Can Section 15 of the Copyright Act, 1957 be applied to an original artistic work of engineering drawing ?

As an IP lawyer, let me write something on a burning issue related to an applicability  Section 15 of the Copyright Act, 1957 ( herein after referred as the Act for short) to an original artistic work of engineering drawing. 

Before I write on this topic and express my views, it is necessary to discuss about  the provisions of section 15 of the Act along with the two other aspects. One is original artistic work and the other is engineering drawing.  No definition of 'original' is given in the entire Act.  Original artistic work is mentioned in Section 13 (1)(a) of the Act wherein copyright subsists. The definition clause of artistic work referred in Section 2 (c) of the Act has depicted a drawing (including a diagram, map, chart or plan) as an artistic work. Thus it is obvious that drawing falls under the provisions of artistic work. Only original work is protected under the provisions of the Act. 

Now the issue involved in this article is the applicability of the Section 15 of the Act qua original artistic work of engineering drawing. Whether an original artistic work of drawing can be restrained under the guise of the provisions of Section 15 if such drawing is used for making article by an industrial process. It is better to quote Section 15 of the Act here for better understanding of the issue.

 "Section 15: Special Provision regarding copyright in designs registered or capable of being registered under the Designs Act 2000:-  (1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act 2000. 

(2) Copyright in any design, which is capable of being registered under the Designs Act 2000, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person."

The interpretation of Section 15(1) is that if any design is registered under the Designs Act, the provisions of Copyright Act are not applicable. Meaning thereby, there is no protection of any design under the Copyright Act which is registered under the Designs Act. Now first the question is what a design is and second question is whether any design is protected under the Copyright Act unless it is registered under the Designs Act. The answer of the first question is that design is defined in Section 2(d) of the Designs Act, 2000 which excludes artistic work. The answer of second question would probably be hidden under the provisions of Section 15(2) of the Copyright Act. 

The interpretation of Section 15(2) is as under: 

Let me interpret it in literary manner.

(A) Copyright in any Design: 

First of all please be clarified that it is copyright in design and  not copyright in copyright or under the provisions of Copyright Act.  To discuss Copyright is design, it is required to invoke Section 2(c) read with Section 11 of the Designs Act, 2000. Section 2 (c) is the definition clause of 'copyright' which means " the exclusive right to apply a design to any article in any class in which the design is registered."  Now Section 11 is related to Copyright on registration:- "(1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of the Designs Act, have copyright in the design during ten years from the date of registration." (2) subsection 2 is related to the extension of period of five years from the expiration of the original period of ten years. 

Thus, in view of section 2(c) read with section 11 of the Designs Act, 2000,  it is clarified that the first wordings of section 15(2) are with regard to copyright in design and not they are not related to copyright of any work which fall under the provisions of Copyright Act. 

(B) which is capable of being registered under the Designs Act 2000: 

Here copyright in design is capable of being registered under the Designs Act 2000. It means that design which is capable of being registered under the Designs Act, 2000. The terms 'capable of being registered' plays an important role for its interpretation. To interpret this term, Section 2 (a) i.e. definition of 'article'; section 2(d) i.e. definition of 'design'; section 2 (g) i.e. definition of 'original' and provisions of section 4 of the Designs Act, 2000 are required to be discussed. The terms 'capable of being registered' falls within these provisions. In other words, the design must be within the ambit of the definition of design as per section 2(d). It must be for an article which falls under the definition of section 2(a) and such design must be original as per section 2(g). Moreover, such design must not be within the provisions of section 4 of the Designs Act, 2000.  if all these tests are passed out successfully, such design is called " capable of being registered under the Designs Act, 2000.

(C) but which has not been so registered:

Section 15(2) is also applied to the design which is capable enough to be registered but it has not been registered under the Designs Act.

(D) shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person:

This is very interesting point which says that copyright in design does not have any effect if the owner of the copyright or by any other person with licence, has reproduced an article, to which such design has been applied,  for than fifty times by an industrial process.  To elaborate this terms, let me discuss it with the provisions of section 15(1) which says that once a design is registered under Designs Act, there is no protection available to that design under the Copyright Act. Now the terms 'copyright in design' is essential to consider that whether section 15(2) talks about copyright in design which is related to the provisions of the Designs Act or it talks about the provisions of Copyright Act.

Four Points of Section 15(2) which establishes that this section is in respect of Designs Act and Not Copyright Act.

( One) the design which is capable of being registered under the Designs Act ;
 (Two ) however, being capable, the same is not registered;
(Third ) if the design of an article is applied for registration.
(Four) if such article is reproduced more than fifty times by industrial process.

 In my opinion,  section 15(2) talks about prohibition of registration under Designs Act and not Copyright Act. The reasons are as under.

1)That  it is copyright in design and not copyright which falls under copyright Act.
2)That  there is talk about an article which directly falls under Designs Act.
3) That if there is no registered design of an article, the design is applied to that article for registration but not registered yet and
4)That if such article has been reproduced more than fifty time by industrial process by an owner or licencee. then there would be no copyright in design.
5) Section 15(2) is read separately.
6)That  it is special provision regarding copyright in designs.
7) That the reason behind incorporating it under the Copyright Act is to avoid confusion in respect of registration and protection of an article which is made by industrial process under the Copyright Act.
8) That the intention of Legislature is very clear that an article which is capable enough to be made and sold separately, can be registered under the Designs Act, and it can not be registered under the Copyright Act.
9) That Section 13 of the Copyright Act provides that work in which copyright subsists which does not speak about design or article.
10) That Section 14 of the Copyright Act provides the meaning of the copyright which is silent about design or article.
11) That the definition of 'work' provided in Section 2(y) of the Copyright Act which does not include article.
12) That the definition of 'Design' provided in Section 2(d) of the Designs Act, 2000 includes shape,configuration, pattern, ornament or composition of lines or colours applied to any article in two or three dimensional by any industrial process by means of chemical, mechanical or manual or separate or combined and the said article is finished article and appeal to and is judged solely by the eye and it excludes any artistic work as defined in Section 2(c) of the Copyright Act, 1957.

Thus, considering the above mentioned legal scenario, in my opinion, Section 15(2) of the Copyright Act has nothing to do with the provisions of Copyright Act but is only related to Designs Act, 2000.

Now coming back to the issue of this article that Section 15 of the Copyright Act can be applied to an original artistic work of engineering drawing, my answer is 'NO'.  The reasons for my views are as under.

1) That the drawing of an article is not part and parcel of the Design of the article as per the definition of the Design provided in Section 2 (d) of the Designs Act, 2000.

2) That the drawing is within the definition of Section 2(c) of the Copyright Act which is already excluded from the definition of design under Section 2(d) of the Designs Act, 2000.

3) That the drawing can not be considered as 'article' as per the definition of an article given in Section 2(a) of the Designs Act, 2000.

4) That original drawing may be made by hand or with the use of software in computer.

5) That original drawing can not be made by industrial process as any article is made with the use of chemical or mechanical or any process.

6) That the original drawing falls within the ambit of the definition of artistic work and an artistic work can be considered as 'work' as per the definition of Section 2(y) of the Copyright Act.

7) That Section 15 of the Copyright Act speaks about copyright in design as discussed herein above.

8) if original drawing is not protected under the copyright Act, the entire purpose of making drawing is infructuous and that is why Legislature has considered 'drawing'  an artistic work under the Copyright Act and not under the Design Act as the life of the design is only 15 years (10 + 5 ).  That is why article made from any drawing is protected under the Designs Act and not under the Copyright Act.

9) That original drawing, being artistic work, is protected till the life time of the author and plus 60 years after the death of author.

10) That the definition of 'Original' provided in Section 2 (g) of the Designs Act, 2000 is in respect of a design and design can not be considered as drawing. Moreover the definition of 'Design' excludes artistic work which includes 'drawing' as discussed herein above.

11) That the original 'drawing' can not be considered as the finished article which is appeal to and judged by solely by the eye.

12) That the word 'copyright' used in Section 15(2) of the Copyright Act ought to be read in context of Section 2(c) of the Designs Act, 2000. Section 2(c) is the definition of 'copyright' which means the exclusive right to apply a design to any article in any class in which the design is registered.

13) That Section 14(c) (i) of the Copyright Act is not applicable as it is related to reproduction of an artistic work in three dimensions of a two dimensional work or in two dimensions of a three dimensional work, however, in Section 2(d) of the Designs Act talks about an article whether in two or three dimensional or in both forms and artistic work is excluded from Section 2(d) and therefore, Section 14(c)(i) can not be with regards to Section 15(2) of the Copyright Act. However, in  the judgement dated 27/7/2017 of Hon'ble Delhi High Court in case of Holland Company LP and Anr Vs. S.P. Industries (CS (Comm) 1419 of 2016 wherein the plaintiffs have claimed to be the owners of industrial drawings of Automatic Twist Lock (ATL) system for securing cargo containers. The plaintiff no. 1 invented that product and is a patent holder and copyright owner. The defendant, being aware of the copyright of the plaintiff in drawings,  has copied the drawings of the plaintiff from one publication/technical pamphlet which is easily available as the defendant is in the same field. In paragraph no. 22 of this judgement, Hon'ble Delhi High Court is of the view that, "A conjoint reading of Section 2 (d) of Designs Act, 2000, Section 14(c) and 15(2) of the Copyright Act, 1957, makes it amply clear that where a design of an article is prepared for the industrial production of an article, it is a design and registrable under Designs Act and under Section 14(c), the author of such design can claim copyright, however, since such a design is registrable under the Designs Act, and if such design has been used for production of articles by an industrial process for more than 50 times by the owner of the copyright, or, by any other person with his permission, then such person ceases to have copyright in such design." Hon'ble Court has considered industrial drawings as designs because  and therefore, an injunction application is rejected. 

In the landmark judgement of Hon'ble Delhi High Court (DB) in the case of Mircrofibers Inc vs. Girdhar and Co. & Anr. in the year 2009, Hon'ble DB has discussed the issue related to section 15 of the Copyright Act in detail from paragraph no. 20 on wards. In that case the design of appellate  was registered in U.K. as per paragraph no. 31 of the judgement and he sought protection under the Copyright Act in India. Hon'ble DB did not allow the appellant to claim the protection under the guise of the provisions of Copyright Act in respect of the artistic work which was industrially produced. Having read this judgment, with due respect, several questions are raised in my mind .

(1) Whether industrial drawing can be called pure artistic work per se ?
(2) Why has Legislature incorporated 'drawing' as an artistic work under Section 2(c) of the Copyright Act , 1957 ?
(3) Why has 'drawing' not been incorporated under the definition of Design in Section 2(d) of the Designs Act, 2000 ?
(4) Whether the term 'copyright' incorporated in Section 15(2) of the Copyright Act is in context with the provisions of Copyright Act or Designs Act ?
(5) Whether drawing of an article can be part of registration of Design of that article under Section 6 of the Designs Act, 2000 ?
(6) Whether Section 2 (c) of the Copyright Act has diversified original artistic work such as painting against drawing in respect of protection under the Copyright Act ?
(7) Whether 'drawing' can be considered as original artistic work OR applied artistic work ?
(8)Whether the intention of Legislature for 'drawing' as an artistic work used for industry is different than other artistic work mentioned in Section 2(c) of the Copyright Act ?
(9) If original painting is protected under Copyright Act, then original drawing of that painting used for industrial purpose can not be protected under Copyright Act  instead of being protected under Design Act ?
10) Whether Hon'ble DB delivered this judgement on the basis of theory of Plato, a great Greek Philosopher  ?

Let me discuss the various case laws in respect of the issue involved in this article. 

In a case between Ritika Private Ltd. vs. Biba Apparels Pvt Ldt. (CS (OS) No. 182/2011)  Hon'ble Delhi High Court single bench on 23rd March,2016 expressed its view by quoting  the paragraph nos. 20 to 33 and 33 to 46 of Microfiber's case (DB) as it is binding upon single bench and dismissed the suit rejecting the plea of infringement of copyright in sketches, drawings, designs etc.of plaintiff.

In the case of Photoquip India Limited vs. Delhi photo store & Anr reported in 2014(60)PTC 563 (Bom), Hon'ble Bombay High Court in paragraph no. 25 of the judgement replying upon the judgement of Bombay High Court in a case of Indiana Gratings Pvt. Ltd. & And vs. Anand Udyog Fabricators & Ors. reported in 2009 (39) PTC 609 (BOM), expressed the views that " As in Indiana Gratings, the present plaintiff's drawings are skilled diagrams that do not reflect any finished product, let alone a finished product of any 'visual' or aesthetic appeal. They only serve a functional purpose. They are not, therefore, designs. The plaintiff claims no copyright in the elinchrom FRX 200/ elinchrom FRX 400 flash lights themselves. It claims copyright in drawings, not in articles. The drawings are artistic works, capable of copyright protection. The articles- the flashlights themselves are not. ...."  Considering the scope of the definition of 'design' in respect of drawings, in paragraph no. 27 , Hon'ble Bombay High Court was of the  opinion that " The very definition of 'design' tells us this : A design is and is only, the "features of shape, configuration, pattern, ornament ........Are the drawings or moulds "applied" to the finished products ? Are they " features of shape, configuration, pattern, ornament or composition of lines or colours ? The "features of shape, configuration, pattern, ornament or composition are aspects of the objects themselves. There is no copyright in the approximately rectangular shape of flash lights, or the manner in which they are configured.  There is a Copyright in the initial mechanical or geometric drawings. A design slso does not include any mode or principle of construction and if the drawings describe this mode or this principle , they are by definition, not designs and not capable of registration as designs. The fact it is impossible for the Defendants to reproduce the articles without reverse engineering them and preparing illicit drawings does not put the Plaintiff's drawings outside the protection of the Copyright Act. " Injunction is granted in favour of the plaintiff in this case.

In the Case of John Richard Brady and Others vs. Chemical Process Equipments P. Ltd. and Another reported in PTC (Suppl) (1) 263 (Del) in the year 1987, as per paragraph no. 37 of the judgement,  "no opinion was finally expressed by  Hon'ble High Court in respect of infringement of copyright claimed by the plaintiffs in drawings of Brady by the production of the Machine in question by the defendants, however, defendants were restrained in view of the prima facie case made out for infringement of their copyright, and  of strict confidentiality under the specifications, drawing and other technical information about the FPU were supplied to the defendants. "

Now let me discuss the judgement of House of Lords  with regard to the issue involved in this article. 

In the case of L.B. (Plastics) Limited v. Swish Products Limited reported in [1979] R.P.C. 551,  the plaintiffs, being designers and manufacturers, were the owners of a plastic knock-down drawer system known as the Sheerglide  in the field of plastic furniture. The defendants produced a design under the name Swish design. The plaintiffs filed a suit for infringement of artistic work of the drawings. The trial judge held that there was an infringement made by the defendants rejecting the contention of the defendants that the plaintiffs' drawings were not original, nor were they artistic as per the provisions of the Copyright Act 1956. The defendants filed an Appeal which was in favour of the defendants, hence, plaintiffs filed an appeal to the House of Lords. Appeal was allowed by the House of Lords. 
In this case the defendants took the defence of Section 9(8) of the U.K. Copyright Act 1956. This section says that "The making of an object of any description which is in three dimensions shall not be taken to infringe the copyright in an artistic work in two dimensions, if the object would not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work."  The heading of Section 9 is :General exceptions from protection of artistic works. Further, on page no. 619 of the judgement, Hon'ble House of Lords was of the view, " there is a striking similarity between the respondents' drawer and those of the appellants. Moreover, it is clear and was held by the judge that the respondents had the opportunity to copy the appellants' drawer. They had specimen of the appellants' components in their possession......these facts establish a prima facie case of copying which the respondents had to answer. ..." on the base of evidences, the trial court has made clear findings and the court of Appeal ignored the evidence of the witnesses. Further, on page no. 631 of the judgement, the House of Lords was of the opinion that " the drawing was a team effort by the whole of the appellants' drafting and design body and all information embodied in the drawing can, if a substantial part of the drawing be reproduced in a three- dimensional form, be considered for the purpose of deciding whether the three- dimensional form is an infringement..." 

In other landmark judgement of Hon'ble House of Lords in King Features Syndicate Inc. vs. O. & M. Kleeman Ltd reported in [1941] A.C. 417; the issue involved in this judgement was regarding the infringement of copyright in original drawings. The plaintiffs were the owners the copyright in original drawings of a well known cartoon character "Popeye the Sailor". The defendants imitated and marketed  dolls and brooches without having any licence from the plaintiff and thereby reproduction them. It was held that a copy of an  object having three dimensions from another three dimensional object by reproducing a drawing is an amount to an infringement of copyright of artistic work of the drawing. In this case the defence of Section 22 (1) of the U.K. earlier Copyright Acts 1911 was not considered. Section 22(1) of the U.K. Copyright Act is related to Section 15(2) of the Indian Copyright Act, 1957. It was held that " the question of the applicability of Section 22 to exclude copyright protection from a design capable of registration under the Act of 1907 must be decided once for all ascertaining whether the author originally intended the design to be used as a model or pattern to be multiplied by an industrial process. If he did not, then the copyright protection once attaching could not be destroyed by subsequent use of the design, even with the consent of the copyright owner, as a model for industrial reproduction."

In the case of Armstrong Patents Company Limited and others (Appellants) vs. British Leyland Motor Corporation Limited and others (Respondents)  reported in [1986] RPC 279, the issue in respect of protection of engineering drawing as an artistic work under Copyright Act was discussed wherein it was held by House of Lords of U.K. that  engineering drawing was not entitled to be protected an an artistic work under copyright Act and thereby differed the view expressed in the judgement of  L.B. (Plastics ) Ltd mentioned herein above. In this case the respondents BL motor claimed copyrights in the exhaust pipe which was a part of Car. By allowing the Appeal, Hon'ble House of Lords was of the view that "........... Section 10 of the Copyright Act 1956 if the design was registered under the Registered Designs Act 1949 or used industrially, it would not be an infringement of the copyright in the drawing to do anything which was within the scope of the design copyright........To provide a remedy Parliament, by the Design Copyright Act, 1968, repealed much of Section 10 and in effect provided that copyright and design copyright could coexist but that in such circumstances copyright protection should be reduced to that same period of 15 years as design copyright protection. But purely functional objects were not affected by the Act of 1968, they remained excluded from the protection of design copyright. It was further observed that " whenever Parliament grants a right in the nature of a monopoly and copyright is such a right in the nature of a monopoly, and copyright is such a right, it inevitably interferes in some respects with the freedoms of the public that would exist apart from the monopoly.........Sirdar Rubber Company Ltd vs. Wellington Weston & Co (1907) 24 R.P.C. 539, 543 where Lord Halsbury said: "The principle is quite clear although its application is sometimes difficult; you may prolong the life of a licensed article but you must not make a new one under the cover of repair" 

Considering various decisions on the issue involved in this article, it reveals that there are mixed opinions of various authorities, however, it is true that having been granted patent or registration under Design Act, nobody can create life time monopoly under the guise of Copyright Act as the period of patent is 20 years and 15 years is for Design then under the guise of copyright lifetime plus 60 years monopoly for the same drawings is against the public policy as the protection of law should not be against the interest of public. 

The issue involved in this article is the same issue in a case which is pending before Hon'ble Supreme Court. The said issue would be resolved after the judgement of Hon'ble Supreme Court.

Chirag Bhatt
IP Lawyer
09824025041

Contract of service & Contract for service in respect of infringement of copyright

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

Tug of Trade mark War and Courts of law in respect of Permitted User

As an IP Lawyer, I become a witness of many IP battles in the battlefield i.e. court of law. One of the battles is in respect of permitted user of the trade mark. Let me discuss it by way of writing this blog. The issue of this article is whether a permitted user  of a trade mark can file a suit for infringement action or passing off action  or can that permitted user be sued for infringement of a trade mark ? Let me divide this one issue in two parts for better discussion and understanding. 

1) Whether a permitted user  of a trade mark can file a suit for infringement action.

2)Whether a permitted user of a trade mark can file a suit for passing off action.

3) Whether a permitted user of a trade mark can be sued by another registered proprietor of a trade mark. 

Before I discuss the above mentioned issues herein below, it is necessary to know who can be a user of trade mark. First of all it is required to be discussed that who is user of trade mark. The user of the trade mark, in general terms, means a person who uses the trade mark for the purpose of his trade, business or service.  In trade mark law, there is no particular definition is given for 'user' of a trade mark, however, in legal sense, there are three persons who can be called 'user' of  trade mark.

 (1) a registered proprietor of a trade mark 
(2) a registered user of a trade mark and
(3) a permitted user of a trade mark. 

A registered proprietor is defined under section 2 (1)(v) of the Trade marks Act, 1999(the Act for short) whereas section 2 (1) (x) read with section 49 of the Act says about registered user and  section 2(1)(r) of the Act talks about permitted user. 

As the issue of this article revolves round 'permitted user',let me discuss the above mentioned issues one by one with the help of provisions of trade marks law and judicial pronouncements.

1) Whether a permitted user  of a trade mark can file a suit for infringement action.

First of all it is an essential point to know that who a  permitted user is. The information about who a permitted user is given in the form of 'permitted use' under Section 2(1)(r) of the Act which is as under.
(r) "permitted use", in relation to a registered trade mark, means the use of trade mark-

(i) by a registered user of the trade mark in relation to goods or services-

(a) with which he is connected in the course of trade; and

(b) in respect of which the trade mark remains registered for the time being; and

(c) for which he is registered as registered user; and

(d) which complies with any conditions or limitations to which the registration of registered user is subject; or

(ii) by a person other than the registered proprietor and registered user in relation to goods or services-

(a) with which he is connected in the course of trade; and

(b) in respect of which the trade mark remains registered for the time being; and

(c) by consent of such registered proprietor in a written agreement; and

(d) which complies with any conditions or limitations to which such user is subject and to which the registration of the trade mark is subject.

As per the above mentioned definition, it is clear that a person, who is given permission to use a  registered trade mark  in relation to goods or services in the course of trade, is a permitted user. Section 2(1)(r) is referred to a registered user and a person other than the registered proprietor and registered user. 

Coming back to the issue no. 1  whether a permitted user of a trade mark can file a suit for infringement action, the Section 53 of the Act itself is the answer of this issue which says that a person referred to in sub clause (ii) of clause (r) of subsection (1) of Section 2 shall have no right to institute any proceeding for any infringement.  Thus it is clear that the permitted user can not file a suit for infringement action.  In support of my view based on section 53 of the Act, I rely upon the judgement of Division Bench of Delhi High Court on 4th January, 2017 in the case of P.K. Sen vs. Exxon Mobile Corporation and Anr ; setting aside the Order passing by the single bench; Hon'ble DB of Delhi High Court in paragraph no. 16 of the judgement held that "Section 53 is clear departure from Section 52 of the Act which stipulates that a person referred to in Section 2(1)(r)(ii) shall have no right to institute any proceeding for any infringement. The person referred in Section 2(1)(r)(ii) is a person other than the registered proprietor and registered user and would obviously include a 'permitted user'. In other words, the only persons who can bring a suit for infringement of a trade mark would be registered proprietor himself or the registered user and certainly not permitted user. Therefore, in view of the Court, submission made by the learned counsel for the appellant that the suit could not have been instituted by the respondent No.2/plaintiff no. 2 is correct."

2)Whether a permitted user of a trade mark can file a suit for passing off action.

With reference to this point, the Act is silent about instituting a suit for passing off action by a permitted user. When a person has a title of a property, he is entitled to give his property to be used by other person  as a permitted user. The passing off action is not a statutory remedy. It is a common law remedy, however, to institute a suit for any remedy whether infringement or passing off, title of the property must be acquired by the plaintiff. In other words, the person who institutes a suit must be owner of the trade mark. Permitted user is neither a registered proprietor nor a registered user. He is not an owner or proprietor of the property i.e. trade mark. A person is only entitled to file a suit when he has title and therefore, permitted user can not file a suit for passing off action. 

For instance, Mr. A is the proprietor or owner of the trade mark. Mr. B is a permitted user or a licencee of the trade mark of Mr. A. Mr. C is infringing the rights of Mr. A by using that trade mark in trade or business or service without licence or permission of Mr. A. 
Here in this case Mr. A is entitled to file a legal action against Mr. C as Mr. A is having a title i.e. ownership of that trade mark. Mr. B is not entitled to take any action against Mr. C as Mr. B does not have a title i.e. he is not an owner of that trade mark. 

3) Whether a permitted user of a trade mark can be sued by another registered proprietor of a trade mark. 

With reference to this point, it is important to quote here the judgement of Hon'ble Supreme Court in a case M/s Gujarat Bottling Co. Ltd & Ors vs The Coca Cola Co. & Ors reported in 1995 AIR 2372, 1995 SCC(5) 545 wherein it was observed that it is permissible for the registered proprietor of a trade mark to permit a person to use his registered trade mark. Such licensing of trade mark is governed by common law and is permissible provided (i) the licensing does not result in causing confusion or deception among the public; (ii)it does not destroy the distinctiveness of the trade mark, that is to say, the trade mark, before the public eye,continues to distinguish the goods connected with others; and (iii) a connection in the course of trade consistent with the definition of trade mark continues to exist between the goods and the proprietor of the mark. [see : P. Narayanan = Law of Trade Marks and passing-Off, 4th Ed., para 20.16,p.335]. It would thus appear that use of a registered trade mark can be permitted to a registered user in accordance with provisions of the Act and for that purpose the registered proprietor has to enter into an agreement with the proposed registered user. The use of the trade mark can also be permitted dehors the provisions of the Act by grant of licence by the registered proprietor to the proposed user. Such a licence is governed by common law. 

In the above referred judgement it is observed by Hon'ble Supreme Court that the use of the trade mark by licencee of a registered proprietor can be made possible subject to the conditions that such licensing does not result in causing confusion or deception among the public. Now the question is when such licensing creates confusion or deception among people in respect of the trade mark of the third party, whether that third party can restrain that licencee from using that trade mark, the answer is in affirmative. The reason is agreement of licence between the licencor and licensee does not prevail over the statute irrespective of that fact that licensing falls under common law and such licensing is against the public interest. It is required to be noted that the concept of the trade mark since ages is to an indicator of exclusivity in trade under that mark and a licensee can be granted a limited right to use.  Use of a trade mark of third party is against the business ethics and dishonesty is reflected in the behaviour of the user of such trade mark. I would like to quote the landmark judgement of Hon'ble Supreme in case of Laxmikant V. Patel vs. Chetanbhai Shah and Another reported in (2002) 3 SCC 65 in support of my views in respect of business ethics. In paragraph no. 10 of this judgement Hon'ble Supreme Court is of the view that ......."the law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are and ought to be the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which is already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."

Thus it is very clear that a licencee/ permitted user is using a trade mark under the licensing agreement and if that trade mark is in conflict with that of the third party, that third party who is an owner of the trade mark, is entitled to restrain the licencee of the trade mark whose use creates confusion and deception among people. Moreover, the very object of the trade mark Act is to establish the bridge between the goods and the source thereof. 
Chirag Bhatt
Partner- Litigation, Y.J.Trivedi &Co.

Classical Trinity - passing off action

As an IP lawyer I believe that awareness  must be spread in respect of intellectual  property  laws.  This article  is a part of knowledge  sharing  activity  with regard to passing  off action.

In my career as an IP lawyer, I have observed that a plaintiff is advised to  institute a suit for passing off action either separately  or a composite  suit wherein prayer for passing off action is normally  asked by the plaintiff along with other prayers.

Let me clarify that this article is based on the basic requirements to be established  by  the plaintiff even at interlocutory  stage for getting temporary injunction. Unless plaintiff fails to establish  the basic necessity,  injunction  can not be granted in favour  of plaintiff for passing off action. Such requirements  are called elements of passing off. In other words these elements of passing off are known as 'classical trinity'. It is the main point of  this article.

It is pertaining to note that passing off action belongs to common law remedies. It is not statutory  remedy, however, section 27(2) of the Trademarks Act, 1999 speaks about passing off action. Now the question  is what the common law remedy is. The common law remedy is based on ancient English laws established  by courts and customs of England. England is the mother of all laws.   The English judges established  the principle of  classical trinity i.e. ingredients  of passing  off action. This classical trinity was discussed in a case of Oertil v. Bowman reported in (1957) RPC 388. The English court explained  the classical trinity ( three elements) namely (1) goodwill established  by plaintiff (2) misrepresentation  made by defendant and (3) consequent Damage in suit for passing off action.  In another  case of Consorzio del Proscuitto vs. Marks & Spencer Plc. (1991) RPC 351 at 368, the English court reiterated the principle of classical trinity. In Reckitt & Coleman Products Ltd v. Borden Inc (No. 3) (1990) 1 WLR 491 at page 499, the classical trinity was discussed in respect of passinf off action , " The law of passing off can be summarized in one short general proposition - no man may pass off his goods as that of another. More specifically , it may be expressed  in terms of elements which the plaintiff in such an action has to prove in order to succeed. Three are three in numbers. First , he must establish a goodwill or reputation  attached to the goods or services which he supplies in the mind of purchasing  public by association with the identifying 'get up' ( whether it consists simply of a brand name or a trade description or individual  features  of labelling or packging) under which his particular  goods or services  are offered to the public. Such that the get up is recognised  by the public  as distinctive  specifically of the plaintiff's goods or services. Second,  misrepresentation was discussed. Misrepresentation made by the defendant to the public ( whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the  plaintiff's  identity as the manufacturer  or supplier of goods or services  is immaterial,  as long as they are identified with a particular source which is in fact the plaintiff. Third, the plaintiff  must demonstrate that he suffers or in a quia timet action,  that he is likely to suffer damage by reason of the erroneous  belief engendered by the defendant's misrepresentation that the source of  the  defendant's  goods or services  is the same as the source of those offered by the plaintiff." The classical trinity is reiterated  by English court in case of Property Renaissance Ltd ( T/A Titanic Spa) vs. Stanley  Dock Hotel Ltd ( T/A Titanic Hotel Liverpool ) reported  in (2017) R.P.C. 12 Para 128 page 485 to discuss  the issue of  passing  off.

Hon'ble Supreme  Court of India has emphasized on the principle of  classical trinity in the well known case of Laxmikant V. Patel vs. Chetanbhai Shah and other reported in AIR 2002 SC 275 , last two lines of paragraph  no.12.  The said principle is also reiterated  by Hon'ble Bombay High Court in the latest judgement of Torrent Pharmaceuticals  Ltd vs. Wockhardt Limited reported in 2017 (70) PTC 215  Paragraph  44. Hon'ble Justice Patel discussed and justified  the issue of passing off action in view  of the classical trinity.

In my view a plaintiff must consider  that whether his case is within the purview  of the well  established  principle  of classical  trinity or not before filing of a suit for passing off action. Whether he is able to establish  the case of passing  off even at prima facie stage to restrain the defendant in view of the ingredients  of passing off i.e. 'classical trinity' as this trinity is the heart of passing  off action.

Chirag Bhatt

Advocate 

CBhatt Law Office 

Gandhinagar 

09824025041

Can a suit for groundless threat be transferred to High Court under Designs Act ?

As an IP lawyer I have come across an issue pertaining to transfer of a suit of groundless thereat under section 23 of the Designs Act, 2000 from District Court to High Court which stimulates me to write this blog. The question is whether a suit for groundless threat under Designs Act, 2000 can be transferred from District Court to High Court if the defendant institutes a counterclaim wherein he asks for infringement of his registered Design and challenges the validity of the design of the plaintiff.. This is the only issue in this article. Let me discuss it in detail. 

Let me travel from various provisions of Intellectual property laws with regard to groundless threat to reach the destination. In Trade marks Act, 1999 there is provision of groundless threat of legal proceedings under section 142 of the Act, however, there is no such provision of transferring  suit from District Court to High Court as are in Designs Act and Patent Act. In Copyright Act,1957 section 60 provides information about the remedy in the case of groundless threat of legal proceedings. In The Geographical Indications of Goods (Registration and Protection) Act,1999, the issue of groundless threat is involved under section 73 of the Act. In these three Acts, the suit of groundless threat becomes infructuous  if a suit for infringement action is filed against the person who has filed a suit for groundless threat. The legal scenario in respect of the provisions of groundless threat is different in the Designs Act and Patent Act than that of the above mentioned three Acts. Let  it be discussed as under.

 Before I discuss about the provisions  related to groundless threats ,  is is essential to talk about the legal positions of the suit related to infringement of design and patent under Designs Act and Patent Act respectively. Section 22 of the Designs Act says that the registered proprietor of the Design is entitled to take a legal action against a person who is infringing the registered design for the purpose of sale by making any fraudulent or obvious imitation of the said registered design without taking any licence or written consent of the registered proprietor by instituting  a suit for damage and injunction against the person  in the District Court. In such a suit, if the defendant takes the defence that the registration of a design may be cancelled under section 19, the suit or other such other proceeding shall be transferred by the District Court to the High Court for decision. In the Patent Act,1970 according to the proviso  of section 104 where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter-claim, shall be transferred to the High Court for decision.

Now coming back to the main point, Section 23 of Designs Act, 2000 speaks about the groundless thereat wherein it is provided that the corresponding provisions of the Patent Act will apply in a case of groundless thereat of the registered design.. It means that section 106 (power of court to grant relief in cases of groundless threats of infringement proceedings)  of the Patent Act 1970 would apply as it is in the case of groundless threat of Design. Thus it is obvious picture that section 106 of the Patent Act in the case of groundless threats of legal proceedings of registered designs would be applicable in like manner as they apply in the case of patents.

 Now plain reading of section 106 of the Patent Act inspires me to read the provisions of section 104 of the Patent Act for the issue whether the suit of  groundless threat would be transferred to the High Court or not in a like manner as the suit of infringement of design or patent is transferred when the defence of section 19 of the Designs Act or a counter claim for revocation under section 64 of the patent Act  is taken as the case may be.The reason behind reading section 104 is that it is connected with S.106. First part of Section 104 is for jurisdiction. There are three points covered in section 104.

(1) suit for declaration as to non- infringement under section 105 .
(2) suit for relief in cases of groundless threats  under section 106
(3) suit for infringement of patent

  Here for this article only point no. 2  is related as section 104 states that the suit for any relief under section 106 shall be instituted in District Court. Now the proviso of section 104 is very important which  states that if a counter-claim  for revocation of the patent is made by the defendant, the suit along with counter-claim shall be transferred to High Court for decision. Here the legislature is of the view that counter claim for revocation of the patent, shall be made against either of a suit of the above mentioned three points and not for any specific point otherwise that specific point would have been mentioned in the provision. For example, if counterclaim had been made only for infringement of patent, it would have been specifically mentioned in the section and therefore, the issue of applicability of counterclaim in proviso of Section 104 of the Patent Act  is with  either of  the three points mentioned herein above.
(It is hereby specified that that the provisions of counter claim are mentioned in Order 8 Rule 6-A of Code of Civil Procedure, 1908)

 Suppose a defendant of the case of groundless threat under S.106, institutes a counter-claim for revocation of the patent of the plaintiff, then the suit along with the counter-claim is transferred to the High Court for decision.  Moreover, as per the provisions of the sub-section 2 of  Section 106, the defendant of the suit for groundless threat has to prove that the plaintiff of that suit is infringing the patent.  On the other hand,  to establish the case of groundless threat, the onus is on the plaintiff  to show that the patent of the defendant,  is not valid to establish the case of groundless threat. Under such circumstances, can a defendant of the suit for groundless threat of patent institute a counterclaim of infringing the patent  ? , the answer is "YES' as per the provisions of section 104 read with section 106 of the Patent Act, 1970. It is stated that the suit for groundless threat is transferred to High Court from District Court in view of the counter claim being made by the defendant for infringement of patent.

Coming back to the main issue of the counterclaim in suit for groundless threat under section 23 of the  Designs Act 2000, it is said that the provisions of the Patent Act, 1970 are applied in respect of following points.

(1) certificates of the validity of a patent
(2) the remedy in case of groundless threats of legal proceedings by a patentee

Thus, for application of section 23 of the Designs Act in like manner of the provisions of the Patent Act , it is required to be considered in the manner mentioned as under.

(1) certificates of the registered design
(2) the remedy in the case of groundless threats of legal proceedings
(3) a proprietor of a design is in place of patentee
(4) a registered design is in place of patent
(5) a design is in place of invention


  Considering the above mentioned legal scenario in respect of a transfer of a suit for groundless threat under Designs Act, 2000,  I conclude with my opinion that  the above mentioned rule is applied to the suit for groundless threat of Design under Designs Act, 2000  in view of the provisions of section 106 read with section 104 of the Patent Act, 1970 which is related to section 23 of the Designs Act, 2000. Section 23 of the Designs Act,2000 is relied upon section 106 of the Patent Act 1970. If a counterclaim is instituted against the suit for  the groundless threat of patent , the suit along with counterclaim is transferred to High Court for decision as per section 104 of the Patent Act, then likewise, if a counterclaim is instituted against the suit for the groundless threat of Design, the said suit along with counterclaim is transferred to High Court as section 23 of the Designs Act is based on section 106 of the Patent Act and the heart of section 106 for transferring suit is section 104 of the Patent Act and therefore, in my opinion, the suit for groundless threat for Design under section 23 of the Designs Act is required to be transferred from District Court to High Court provided that the counter claim of infringement of registered Design is instituted against that suit for groundless threat.

Chirag Bhatt
IP Lawyer
09824025041 
                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                        

Personal liberty of under trial prisoner vs. Interest of society & fair trial

As a lawyer, let me share something regarding personal liberty  of under trial accused  vs. public interest and fair trial in respect of bail in this article.

Personal liberty is undoubtedly a right of a person since his birth. It is established principle of law that personal liberty of under trial prisoner is a fundamental right under Article 21 of continuation of India.  However, the question  is that whether  this principle  is applicable  in respect of bail for non bailable offences , more particularly, in sessions  triable cases where to grant bail is purely  discretion of court and in the case where the accused threatens the witnesses and /or  the complainant of the case  for which  the accused has asked for bail. Here there are two aspects: one is discretion of Sessions Judge and other is threatens given by the accused to the person/s related to the prosecution case. Now, right to liberty is played a vital role when an under trial prisoner is jail due to prolonged delayed in prosecuting the case from prosecution side. It is a relevant point to be considered to enlarge the under trial prisoner on bail under the circumstances where prosecution is dragging the case due to any reason. The Court should, on the basis of the principle of personal liberty, enlarge the bail to the accused in such type of cases.
Now the question is whether the principle of personal liberty of under trial prisoner can be applicable for bail when the prisoner/ accused threatens the persons of prosecutions case and tries his best to hurdle the fair trial of the case by tampering with evidence of the prosecution case and where such personal liberty becomes harmful to the society at large ?  In another words whether fair trial is to be protected or personal liberty of such accused is protected is the pivotal issue in this article.   Let's me discuss this issue with relevant judgments.
In the case of Talab Haji Hussain vs. Madhukar Purshottam Mondkar reported in AIR 1958 SC 376 , the issue to be decided before Hon'ble Supreme Court was that  whether, in the case of a person accused of a bailable offence where bail has been granted to him under section 496 of the Code of Criminal Procedure, it can be cancelled in a proper case by the High Court in exercise of its inherent power under section 561A of the Code of Criminal Procedure? While adjudicating this issue, Hon'ble SC emphasizes on two material aspects of criminal trial. One is fair trial and the other is inherent power of the High Court while granting bail in non bailable or bailable offence by observing that " if a fair trial is the main objective of the criminal procedure, any threat to the continuance of a fair trial must be immediately arrested and the smooth progress of a fair trial must be ensured; and this can be done, if necessary, by the exercise of inherent power." The SC also observed that "... the primary object of criminal procedure is to ensure a fair trial of accused persons. Every criminal trial begins with the presumption of innocence in favour of the accused ; and provisions of the Code are so framed that a criminal trial should begin with and be throughout governed by this essential presumption ; but a fair trial has naturally two objects in view; it must be fair to the accused and must also be fair to the prosecution. The test of fairness in a criminal trial must be judged from this dual point of view. It is therefore of the utmost importance that, in a criminal trial, witnesses should be able to give evidence without any inducement or threat either from the prosecution or the defence. A criminal trial must never be so conducted by the prosecution as would lead to the conviction of an innocent person; similarly the progress of a criminal trial must not be obstructed by the accused so as to lead to the acquittal of a really guilty offender. The acquittal of the innocent and the conviction of the guilty are the objects of a criminal trial and so there can be no possible doubt that, if any conduct on the part of an accused person is likely to obstruct a fair trial, there is occasion for the exercise of the inherent power of the High Courts to secure the ends of justice. There can be no more important requirement of the ends of justice than the uninterrupted progress of a fair trial; and it is for the continuance of such a fair trial that the inherent powers of the High Courts are sought to be invoked by the prosecution in cases where it is alleged that accused persons, either by suborning or intimidating witnesses, are obstructing the smooth progress of a fair trial. Similarly, if an accused person who is released on bail jumps bail and attempts to run to a foreign country to escape the trial, that again would be a case where the exercise of the inherent power would be justified in order to compel the accused to submit to a fair trial and not to escape its consequences by taking advantage of the fact that he has been released on bail and by absconding to another country. In other words, if the conduct of the accused person subsequent to his release on bail puts in jeopardy the progress of a fair trial itself and if there is no other remedy which can be effectively used against the accused person, in such a case the inherent power of the High Court can be legitimately invoked.'' Thus in this Case Hon'ble SC confirmed the Order passed by the Hon'ble Bombay High Court by emphasizing fair trail against the personal liberty of the accused appellant even in the case of bailable offence as it was not safe to release the accused on bail on the basis of material on record as it is possibility on the part of the accused to create disturbance in fair trial of the case.
In another case of Shahzad Hasan Khan vs. Ishtiaq Hasan Khan reported in 1987 (2) SCC 684,  emphasizing on mass interest of the society, having come to know about the tempering the evidences on behalf of the accused person , the Hon'ble SC set aside the Order of granting bail passed by Hon'ble High Court of Allahabad, Lucknow Bench  by observing that "No doubt liberty of a citizen meat be zealously safeguarded by court, nonetheless when a person is accused of a serious offence like murder and his successive bail applications are rejected on merit there being prima facie material, the prosecution is entitled to place correct facts before the court. Liberty is to be secured through process of law, which is administered keeping in mind the interest of the accused, the near and dear of the victim who lost his life and who feel helpless and believe that there is no justice in the world as also the collective interest of the community so that parties do not lose faith in the institution and indulge in private retribution."
In a case, before Hon'ble Supreme Court, Masroor v. State of U.P. reported in 2009 (14) SCC 286 , SC beautified that there should be a balancing approach between personal liberty of the accused and interest of public and a case of prosecution. Further, Hon'ble Supreme Court, in a case Neeru Yadav vs. State of Uttar Pradesh, reported in 2014(16) SCC 508 again  ardently discussed the aspect of balancing two interests by observing that "The sanctity of liberty is the fulcrum of any civilized society. It is a cardinal value on which the civilisation rests. It cannot be allowed to be paralysed and immobilized. Deprivation of liberty of a person has enormous impact on his mind as well as body. A democratic body polity which is wedded to rule of law, anxiously guards liberty. But, a pregnant and significant one, the liberty of an individual is not absolute. The society by its collective wisdom through process of law can withdraw the liberty that it has sanctioned to an individual when an individual becomes a danger to the collective and to the societal order. Accent on individual liberty cannot be pyramided to that extent which would bring chaos and anarchy to a society. A society expects responsibility and accountability from the member, and it desires that the citizens should obey the law, respecting it as a cherished social norm. No individual can make an attempt to create a concavity in the stem of social stream. It is impermissible. Therefore, when an individual behaves in a disharmonious manner ushering in disorderly things which the society disapproves, the legal consequences are bound to follow. At that stage, the Court has a duty. It cannot abandon its sacrosanct obligation and pass an order at its own whim or caprice. It has to be guided by the established parameters of law."
In a case State of Bihar vs. Rajballabh Prasad reported in 2017(3) GLR 2012 Hon'ble SC in paragraph no. 26 observed that if it is found that "there is a possibility of interdicting fair by the accused if released on bail, this public interest of fair trail would outweigh the personal interest of the accused while undertaking the task of balancing the liberty of the accused on the one hand and interest of the society to have a far trial on the other hand."
To conclude let it be said that  world history witnesses that there were many battles in the world for human liberty. The  personal liberty is the grammar of the human life. It is the most precious right not only given by law but also given by Nature. Personal liberty is a gift of Almighty.  Violation of such right is fatal to humanity. Everybody likes liberty. Nobody likes to be imprisoned and wishes to lose such a precious gem i.e. liberty of life. From right to  personal liberty to right to privacy of human  , Hon'ble SC has delivered its best verdicts. It is said that the man is a social animal. It means that a man is a pivotal part of society and society is the main part of the life of a man. A man has to follow that legal norms of the society. In the name of personal liberty, a person is not at all allowed to behave as if he likes to and such behaviour affects seriously on social and legal norms of society directly or indirectly.  In the interest of society and to protect the prosecution case from the hurdles created by the accused, the uncivilized liberty of such accused must be restrained by not granting bail as the factor of justice must be played with the victimized persons and there should be great lesson to be learnt to the accused of the heinous crimes. The society at large must be safe, secure and free from unwanted antisocial elements. I think this is the mottos of justice and law.

Chirag Bhatt

Lawyer

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