36). They denied rights ( 9 ) claimed by the plaintiff in literary work of late Shri V.S.Khandekar. It was denied that the plaintiff inherited or received any such right either from late Shri R.J. Deshmukh or his wife late Mrs.Sulochana Deshmukh as pleaded in the plaint. The interpretation on the agreement dated 19.5.1974 put by the plaintiff was challenged on various grounds. It was also contended that late Shri R.J. Deshmukh or his wife or person claiming through them did not fulfil their obligations flowing from the agreement dated 19.5.1973. That they not only failed to pay amount of royalty to the heirs of late Shri V.S. Khandekar or to the executor of his will, as agreed but also failed to supply copies of the books on its publication as agreed and did not even render any account about such publication work. The defendants thus prayed for dismissal of suit. 10. The trial Court was pleased to frame issues relevant to the pleadings and permitted the parties to lead their respective evidence. 11 On the basis of the documentary and oral evidence available on record, considering various clauses of the agreement trial Court was pleased to hold that the said agreement had conferred upon the publisher late Shri R.J.Deshmukh a mere licence to publish books written by late Shri V.S. Khandekar. ( 10 ) Trial Court in support of its findings mainly relied upon judgment of the M.P. High Court in the case of Mishra Bandhu Karyalaya vs. Shivratanlal Koshal (AIR 1970 MP 261). The trial Court in unequivocal terms held that the agreement in question was nothing but a simple licence granted to print and publish certain subject books on certain conditions as mentioned in the agreement subject as to the payment of royalty stipulated therein. The trial Court also relied upon the admission given by the publisher Shri Deshmukh in one of the books of late Shri V.S. Khandekar published by him known as "Yayati" on 6.7.1976. The front page of the book carried following endorsement: " " (All rights are with the author) The trial Court was, thus, pleased to hold that the plaintiff has failed to prove exclusive right to publish Marathi literature of late Shri V.S. Khandekar with respect to 14 books mentioned in the plaint schedule based on agreement dated 19.5.1973. It was thus held that plaintiff was not entitled to a declaration and permanent injunction as prayed for in the said suit. The suit accordingly came to be dismissed. ( 11 ) 13. One more litigation tagged with this appeal also needs brief reference. The plaintiff-appellant herein has also instituted one more litigation being Copy Right Suit No.1 of 2002 in the District Court, Pune, for declaration and injunction. Declaration that the plaintiff-company (Appellants) as an assignee of Smt. Sulochanabai Deshmukh has absolute right to print and publish the and published work together with unedited unpublished writings of late Shri V.S. Khandekar and also prayed for permanent injunction pursuant to various prayer clauses incorporated in the suit. During the pendency of the suit, plaintiff-appellant moved an application for interim injunction (Exh.5). On contest the trial Court vide its order dated 20.2.2002 was pleased to reject prayer for interim relief holding absence of prima facie case, balance of convenience and possibility of suffering any legal injury. 14. Being aggrieved by the aforesaid judgment and decree in Civil Suit No. 2/98, dated 3.2.2001, and the order of the trial Court refusing to grant prayer for injunction (Ex.5) in Copy Right Suit No.1/2002 vide order dated 20.2.2002 the appellants herein; has preferred these appeals to challenge the above verdicts of the trial Court delivered in both proceedings. ( 12 ) Submissions Submissions Submissions : : : ----------- ----------- ----------- 15. Dr.Virendra V. Tulzapurkar, learned Senior Counsel appearing for the appellant- original plaintiff, submitted that the document dated 19.5.1973 is a deed of partial assignment. That it is not a mere licence to print and publish books. In support of his contention, he has referred to and relied on following amongst other clauses of the agreement the gist of which is as under:- (i) right to publish books given to Shri R.J. Deshmukh; (ii) if the books are not published within a period of five years that right will be reverted to the author; (iii) the author retains the right of translation or making film or play on the basis of said books, and (iv) after the death of Shri R.J.Deshmukh, rights under the agreement would devolve as per his will. ( 13 ) According to him, clause (iv) supra providing for devolution of rights under the agreement as per his will is sufficient to show that the rights given under the agreement were not mere personal rights but were heritable and transferable. According to him, above clause (iv) of the agreement is inconsistent with the concept of a licence. 15. Dr.Tulzapurkar would further submit that copyright is a bundle of rights as enumerated in Section 14 of the Copyright Act, and, therefore, there was no need to provide for various rights retained by the author in the agreement; if it was only a licence. According to him, section 18 of the Act recognises the owner’s right to assign copyright either wholly or partially. In his submission, an assignment creates an interest of ownership in favour of the assignee, whereas, a license merely permits a licensee to do something which but for the licence would amount to violation of the owner’s rights. In support of his submission he relied upon the decisions in (i) British Actors Film Co. vs Glover British Actors Film Co. vs Glover British Actors Film Co. vs Glover (1918) 1 KB 299 at p.306 and (ii) Heap vs. Harley Heap vs. Harley Heap vs. Harley (18 89) 42 Ch.D. 461 at page 470). 16. Dr. Tulzapurkar urged that mere use of the term "Licensor or Licensee or Licence" by itself does not determine as to whether or not the instrument ( 14 ) is a licence. According to him, reservation of certain rights in the agreement provision for reverting back to the author of the rights granted by the agreement show that the agreement is nothing but assignment and not a licence. He pressed into service various decisions viz. (i) Messager vs. British Messager vs. British Messager vs. British Broadcasting Broadcasting Broadcasting Co.Ltd Co.Ltd Co.Ltd (1929 Appeal Cases 151); (ii) Loew’s Loew’s Loew’s Incorporate Incorporate Incorporate vs. Littler & Ors. vs. Littler & Ors. vs. Littler & Ors. (1958) (2) All England Reports, 200; (iii) Jonathan Cape Ltd v. Jonathan Cape Ltd v. Jonathan Cape Ltd v. Consolidated Consolidated Consolidated Press Ltd Press Ltd Press Ltd (1954) (3) ALL ER 253; and (iv) Dharam Dutt Dhawan vs. Ram Lal Suri & Sons Dharam Dutt Dhawan vs. Ram Lal Suri & Sons Dharam Dutt Dhawan vs. Ram Lal Suri & Sons (AIR 1053 Punjab 279). He also relied upon the decisions in (i) William Butler Yets v. Prof.Eric Dickson William Butler Yets v. Prof.Eric Dickson William Butler Yets v. Prof.Eric Dickson (AIR 1938 Lahore 173) and (ii) Asia Publishing House vs. Asia Publishing House vs. Asia Publishing House vs. John John John Wyley & Sons Wyley & Sons Wyley & Sons (71 Bom Law Reporter 777). 17. On the second issue, Dr. Tulzapurkar would submit that the trial Court is clearly in error, inasmuch as, the decision in the earlier suit could never operate as constructive res judicata for the simple reason the issue as to whether the agreement was a copyright or a licence was not in issue in the earlier suit. In any event, the question as to whether or not Shri R.J.Deshmukh was the owner by way of copyright; could not have been decided in the earlier suit as the said Court had no jurisdiction to decide that question. Thus, he would submit that both the issues ought to have been answered in favour of ( 15 ) the appellant and the suit ought to have been decreed with costs. 18. Per contra : The learned Counsel appearing for the respondents while refuting the submissions made by Dr.Tulzapurkar urged that the agreement dated 19.5.1973 was nothing but a mere licence to publish books in favour of late Shri R.J. Deshmukh. It was not an assignment of a copyright. While developing this submission the learned Counsel for the respondents would submit that the entire plaint of the suit if perused would show that it nowhere raises a contention that the agreement in question is an assignment of copyright. In her submission, entire agreement is silent about the term ‘copyright’ as such, it is, required to be treated as a mere publishing licence; that too a conditional personal licence in favour of Late Shri R.J. Deshmukh. It did not create any permanent right in his favour. It was revocable at the wish and will of the grantor. 19. According to the learned Counsel for the respondents, at no point of time, the intention of the parties to the suit agreement was to create any copyright in favour of late Shri R.J. Deshmukh or his legal heirs. The learned Counsel for the respondents relied upon the decisions in (1) AIR 1970 M.P. 261 ( 16 ) (para 22), AIR 1938 Lahore 173 and AIR 1970 MP 261 (para 16) in support of her submission. 20. The learned Counsel for the respondent would further contend that if the intention of the parties to the agreement is gathered, it is clear that payment was to be made with the publication of each edition by sharing the profit by way of royalty by way of consideration, as such there was a continuous obligations on the part of the publisher to make payment of royalty with obligation to render accounts even to the heirs of late Shri V.S. Khandekar. In this view of the matter, she submits that the agreement in question has to be construed merely as licence to publish books and no more. In support of this submission, reliance was placed on clauses 5 and 6 of the agreement. 21. Learned Counsel for the respondent further contends that para 3 of the agreement provides that, if Shri R.J. Deshmukh does not publish books within a period of five years or refuses to publish, then, the publishing rights would revert back to heirs of late Shri V.S. Khandekar. This term, in the submission of the learned Counsel, had only given publishing rights in favour of late Shri R.J.Deshmukh. She would further submit that late Shri R.J.Deshmukh himself during his lifetime had admitted that he did not have ( 17 ) copyright, which in her submission, is clear from the first page of book "Yayati" published by him on 6.7.1976, which specifically says that " all rights reserved with the author". 22. The learned Counsel for the respondent has also pressed into service para 10 of the written statement (Ex.71) which was filed by Shri R.J. Deshmukh in Kolhapur Court in Regular Civil Suit No.1174 of 1981 and submitted that even according to Shri Deshmukh, late Shri Khandekar had granted only right to print and publish his literature during his life time. In her submission, this can also be inferred from the averments made in para (2) of Civil Appeal No. 1280 of 2001 and para (16) of the affidavit in rejoinder filed by Shri R.J. Deshmukh in the said appeal. In other words, according to the learned Counsel, even Shri R.J. Deshmukh during his life time never claimed any copyright or exclusive licence in his favour. According to her, the learned Additional District Judge, Kolhapur, has clearly recorded a categorical finding in para (43) of his judgment (Ex.87) that "no copy right was transferred in favour of Shri R.J. Deshmukh in terms of the agreement." In her submission, this categorical finding is very much binding on both the parties and operates as res judicata between them. ( 18 ) 23. The learned Counsel for the respondents would further contend that assuming but not admitting that the suit agreement had created copyright in favour of late Shri R.J. Deshmukh, since the company did not apply for registration of said copyright under section 45 of the Copyright Act, as such non-registration of the copyright must lead to a conclusion that the plaintiff is not entitled to use the same. Reliance is placed on Mishra Bandhu Mishra Bandhu Mishra Bandhu Karyalaya Karyalaya Karyalaya v. S.Koshal v. S.Koshal v. S.Koshal AIR 1970 MP 261 (paras 9 and 10) in support of the submission made. 24. Lastly, the learned Counsel for the respondents by way of alternate submission contended that the suit agreement automatically came to an end with the demise of Shri R.J. Deshmukh, as, he did not nominate or appoint any person, so as to transfer his right under the suit agreement after his demise. Alternatively, it is submitted that wife of Late Shri R.J. Deshmukh did not comply with any of the obligations flowing from the agreement. She did not pay a single pai to the heirs of late Shri V.S.Khandekar and that the document dated 12.3.1996 transferring rights to print and publish in favour of the plaintiff company by Sulochanabai is a suspicious document. The learned Counsel for the respondents thus prayed for dismissal of the appeals with costs. ( 19 ) 25. In rejoinder, Dr.Tulzapurkar, submitted that in para 14 of the plaint it was specifically averred that the plaintiff is claiming copyright. The suit which was filed in the Court inferior to the District Court was withdrawn so as to file it in the Court competent to try a suit relating to copyright. In any case, both the parties proceeded on the footing that the claim put forth by the plaintiff-appellant was for copyright. In his submission, the issues framed by the trial Court also clearly demonstrated that both the parties were aware that the plaintiff-appellant was claiming copyright under the agreement. He, thus, contends that now it is too late for the respondents to urge that there were no proper pleadings to claim copyright. In his submission, the contentions in this behalf are devoid of any substance. 26. Dr.Tulzapurkar also strongly refuted the contention of the respondents that the suit agreement was a personal licence granted in favour of Late Shri R.J. Deshmukh and it came to an end with his demise. He submits that four clauses of the