As an IP lawyer I am handling one of the cases which is related to infringement of copy right. The issue of that case is whether the plaintiff is entitled to be protected under the provisions of Copyright Act, 1957. The other issue is whether the suit is barred by law.
Let me discuss this in detail in respect of legal aspects.
When a plaintiff files a suit for infringement of copyright, two very important aspects are required to be considered by the Hon'ble Courts while adjudicating the notice of motion or suit. The burden of proof is on the shoulder of the plaintiff to prove these two aspects.
(1) whether a person who files such suit is an author or owner of a work in dispute.
(2) whether a work in dispute is original work.
Here before I go ahead to discuss it, it is clarified that registration of copyright work is not compulsory for taking infringement action, registration is compulsory under trade mark, designs, patent and geographical indication laws. If a person files a suit for infringement of copyright work; is neither author nor owner of it, then what the legal scenario would be, he must be exclusive licence holder of the work in dispute., provided that when an exclusive licensee files a suit for infringement of copyright, the owner of copyright is joined as a defendant in that suit as per section 61 of the Copyright Act, 1957 ( herein after referred as the Act for short ). Thus it is clear that a person must be having title i.e. ownership of a work in dispute for taking action of infringement of copyright against infringer.
Now let me discuss what is required to be considered for above mentioned first point i.e. whether a person who files a suit is an author or owner of a work in dispute.
With this regard, definition of author plays a vital role. Section 2 (d) of the Act justifies who the author is in relation to various works. Thus as per section 2(d) (i) in respect of a literary or dramatic work, the author of that work, (ii) in relation to musical work, the composer, (iii) in relation to an artistic work, the artist, (iv) in respect of a photograph, the person who is taking photograph, (v) in relation to a cinematograph film or sound recording, the producer and (vi) in relation to any literary, dramatic, musical or artistic work which is computer-generated, the person who causes the work to be created. Now in connection with section 2(d), let me discuss section 17 of the Act which is very important for claiming ownership of copyright in any work as well as the title of this article is revolving around the section itself. Section 17 says that the author of a work shall be the first owner of the copyright subject to the certain conditions referred in section 17 of the Act. Now the title of this article 'Contract of service & Contract for service' is discussed herein after in view of the provision of Section 17 of the Act.
It is essential to know what Contract of service is & what Contract for service is.
CONTRACT OF SERVICE:
It is pertaining to note that there are no particular definitions given in Copyright Law for the terms 'Contract of service & Contract for service', however, the term 'Contract of service' invokes the relationship between employer and employee. The question is arisen that how it relates to Copyright Act. The best answer is that an author makes any literary, dramatic or artistic work under the employment, the employer is the first owner of that work made by that author in absence of any agreement. In other words, such above mentioned work is made by an author as as employee, and there is no specific agreement between employer and employee with regard to such work. Under such circumstances, the employer is the first owner of the work. Now another question is that whether in all types of employment, the employer is the first owner. The answer is described in Section 17 (a) which states that the proprietor of a newspaper, magazine or similar periodical is the first owner of the work in so far as the copyright relates to the publication of the work or reproduction of such work for being published. Thus it is clear that a work prepared by an author under the employment is claimed by employer as a first owner in absence of any agreement. This is called 'Contract of Service'.
CONTRACT FOR SERVICE
A person, not being employee, provides any service by getting paid for it, is within the ambit of the term 'Contract for Service'.
Let me discuss what Contract for Service is. For that, last line of proviso (a) of Section 17 of the Act is required to be considered which says, "but in all other respects the author shall be the first owner of the copyright in the work." Let me discuss this. The words ' but in all other respects' means and includes which is not within the ambit of the term ' Contract of Service'. In other words, the the person who is not an employee but avails his service to any employer by taking payment for his service as a service provider, falls within the ambit of the words "but in all other respects", and therefore, that service provider is the author and first owner of the copyright work.
Thus the difference between 'Contract of Service' & 'Contract for Service' is very noteworthy. In a sentence, a work made by an author under the employment falls with the terms of ' Contract of Service' and a work by an author not under employment falls under the terms 'Contract for Service'.
I would like to discuss a few judgements in respect of the title of this Article herein after.
A) In case between Suraiya Rahman vs. Skill Development for Under Privileged Women reported in 1997(17)PTC 295, Hon'ble Supreme Court of Bangladesh, in paragraph no. 7 & 8, discussed the issue related to 'Contract of Service' & ' Contract for Service' by relying upon the decision of English law. House of Lords in case of Short V.J. and W.Henderson LTD reported in (1946)39 B.W.C.C62 recapitulated with approval four indicia of Contract of Service mentioned in the case Park V. Wilson and Clyde Coal Co. LTD reported in (1928) Sess.Cas 121(at page 133) derived from authorities. Those are
(1) masters lower of selection of his servant.
(2) the payment of wages and other remuneration
(3) the master's right to control the method of doing the work and
(4) the master's right of suspension or dismissal.
In paragraph no. 8 of the judgement of Supreme Court of Bangladesh, referring the various English judgements wherein it was observed that " Is the person who has engaged himself to perform these services performing them as a person in business on his own account ? If the answer to this is 'YES', then the contract is a contract for services. If the answer is 'NO' then the contract is a contract of service. ....." To find out a distinction between a contract of service & contract for service', it is to be seen from the facts and circumstances of a case whether an employed person in relation to the employer is an employee or an independent contractor. If an employed person is an employee of the employer, he is under a contract of service and if such a person is an independent contractor under the employer then he is under a contract for service. Thus, whether a person is under a contract of service OR contract for service is a question of fact and not a question of law and it is to be determined on consideration of the facts and circumstances of each case."
B) In another case of Ready Mixed Concrete (South East )LTD V. Minister of Pensions and National Insurance reported in (1968) 2 QBD 497 at page 515, it was observed that , " A contract of service exists if these three conditions are fulfilled:
(1) The servant agrees that, in consideration of wages or other remuneration, he will provide his work and skill in the performance of some services of his master.
(2) He agrees, expressly or implied, that in the performance of that service, he will be subject to the other's control in a sufficient degree to make that other master.
(3) the other provisions of the contract are consistent with it's being a 'Contract of Service'.
C) In case of eXEGESIS Infotech (India) Pvt. Ltd.& Anr. Vs. Medimanage Insurance Broking Pvt. Ltd. reported in 2015 (63) PTC 612 (Bom) the issue involved in this article is discussed in paragraph no. 6 & 7 of the judgement wherein plaintiffs claimed to be the owner copyright of software and the case of defendant was that plaintiffs were employed on a "work for hire" basis. Based on material on record and as per provision of Section 17 (c) of the Act , injunction was not granted by the Court.
(D) In case of Pine Labs Pvt. Ltd Vs. Gemalto Terminals India Pvt. Ltd & Ors reported in 2010 (42) PTC 229 (Del), Hon'ble Delhi High Court discussed the issue of contact of service and contract for service from paragraph nos. 49 to 59 of the case.
(E) In case of Zee Entertainment Enterprises Ltd Vs. Gajendra Singh & Ors reported in 2008 (36) PTC 53 (Bom) in this case the dispute between the Parties was whether defendant no. 1 was engaged by the plaintiff under the title of contract of service or contract for service from the year 1992 to 1999 along with the issue of infringement of copyright of literary work and cinematograph of plaintiff's game show telecast on TV. In paragraph no. 39 referring the extract from Chitty on Contracts, Twenty- Ninth Edition, Volume II, page 943, in respect of the factors identifying a contract of employment, I quote it as it is herein after.
" The factors to be considered. Recent case law suggests that the factors relevant to the process of identifying a contract of employment may usefully be listed as follows:
1) the degree of control exercised by the employer.
2) whether the worker's interest in the relationship involved any prospect of profit or risk of loss;
3) whether the worker was properly regarded as part of employer's organization;
4) whether the worker was carrying on business on his own account or carrying on the business of the employer;
5) the provision of equipment;
6) the incidence of tax and National Insurance;
7) the parties' own view of their relationship;
8) the traditional structure of the trade or profession concerned and the arrangement within it."
F) Community for creative non-violence et AL. Vs. REID Supreme Court of the United States reported in 10 U.S.P.Q 2D (BNA) 1985, the issue of ownership of copyright in a sculpture "Third World America" was a pivotal part of this case. For resolving this issue, Hon'ble US Supreme Court construed the " work made for hire" provided in Sections 101 and 201(b) of Copyright Act of 1976 of United States by establishing that " Third World of America" was a work for hire as Reid was independent contractor and Author of it in view of the provisions of section 101(2). of the US Copyright Act. Section 101 of US Copyright Act defines "work made for hire" in two parts (a) a work prepared by an employee within the scope of his or her employment and nine categories for copyright status of non employees (b) a work specially ordered or commissioned for use which are as under.
1) as a contribution to a collective work;
2) a motion picture or other audiovisual work (3) a translation (4) a supplementary work (5) a compilation (6) an instructional text (7) a test (8) answer material for a test (9) an atlas.
It is noted that section 101 of U.S. Copyright law is related to section 17 of Indian Copyright Act and therefore reference of law and judgements U.S. with regard to title of this Article would be helpful to elaborate the provisions of law.
Coming to the second point whether a work in dispute is original work as mentioned in the beginning of this article, Originality of a copyright work is a condition precedent in the case of infringement of the copyright of that particular work. Unless the work in dispute is original, no protection is given to that work under the law of Copyright. Section 13 of the Act enables the protection of a work which is original. It is pertinent to note that no definition of 'original work' is given under the Act. Original does not mean new or invented in copyright sense. As the copyright law protects the expression, the expression must be original.
I restrain myself to discuss more on the 'original work' otherwise the object of the article qua the terms 'contract of service & contract for service may not be fulfilled. If the above mentioned two issues are not satisfied by the plaintiff, the suit of infringement of copyright is barred by law and injunction is not required to be granted in favour of the plaintiff in view of the provisions of Copyright Act and case laws mentioned herein above.
To conclude it would be safe to say that the elements of contract of service and contract for service provided in section section 17 of the Copyright Act, 1957 should be first required to be considered whenever there is issue of 'ownership' of a work is concerned in the legal proceedings.
Chirag Bhatt
IP Lawyer
09824025041
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