What's New

Court-Case Bulletins
October 20, 2021

Court Case Bulletin (CCB): Owner Of A Copyright Cannot Bring Infringement Suit Against Licensee For Non-Payment Of Consideration

Author: Intern - Shubham Singh

In the matter of Yennes Infotech (P) Ltd. v. The Managing Director, eNoah Solution Pvt. Ltd. and Ors. [O.S.A. No. 31/2020], the division bench [Sanjib Banerjee, C.J. and P.D. Audikesavalu, J.] of the High Court of Madras (the “Court”) vide judgement dated August 13, 2021, held that a copyright infringement suit cannot subsist against a licensee for non-payment of consideration.

Section 30 of the Copyright Act, 1957 (the “Act”) states that “The owner of the copyright in any existing work of the prospective owner of the copyright in any future work may grant any interest in the right by licence in [writing by him] or by his duly authorised agent.” The question that arises is whether the ‘owner of a copyright’ can rescind the ‘grant of any interest in right by license’ on account of unpaid licensor’s right.

The Appellant-Plaintiff customised a computer programme (the “work”) for the Respondents-Defendants. However, the Respondents-Defendants failed to pay the balance consideration to the Appellant-Plaintiff. As a consequence, the Appellant-Plaintiff brought a suit for copyright infringement against the Respondents-Defendants. The Appellant-Plaintiff had approached the Court in an appeal against the order of the Trial Court rejecting the plaint.

The Appellant-Plaintiff contended before the Court that it is the owner of the copyright in the work and sought injunction against the Respondents-Defendants on account of infringement.

On the other hand, the Respondents-Defendants contended that there exists a ‘contract of service’ between the parties. In light of such contract of service, the Respondents-Defendants claimed sole ownership over the work which would preclude the Appellant-Plaintiff from bringing any action of copyright infringement.

The Court observed that the contract between the parties was one of a copyright license wherein the Appellant-Plaintiff had granted a valid license to the Respondents-Defendants for using the work. Further, the Court applied Section 30 of the Act and held that “Again, like in the case of assignment of copyright, a licence when granted cannot be taken back by the owner of the copyright unless it is surrendered or it lapses for non-use by operation of law. The unpaid licensor’s rights lie in a claim for money.” Therefore, the Court upheld the order of the Trial Court in rejecting the plaint and held that the Appellant-Plaintiff could not have claimed any relief for copyright infringement against the Respondents-Defendants.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

  • Non Solicitation
  • Data Privacy & Protection
  • Conflict of Interest Policy
  • Data & Document Retention Practice
  • Firm Management Policy
  • Liability
  • Disclaimer
  • Privilege
  • Copyright
  • Billing Policy
  • Pro Bono