IN THE HIGH COURT OF JUDICATURE AT MADRAS Dated: 11.08.2008 Coram THE HONOURABLE Mr. JUSTICE M.CHOCKALINGAM AND THE HONOURABLE Mr. JUSTICE M.VENUGOPAL O.S.A.No.30 of 2004 1.Astor Technologies, No.14, Readymade Garment Complex, Thiru-Vi-Ka Industrial Estate, Guindy, Chennai-600 032. Rep. By its Partner, Vasudevan 2.Vasudevan 3.K.Ravi ... Appellants/Defendants Vs. L.B.Thiagarajan ... Respondent/Plaintiff Prayer:- Appeal preferred under Order 36 Rule 11 of O.S. Rules read with Clause 15 of Letters Patent praying to set aside the common order passed by the Trial Court in O.A.No.814 of 2002 in C.S.No.610 of 2002 dated 24.09.2003. For Appellants : Mr.A.A.Mohan For Respondent : Mr.A.Prabhakara Reddy JUDGMENT (The Judgment of the Court was delivered by M.VENUGOPAL,J.) This Appeal is filed by the appellants/defendants as against the orders passed by the learned Single Judge in Original Application No.814 of 2002 in C.S.No.610 of 2002 dated 24.09.2003 in dismissing the temporary injunction application restraining the respondent/ plaintiff from infringing their copyright. 2.The appellants/defendants/applicants filed Original Application No.814 of 2002 praying for the relief of an interim injunction restraining the respondent/plaintiff or anyone claiming under him from in any manner infringing the copyright in the Computer Aided Design Software 'ASTOR EAZY DESIGN' and its variations and from dealing with the same, etc. https://hcservices.ecourts.gov.in/hcservices/ 3.The learned Single Judge has dismissed the original application O.A.No.814 of 2002 praying for interim injunction filed by the appellants/defendants against the respondent/plaintiff inter alia stating that 'though the appellants/defendants have proved to be the owners of CAD/Astor Eazy Design and its modules etc., it is too early to consider entitlement of the appellants/defendants for issuance of an order of temporary injunction and that the claim and contention of the parties is in the nebulous stage and the parties are yet to go on trial and if temporary injunction in any form is granted against the respondent/plaintiff, there is every possibility of its being mis-interpreted restraining him from doing the business under the company name Essdi Infotech Corporation promoted by him and this is all the more so, when the differences between the parties has been strained by the registration of the criminal case.' 4.It is the case of the appellants/defendants that the respondent/plaintiff has filed a suit for permanent injunction restraining the appellants/defendants from infringing the copyright vested with him in respect of the Computer Software for garment manufacturing and that the respondent/plaintiff has not produced the software in which he claims a copyright and further that the respondent/plaintiff has not produced the appellants/defendants' software for comparison between the two and all the more the appellants/defendants denied that the respondent/plaintiff is the original inventor of the software titled 'Computer Aided Design' for garment manufacturing technology and that the appellants/ defendants have employed the respondent/plaintiff as an employee to co-ordinate in the project of the appellants/defendants, who has a team of computer engineers and technical experts already working on the project etc. and as per Section 17 of the Copyrights Act, 1957, any work in which copyright subsists when created in the course of employment by any employee vests automatically with the employer, unless an agreement to the contrary is made and that the appellants/ defendants denied that the respondent/plaintiff is an ever an owner of the software or copyright therein and therefore, they are entitled to claim the relief of interim injunction against the respondent/plaintiff. 5.It is to be borne in mind that the respondent/plaintiff has filed a suit C.S.No.610 of 2002 inter alia stating that CAD software has been developed by him which has gained reputation, recognition, identity and success among the garments industry and that he has developed the software exclusively by himself without any reference to the appellants/defendants and that he is the true inventor of the said software and has the absolute copyright in the said software apart from seeking the patent therefor and therefore, he has the right to trade and reproduce the same as an author of the work to the exclusion of all others including the appellants/defendants and has prayed for the grant of permanent injunction restraining the appellants/defendants, its partners, his men, agents, etc., or anyone claiming through them from in any manner infringing the copyright vested on the plaintiff in the computer software CAD/CAM for garment manufacturing technology created and invented and developed by him https://hcservices.ecourts.gov.in/hcservices/ and for other reliefs. 6.The appellants/defendants have filed a written statement in the suit inter alia contending that the software claimed by the respondent/plaintiff is an intellectual creation of the first appellant/ first defendant and that respondent/plaintiff was only an employee of the first appellant/first defendant and during his term he has also participated in development of the said software and as per Section 17(a) of the Copyright Act, 1957, copyright in any work created by an employee during the course of his employment, shall vested with the employer alone except under certain conditions and that the respondent/plaintiff left the services of the defendants in July 2001 and that the respondent/plaintiff clandestinely and illegally took away the computer software 'ASTOR EAZY DESIGN' and the source code of the said copyright when he left the services of the appellants/ defendants and had approached the customers of the defendants by using the appellants/defendants' said software and that the appellants/defendants filed criminal complaint against the respondent/plaintiff before the Central Crime Branch, Tiruppur and that an FIR under X Crime No.6 of 2002 dated 25.06.2002 registered and that the criminal case is pending before the Tiruppur Magistrate Court and that the respondent/plaintiff has hijacked the trade secrets of the appellants/defendants. 7.A categorical stand taken by the appellants/defendants while resisting the suit is that the second and third appellants/defendants being the partners of the first appellant/defendant and other 3 being the employees of the firm have worked towards the said software and that all the five persons were the original inventors of the software, which was duly assigned in favour of the first appellant/defendant firm which is the owner of the said software programme and all intellectual property rights vested in it. 8.Generally, an injunction is the vital remedy against an infringement. Admittedly, the object of interlocutory injunction is to protect the plaintiff against injury by violation of his right for which he could be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. Equally, the plaintiff's need for such protection should be weighed against the corresponding need of the defendant to be protected against an injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated under the plaintiff's undertaking in damages if the uncertainty were resolved in the defendants' favour at the trial. However, the Court must weigh one requirement against another and determine where 'balance of convenience lies'. It is to be noted that a rigid invocation of injunction without visualising elasticity in the application of the rule as to the grant of injunction might at times result in inconvenience which cannot be cured later. 9.It cannot be gainsaid that it is not the Court's function at the interlocutory stage of a pending suit to try to settle conflicts on evidence, on affidavit as to facts on which the claims of either https://hcservices.ecourts.gov.in/hcservices/ person may ultimately devolves upon or to decide difficult questions of law which require elaborate argument and mature considerations and admittedly, these points are to be dealt with at the time of trial. Moreover, in the field of copyright actions where the grant or refusal of an interim injunction would in effect dispose of the action finally in favour of either of the parties, then, it is desirable for the Court to hear full arguments and render a decision on merits, in the considered opinion of this Court. 10.At this stage, this Court points out aptly that Hubbard and another V. Vosper and another, (1972) 1 All ER page 1023 at 1029 Lord Denning, M.R. observed 'in considering whether to grant interlocutory injunction, the right course for a Judge is to look at the whole case. He must have regard not only the strength of the claim but also to the strength of the defence, and then decide what is to be done, etc.' Added further, the Court has to see the existence of the right and any of the defences that are asserted in relation to the admitted existence of that right, besides taking into account the facts relating to the alleged breach, the evidence of the alleged breach etc. 11.As far as the present case is concerned, the learned counsel for the appellants submits that the appellants have filed a written statement and the counter claim. However, the respondent/plaintiff counsel contends that the respondent/plaintiff has not worked as an employee but worked as a consultant and received payments in that capacity from the first appellant/first defendant and therefore, the appellants/defendants cannot seek the aid of Section 17 (c) of the Copyright Act and further that the respondent/plaintiff has not assigned his copyright as per Section 18 of the Copyright Act. Section 18 of the Copyright Act, 1957, recognises assignment of copyright. Section 19 of the said Act envisages that such assignment shall be made in writing, signed by the assigner or his agent. Section 30 of the said Act recognises grant of licence by the owner, which too is required to be in writing, signed by owner or his agent. 12.It is also the contention of the learned counsel for the respondent/plaintiff that first defendant/appellant's company came into existence in the year 1999 and that the respondent/plaintiff has been a consultant for setting a garment factory and before the year 1999, the appellants/defendants had a different company for garments and after 1999, the appellants/defendants say that the respondent/plaintiff worked as Senior Manager. But it is the consistent case of the respondent/plaintiff that he never worked as an employee and that the employment of the respondent/plaintiff is yet to be proved in the case and from the year 1994-1998, the respondent/plaintiff has not been in employment with the first appellant/defendant and that the appellants/defendants has promised that he will be made as a partner in a company to be flouted by them but that has not been done and further that the appellants/defendants made a promise with the respondent/plaintiff that they will make the respondent/plaintiff, a shareholder-Director and that the respondent/ plaintiff issued a legal notice dated 27.05.2002 to the appellants/ https://hcservices.ecourts.gov.in/hcservices/ defendants and also filed Form-6 before the Controller of Patents on 15.06.2002 raising objections for grant of patent in the name of first defendant. 13.The appellants/defendants have lodged a criminal complaint against the respondent/plaintiff on 25.06.2002. The suit has been filed on 20.08.2002. In the instant case, originally the written statement has not been filed in time and later on the delay in filing of the written statement has been condoned. It appears that the appellants/defendants have also filed a counter claim to which a reply has also been filed by the respondent/plaintiff. 14.The learned counsel for the appellants/defendants brings to the notice of this Court that when the written statement was filed, the patent issued was pending before the authority concerned and as on date, the appellants/defendants have obtained a patents in their favour. To this, the learned counsel for the respondent/plaintiff submits that the respondent/plaintiff has already filed Form-6 before the Controller of Patents on 15.06.2002 raising objections and that the concerned authority has not issued any notice to the respondent/ plaintiff or heard the objections of the respondent/plaintiff before granting the patent in issue and in this regard, the learned counsel for the respondent/plaintiff informs this Court that he will work out his remedy before the appropriate authority in accordance with law. 15.It is not out of place to point out that the respondent/ plaintiff has filed O.A.Nos.598 and 599 of 2002 praying for (i) interim injunction restraining the appellants/defendants, its partners, his men, agents, servants, or anyone claiming through them from in any manner infringing the copyright vested on the respondent/plaintiff in the computer software CAD/CAM for garment manufacturing technology created and invented and developed by the respondent/ plaintiff; (ii) interim injunction restraining the appellants/ defendants, its partners, his men, agents, servants, or any one claiming through them from in any manner passing off of the computer software CAD/CAM for garment manufacturing technology developed by the respondent/plaintiff either by sale or installation or in any manner advertising the same. Likewise, the appellants/ defendants have projected O.A.No.814 of 2002 praying for the relief of interim injunction restraining the respondent/plaintiff or any one claiming under him from in any manner infringing the copyright in the Computer Aided Design Software 'ASTOR EAZY DESIGN' and its variations and from dealing with the same by soliciting orders from customers etc. and also filed Application No.3652 of 2003 praying to appoint an Advocate Commissioner with specific directions to access the computer and other accessories, CD's Floppy Disks containing source code of the impugned software, which were seized by the police authorities in X Crime No.6 of 2002 on 25.06.2002 or later during the course of investigation etc. and to take print outs of the materials contained therein and to submit a report thereon along with the printouts within a time stipulated by this Court. By virtue of the common order passed in O.A.Nos.598 and 599 and 814 of 2002 and Application No.3652 of 2003 in C.S.No.610 of 2002, the learned Single Judge has dismissed https://hcservices.ecourts.gov.in/hcservices/ all the applications for the reasons assigned thereto. 16.On a careful consideration of respective contentions advanced on either side, this Court comes to the inevitable conclusion that the issues involved in the case could not properly be tried upon affidavit evidence and therefore, as a logical corollary we opine that having regard to the nature of controversies/disputes involved in the case, it is appropriate for the parties to workout their remedies in the main suit finally and conclusively where they can lead oral and documentary evidence to substantiate their case and to thrash out the matter in entirety, enabling the Court to hear the case finally and to render its decision on merits and in that view of the matter, the order of the learned Single Judge in dismissing the O.A.No.814 of 2002 on 24.09.2003 does not require any interference in the hands of this Court and accordingly, the Original Side Appeal fails and the same is hereby dismissed in the interest of justice. Consequently, the order passed by the learned Single Judge in O.A.No.814 of 2002 dated 24.09.2003 is affirmed for the reasons assigned by this Court in this appeal, leaving the parties to bear their respective costs. Sd/ Asst.Registrar /true copy/ Sub Asst.Registrar Sgl To The Sub-Asst.Registrar, Original Side, High Court, Chennai-104 O.S.A.No.30 OF 2004 gv(co) pmk/28.8.2008. https://hcservices.ecourts.gov.in/hcservices/