Spicy IP Blog In India Reports Injunction Handed Down Against LN & TR For Infringement of EBC (Eastern Book Company) Copyright

Here’s the report & link….

EBC granted injunction against Lexis Nexis and Thomson Reuters for infringement of their copyright
by L. Gopika February 11, 2014    
The District Judge of Lucknow has granted a temporary injunction in favour of EBC restraining Thomson Reuters Corporation from infringing their copyright in their law reporter Supreme Court Cases (SCC) yet again. The District Judge also confirmed the ex parte injunction order granted in favour of EBC against Reed Elsevier Corporation for infringing on EBC’s copyright in SCC through their website www.lexisnexis.com. Similar orders were granted by the District Judge in Lucknow in 2012. Our posts on those orders are available here and here.

In the order against Thomson Reuters, the plaintiff provided charts and tables to stipulate that the Defendants were infringing on their copyright in their literary works in the law reporter SCC. The plaintiff prayed for an injunction restraining them from such infringement and from making the infringing copies available to the public in any manner, to remove such copies from its websites Westlaw India.com, Indlaw.com and to stop reproducing and making adaptations of the copyrighted work in a material form including storing it in electronic means. The Defendants objected under various grounds including that judgments are in the public domain and therefore, the plaintiff could claim copyright in only the headnotes and not in the judgment itself. Moreover, the defendants argued that there was a circular issued by the Supreme Court which stated that judgments should be published verbatim without any change and that the plaintiff had violated the circular. The plaintiff submitted that the publication of the raw text of the judgment or order of the Court, the copy edited judgment being reproduced without a license from the owner (the Government in this case) does not constitute an infringement of copyright. The Court ruled that as no order was brought to his notice which would establish that the plaintiff had violated the circulars of the Supreme Court and that the plaintiff had copy edited judgments in violation of the circulars of the Supreme Court, there was no force in the defendant’s contention. The Court dismissed the contention of the defendant that the basis of claim of the plaintiff was solely on Eastern Book Company v. D.B. Modak, 2008 (1) SCC 1 as the Supreme Court itself recognized in this case that there was continuous exercise and inputs of talent and creativity by the plaintiff as a result of which its expertise has matured in the last three-four decades. The Court ruled that the plaintiff had made out a prima facie case and that they would suffer an irreparable injury if the injunction was not granted and that the balance of convenience lay in the plaintiff’s favour.

In the order against Reed Elsevier Corporation, the defendants submitted that the 3 judgments pointed out by the plaintiff was independently sourced by the defendants from the Madras Law Journal and not from the plaintiff’s reporter SCC. The plaintiff submitted in its counter reply that the Madras Law Journal had in fact copied from SCC and cited 12 other judgments which it stated was copied from SCC. The Court ruled that MLJ had copied the copy edited judgments from SCC. It also found that the defendants had been wavering in their stance that they had sourced the judgments from MLJ when they purchased the journal as they had previously claimed that the judgments were sourced from Cyber Law Journal Pvt Ltd. (CDJ) through a Prospective License Agreement. The Defendants then raised the defense of acquiescence as the Plaintiff had not sued MLJ even though the 12 judgments that the plaintiff claimed to be copied had been published for the last two decades without objection. The plaintiff contended that the defense of acquiescence was a defense available for infringement of trademark under the Trade and Merchandise Marks Act, 1958 and not under the Copyright Act, 1957. Therefore, the plaintiffs contended that the judgments cited by the defendants namely, Power Control Appliances v. Sumeet Machines, 1994 (2) SCC 448 and Ramdev Food Products (P) Ltd. v. Arvind Bhai Ram Bhai Patel, 2006 (8) SCC 726 were distinguishable on this ground. The Court upheld this contention of the plaintiff and held that these judgments were indeed distinguishable. The Court noted the Supreme Court’s ruling that normally in cases of copyright and trademark infringement, an injunction is normally to be granted and ” permitting the defendants to carry on business by copyright infringement, would in fact be putting a seal of approval of the Court on the dishonest, illegal and clandestine conduct of the defendants.”  The Court noted that it had already found that the plaintiff had satisfied the three requirements for a temporary injunction under O.XXXIX R.1, namely, prima facie case, irreparable injury and balance of convenience when it had granted the ad-interim injunction in the plaintiff’s favour and that it found no reason to vacate such order. Thus, the District Judge confirmed the ex-parte injunction order granted earlier.

We thank Mr. Sumeet Malik for bringing these orders to our attention.