The case revolves around the rights of copyright owners and the limitations imposed on entities managing intellectual property under the Copyright Act, 1957, as amended. Novex Communications Pvt. Ltd. (the plaintiff) sought an injunction to restrain the defendant from unauthorized public performance and communication of sound recordings managed by Novex, challenging the interpretation of Section 33(1) concerning copyright societies.

Case Title: Novex Communications Pvt Ltd. Vs Trade Wings Hotels Limited

Date of Judgement: 24.01.2025: Commercial IP Suit No. 363 of 2019: 2024: BHC-OS-1428: Bombay High Court :R.I.Chagla: HJ

Background:
Novex Communications Pvt. Ltd. and Phonographic Performance Ltd. (PPL) are entities managing intellectual property rights, including the licensing of sound recordings for public performances. They have acquired rights through assignments from original copyright owners. The defendants in these cases allegedly infringed these rights by publicly performing sound recordings without obtaining the requisite licenses.

A preliminary issue arose: whether Novex and PPL, not registered as copyright societies under Section 33(1) of the Copyright Act, could legally grant licenses or seek relief for infringement.

• Plaintiff's Position:
  • Novex owns exclusive rights to sound recordings, acquired through assignment agreements with various music labels.
  • The plaintiff claims infringement by the defendant, who failed to obtain proper licensing for public performance.
• Defendant's Argument:
  • The defendant contended that Novex, not being a registered copyright society under Section 33(1), was prohibited from carrying on the business of licensing and was therefore not entitled to seek relief.
• Issues Involved:
  • Can Novex and PPL issue licenses and claim infringement relief without being registered as copyright societies under Section 33(1) of the Copyright Act?
  • Does the assignment of rights to Novex confer the status of ownership or only administrative rights subject to Section 33 restrictions?
• Plaintiff's Submissions:
  • Novex argued that as the assignee of copyrights, it held ownership rights equivalent to those of the original copyright owner, as per Sections 18 and 19 of the Act.
  • Section 30 allowed Novex to grant licenses for public performance in its capacity as the owner's agent or assignee.
  • The provisions of Chapter VII, specifically Section 33(1), did not limit the rights of copyright owners or their assignees but regulated collective management organizations.
• Defendant's Submissions:
  • The defendant claimed that Novex, not being a registered copyright society, could not engage in the licensing business or seek legal remedies under Section 33(1).
  • They argued that Novex's primary business was licensing, falling squarely within the ambit of Section 33(1), which prohibits such activities without registration.
• Reasoning and Analysis by the Judge:
  • Rights of Copyright Owners and Assignees:
    • The court analyzed Section 18 and Section 30 of the Copyright Act, which confer ownership and licensing rights to assignees.
    • It was held that an assignee is treated as an owner, and their rights are equivalent to those of the original copyright owner.
  • Interpretation of Section 33(1):
    • The court clarified that Section 33(1) regulates entities acting as copyright societies but does not curtail the rights of individual copyright owners or their assignees.
    • The section ensures accountability for organizations managing works on behalf of multiple copyright holders.
  • Ownership vs. Collective Administration:
    • The court distinguished between owners managing their copyrights and copyright societies operating under collective mandates.
    • It held that owners or assignees do not need to register as copyright societies to issue licenses for their works.
  • Precedents Considered:
    • The court referred to: Entertainment Network India Ltd. vs. Super Cassette Industries Ltd and Leopold Café Vs. Novex Communications Pvt. Ltd.
    • These cases emphasized that copyright societies are administrative entities, whereas owners retain individual rights.
  • Balancing Interests:
    • The court acknowledged the need to protect authors' and owners' rights while ensuring public access to copyrighted works through fair licensing mechanisms.

Decision:
The court held that Novex, as the assignee of copyrights, had the right to issue licenses and enforce its copyrights without registering as a copyright society under Section 33(1). The defendants were directed to refrain from unauthorized use of Novex's copyrighted works and obtain the necessary licenses.

Conclusion:
This judgment reaffirmed the distinction between the rights of copyright owners/assignees and the regulatory framework for copyright societies. It clarified that Section 33(1) does not undermine the statutory rights of copyright owners or assignees to manage and license their works. By upholding Novex's claims, the court emphasized the balance between safeguarding intellectual property and ensuring public interest.

Disclaimer:
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539