Publisher's Heir Cannot Claim Copyright Without Proof Of Assignment From Authors: Delhi High Court

The Delhi High Court has refused to grant an interim injunction to Shakti Sagar, who claimed copyright over 47 law books published by Delhi Law House (DLH) through her late father-in-law and husband. The court held that she had failed to establish a prima facie right because she had not shown how the copyrights were originally acquired from the authors.

Justice Purushaindra Kumar Kaurav held that a person who is not the author can derive copyright title only through an assignment under Section 18 of the Copyright Act, 1957, or through transmission recognised by the Act. Section 19(1) further requires an assignment to be in writing and signed by the assignor or an authorised agent.

“Any person other than the author can derive title only by an assignment under Section 18 of the Act, or by transmission in the manner recognised by the Act,” the court observed.

Shakti, the daughter-in-law of late R.G. Sagar and widow of late Subhash Sagar, claimed that the copyrights had devolved upon her through her husband and father-in-law.

She traced her claim over eight titles to a certificate dated April 1, 1962. According to her case, R.G. Sagar had acquired certain copyrights from Law Book Company, Allahabad, after retiring from the firm in 1961.

She then relied on a Will executed by R.G. Sagar in 1995, under which he allegedly bequeathed the copyrights to Subhash. Subhash subsequently executed a Will dated January 21, 2021, in her favour.

The court found a gap in this chain of title.

The books bear the names of their respective authors. Referring to Section 17, the court observed that the author is the first owner of copyright. It also relied on Section 55(2), which raises a presumption that the person whose name appears on a literary work as its author is the author.

R.G. Sagar was a publisher and was not claimed to be the author of the works. The court noted that, at best, the 1962 certificate recorded a transfer from Law Book Company to R.G. Sagar.

The problem was that Shakti had not shown how Law Book Company itself acquired the copyrights from the authors.

“The plaint does not disclose how M/s Law Book Company itself acquired the copyright from the authors,” the court observed.

It further noted that no assignment by the authors in favour of Law Book Company or R.G. Sagar had been placed on record.

“The root of the plaintiff's title is, therefore, not disclosed at this stage,” the court held.

The court relied on Tech Plus Media (P) Ltd. v. Jyoti Janda, observing that the requirement applied “with greater force to a plaintiff who claims to be a remote successor of an assignee.”

The court also considered works published before the Copyright Act, 1957 came into force. It held that under the earlier Copyright Act, 1911 as well, the author was the first owner and a third person could acquire copyright only through a written assignment signed by the owner.

The two Wills relied upon by Shakti could not fill the gap. “A legatee takes only what the testator held,” the court observed.

It distinguished Academy of General Education, Manipal v. B. Malini Mallya, where the testator was himself the author of the works and the legatee's title was not disputed.

In Shakti's case, neither R.G. Sagar nor Subhash was an author. The court also found that R.G. Sagar's own title had not been established.

The court noted that the Wills were seriously disputed and had not been proved. It clarified, however, that their genuineness and effect would have to be decided at trial.

“A claim to copyright which rests on disputed testamentary instruments, and whose root in an assignment by the authors is not disclosed, does not demonstrate the existence of a prima facie right,” the court observed.

The court also rejected reliance on Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, where the Supreme Court held that an injunction would normally follow in cases of copyright infringement.

The court held that this principle presupposes that the claimant has, at least prima facie, established ownership.

“The question of infringement arises only once ownership is shown,” the court observed.

The court also declined the passing-off claim, noting that the goodwill pleaded was that of Delhi Law House, built over four decades of publishing. Shakti was not a partner of the firm and had not sought relief concerning the partnership.

On balance of convenience and irreparable injury, the court noted that the books had been published for decades and that Shakti's grievance was substantially about her share in the revenues. Such loss could be calculated and compensated through damages.

The court accordingly dismissed the application for interim injunction.

It clarified that its observations were only prima facie and that questions concerning authorship, assignment, the Wills and the underlying documents remained open for trial.

For Plaintiff: Advocate Gaurav Bahl

For Defendants: Advocates Sanjay Vashishtha, Lavkesh Bhambhani, Siddhartha and Aditya