Blackwood and Sons Ltd. & Ors. v. A.N. Parasuraman & Ors.

High Court of Madras | Decided: 28 February 1958 C.S. Nos. 54 of 1955 & 215 of 1954 Presiding Judge: Justice Rajagopala Ayyangar  Citation: AIR 1959 Madras 410

Background

Two suits were tried together before the Madras High Court as they raised common questions of law relating to copyright infringement, though the facts of each were different.

In C.S. No. 54 of 1955, the plaintiffs were Messrs. Macmillan and Co. Ltd., who claimed copyright by assignment in two works The Return of the Native by Thomas Hardy, prescribed by the University of Madras for the B.A. degree examination of 1956 Part I English and Stories from Tagore, prescribed as a text book for the Intermediate Examination of the University of Madras for Part I English in 1956. The defendants were a firm of publishers operating in Madras under the name The Little Flower and Co. In 1954, the defendants published a Guide to the Study of Hardy’s Return of the Native and a guide to Stories from Tagore without the consent of the plaintiffs, both of which the plaintiffs alleged reproduced substantial parts of the original works and competed with their sales.

In C.S. No. 215 of 1954, the plaintiff was Blackwood and Sons Ltd. (the case number and full facts of this second suit are not separately detailed in the portions of the judgment available but were tried alongside the first suit on the same questions of law, with the defence of fair dealing being common to both suits).

The suits claimed permanent injunctions restraining the defendants from printing, publishing or selling the offending guides, an enquiry into profits made by the defendants, damages and delivery up of remaining copies of the infringing publications.

Macmillan’s claim to copyright in The Return of the Native traced through a complex chain of title. Thomas Hardy wrote the work in 1877 and published it in 1878. He died on 11 January 1928. He had assigned his rights to Macmillan and Co. by agreement dated 2 April 1902 for the duration of the legal term of copyright. However, under Section 24 of the Copyright Act 1911, the copyright reverted to Hardy’s representatives at the end of the period which would have applied under the earlier Literary Copyright Act of 1842 that is, seven years after his death, by 10 January 1935 meaning the 1902 assignment was no longer effective. Macmillan’s subsequent title rested on a tripartite agreement dated 30 August 1944 between Lloyds Bank Ltd. and Irene Cooper Wills as executors of Emily Hardy’s will, Eva Anne Dugdale as beneficiary and Macmillan and Co. Ltd., under which the copyright was conveyed to Macmillan for a sum of £40,000.

Macmillan’s claim to copyright in Stories from Tagore rested on a direct assignment from Sir Rabindranath Tagore himself under an agreement dated 12 May 1919, by which Tagore assigned to Macmillan the exclusive right of producing and publishing the work during the legal term of copyright in consideration of a royalty.

The defendants raised multiple defences. First, they contended that the Copyright Act of 1911 ceased to be operative in India after Independence in 1947 and after India attained Republican status in January 1950, creating a complete absence of copyright law. Second, they contended that The Return of the Native was first published in America and not within His Majesty’s dominions. Third, they denied infringement on the ground that their guides did not reproduce any substantial part of the original works. Fourth, they pleaded that their guides constituted fair dealing for purposes of private study, research and criticism, protected by the first proviso to Section 2(1) of the Copyright Act 1911. Fifth, in relation to Stories from Tagore, they contended that since the stories were first written in Bengali and not translated into English within ten years as required by Section 4 of the Indian Copyright Act III of 1914, there was no copyright in the translations. Sixth, they raised a defence of custom and trade usage, contending that a practice had grown up in the publishing trade whereby publishers prepared guide books containing substantial reproductions of prescribed text books without objection from the publishers of the original works.

Issues for Determination

In relation to The Return of the Native the court framed six issues: whether the Copyright Act of 1911 continued to be in force as part of the law of India after Independence and after the Constitution came into force; whether The Return of the Native was first published in America or within His Majesty’s dominions; whether the plaintiffs had established their title as assignees of the copyright through Thomas Hardy; whether the defendants’ guide constituted an infringement as containing a substantial reproduction; whether the defendants’ guide was protected as fair dealing; and the reliefs available to the plaintiffs if all issues were answered in their favour.

In relation to Stories from Tagore the additional issues were: whether the failure to translate the Bengali originals into English within ten years precluded copyright in the translations; whether the defendants’ publication constituted infringement; and whether fair dealing provided a defence.

Key Holdings of the Court

1. The court held that the Copyright Act of 1911, as modified by the Indian Copyright Act III of 1914, continued in force as part of the law of India after Independence in 1947 and after India attained Republican status on 26 January 1950. The preliminary objection that copyright law had lapsed was overruled. The court held that Article 372(1) of the Constitution preserved all laws in force in the territory of India immediately before the commencement of the Constitution and that there was no basis for holding that British Parliamentary legislation applicable to India before Independence automatically ceased to operate. A change of sovereignty does not bring about a change in private rights or the law governing those rights.
2. The court held that The Return of the Native was not first published in America. The evidence showed it was published serially in the English magazine Belgravia from January 1878 and as a novel in England on 4 November 1878, while the first American advertisement appeared only in December 1878. The defendants’ reliance on Henry Holt’s priority claim was rejected as discredited by the biographer Richard Little Purdy.
3. The court held that Macmillan’s claim to copyright in The Return of the Native failed on the ground that the plaintiffs had not obtained an ancillary probate in India as required by Section 213 of the Indian Succession Act. The right to copyright was property situated in India for the purposes of founding jurisdiction to grant a probate, since the right was enforceable in India and could be effectively dealt with there. An ancillary probate under Section 228 of the Succession Act could and should have been obtained. The failure to produce such a probate barred the enforcement of the claim under Section 213 of the Succession Act. The suit in relation to The Return of the Native was accordingly dismissed.
4. The court held that the defendants’ guides constituted infringement of the copyright in both works by reason of the reproduction of a substantial part of the copyright works, both quantitatively and qualitatively. The method of copying eliminating colourful descriptions and retaining in the author’s own words only those passages essential to the narration of the story fell within the description of abridgment that constitutes infringement. The quality and vitality of the matter extracted, not merely the proportion, was the determining factor.
5. The court rejected the defence of fair dealing under the first proviso to Section 2(1) of the Copyright Act 1911. The court held that the purposes specified in the proviso private study, research, criticism, review or newspaper summary were not served by the defendants’ guides. A dealing for private study covers a student copying for their own use, not the circulation of copies among other students. The guides could not constitute research in the sense of diligent investigation directed to the discovery of fact or addition to human knowledge. Chapter summaries reproducing substantial passages of the original to narrate the story were not criticism. Since the purpose required by the proviso was not satisfied, the question of whether the dealing was fair in manner did not arise. The court also held that where substantial and vital parts of the works were reproduced, any intention on the part of the infringer was immaterial and honest intention was not a sufficient defence.
6. The court rejected the defence based on trade usage and custom. The evidence of such usage was insufficient and no analysis had been offered of the degree of copying in the guide books produced as evidence of the practice. More fundamentally, the court held that in relation to rights created by statute which prescribe the scope of the right and define the purposes for which substantial parts of copyright works may be reproduced, any trade usage in contravention of the statute was inadmissible as a defence. The court relied on Walter v. Steinkopff (1892) for the proposition that a practice of copying among newspapers was no defence to a copyright action.
7. The court rejected the estoppel defence that by persuading universities to prescribe their publications as text books, the plaintiffs had impliedly licensed or authorised infringement by guide book publishers as without legal foundation.
8. The court held that Section 4 of the Indian Copyright Act III of 1914 which limited the sole right of translation to ten years from first publication unless the author published a translation within that period did not affect the copyright in the translations as original literary works. Section 4 merely extinguished the author’s sole right of translation after ten years, leaving others free to translate. It did not destroy the copyright which a translator, once the translation was made, would hold in the translation as an original literary work in its own right. The translations of Stories from Tagore were therefore original literary works in which copyright subsisted independently of Section 4.
9. The court held that the copyright in the translations of the Bengali stories vested in Rabindranath Tagore and had been validly assigned to Macmillan under the 1919 agreement. Tagore’s express assertion in the assignment that the copyright vested in him was accepted and the absence of any claim by the translators Sister Nivedita and Rev. C.F. Andrews to copyright in their translations was treated as supporting the inference that the translations were done at Tagore’s instance.
10. The suit in relation to Stories from Tagore was decreed. The plaintiffs were granted a permanent injunction restraining the defendants from infringing the copyright in that work, an enquiry into profits and an order for delivery up of remaining copies of the infringing guide. The claim for damages was dismissed as it was alternate to the claim for enquiry into profits. No order as to costs was made in view of the plaintiffs having failed in relation to The Return of the Native.

Statutory Provisions Involved

The Copyright Act 1911 (1 and 2 George V, c. 46) was the primary statute governing the rights in both suits. Section 1(1) of the Act provided that copyright shall subsist in every original literary work first published within His Majesty’s dominions. Section 1(2) defined copyright to mean the sole right to produce or reproduce the work or any substantial part thereof in any material form. Section 2(1) provided that copyright shall be deemed to be infringed by any person who without the consent of the owner of the copyright does anything the sole right to do which is conferred on the owner by the Act. The first proviso to Section 2(1) specified acts that shall not constitute infringement of copyright, including any fair dealing with any work for the purposes of private study, research, criticism, review or newspaper summary. Section 3 provided that the term of copyright shall be the life of the author and fifty years after death. Section 5 provided that the author of a work shall be the first owner of the copyright. Section 24 dealt with copyright in works existing before the commencement of the Act, including the reversion of copyright to the author’s representatives at the end of the term that would have applied under the pre-existing law.

The Indian Copyright Act III of 1914 modified the application of the Copyright Act 1911 to British India. Section 4(1) of the 1914 Act provided that in the case of works first published in India, the sole right to produce, reproduce, perform or publish a translation of the work shall subsist only for a period of ten years from the date of first publication, with a proviso preserving the right of translation in the language actually used if the author published a translation within that period.

Article 372(1) of the Constitution of India preserved all laws in force in the territory of India immediately before the commencement of the Constitution until altered or repealed by a competent legislature or authority. Article 366(10) defined “existing law” to mean any law passed or made before the commencement of the Constitution by any legislature, authority or person having power to make such law, including as the court held the Parliament of the United Kingdom.

Section 213 of the Indian Succession Act required that no right as executor or legatee can be established in any court of justice unless a court of competent jurisdiction in India has granted probate of the will under which the right is claimed. Section 228 of the Succession Act enabled the granting of an ancillary probate in India on the production of a properly authenticated copy of a will proved and deposited in a court outside India. Section 270 of the Succession Act provided that probate may be granted by a District Judge where the deceased at the time of death had a fixed place of abode or any property moveable or immoveable within the jurisdiction.

Section 18(3) of the Indian Independence Act 1947 provided for the continuance of the law of British India as the law of each of the new Dominions until other provision was made by the legislature of the Dominion. Section 25 and Section 35(1) of the Copyright Act 1911 dealing with the territorial extent of the Act and the definition of self-governing dominion were examined in the context of the preliminary objection.

Reasoning of the Court

On the continued operation of the Copyright Act 1911 after Independence and after the Constitution, the court undertook a detailed examination of the Indian Independence Act 1947, the Constitution of India and private international law principles. The court rejected the argument based on the Irish Supreme Court decision in Performing Right Society v. Bray Urban District Council (1928) and preferred the Privy Council’s reasoning on appeal in the same case, holding that the definition of self-governing dominion in Section 35(1) of the Copyright Act 1911 was closed and restricted to Canada, Australia, New Zealand, South Africa and Newfoundland and could not be extended by implication to include India or any other territory attaining dominion status after 1911. The court held that the argument advanced by the defendants would, if pushed to its logical conclusion, result in the wiping out of all statutory law in India including that enacted by Indian legislatures themselves, since those legislatures were themselves creatures of British Parliament a result obviously untenable. The court relied on the principle stated in Hyde’s International Law that law once established continues until changed by a competent legislative power and is not changed merely by change of sovereignty.

On the situs of copyright for the purpose of Section 213 of the Succession Act, the court undertook an original analysis drawing on Dicey and Cheshire on conflict of laws and the analogies of patents and trade marks. It held that a statutory right of copyright should be deemed to be situated in the country where it could be effectively enforced and since infringement of the copyright in the original works could be sued upon in Indian courts, the copyright had a local situation in India, making an ancillary probate obtainable and therefore required.

On the question of substantial reproduction, the court applied the well-established principle that quality of copying is more important than quantity. It found that the defendants had extracted those passages from Hardy’s work which were essential to the narration of the story, reproducing them in the author’s own words while omitting colourful descriptions, producing a work of the type described by Lord Atkinson in Macmillan and Co. Ltd. v. K & J Cooper an abridgment consisting of detached passages from the original knit together by a few words to create the appearance of a continuous narrative.

On fair dealing, the court held that the enumerated purposes in the proviso to Section 2(1) private study, research, criticism, review and newspaper summary are independent heads each capable of independent operation. The court held that none of these purposes was served by the defendants’ guides. Private study covered only a student copying for personal use, not publication for circulation. Research required diligent and protracted investigation directed to the discovery of facts or addition to human knowledge. Chapter summaries reproducing the story in the author’s own words were not criticism. The court further held that even if the purpose requirement had been satisfied, the substantial and vital nature of the reproduction would have precluded any finding of fairness in the dealing. The court relied on the observation of Slessor L.J. in Hawkes and Son (London) Ltd. v. Paramount Film Service Ltd. (1934) that where a substantial and vital part has been appropriated and published in a form that may materially injure the copyright, honest intention in the infringer will not suffice.

On trade usage, the court applied Walter v. Steinkopff (1892) to hold that trade usage cannot override a statutory scheme prescribing the scope of copyright and the purposes for which dealing is permissible. A practice of copying among publishers, however widespread, cannot sanction what the statute forbids.

On Section 4 of the Indian Copyright Act III of 1914, the court held that the provision was designed to limit the author’s monopoly on translation to ten years as a matter of public access policy. Where no translation was published within ten years, others became free to translate. But this had no bearing on the copyright in a translation already made which subsisted as an original literary work independently of Section 4, deriving from Section 1 of the Copyright Act 1911.

Doctrinal Significance

This judgment makes foundational contributions to Indian copyright law across multiple dimensions.

The court’s holding that the Copyright Act 1911 survived India’s Independence and attainment of Republican status is a landmark ruling on the continuity of pre-Constitution law in India. By affirming that Article 372(1) of the Constitution preserved all laws including British Parliamentary legislation applicable to British India until amended or repealed by a competent legislature, the court ensured that there was no vacuum in copyright law in India between 1947 and the enactment of the Copyright Act, 1957. This holding, drawing on the international law principle that sovereignty changes do not affect private rights, has enduring relevance for any question concerning the continuity of statutory property rights through constitutional transitions.

The court’s treatment of the situs of copyright holding that copyright is situated in the country where it can be effectively enforced is an original contribution to private international law as applied to intangible intellectual property. Drawing the analogy with patents and trade marks, the court established that copyright is not a right of purely national origin confined to the place of its legislative source but has a local situation in every country where the courts can give effect to it. This principle has relevance for questions of jurisdiction and conflict of laws in intellectual property disputes.

The judgment’s treatment of the fair dealing defence is of lasting importance in Indian copyright law. The court’s holding that private study covers only personal copying by a student for their own use not publication of copies for circulation and that chapter summaries reproducing the story in the author’s own words are not criticism, established clear boundaries around the fair dealing exception that have been consistently applied in subsequent Indian copyright cases. The court’s rejection of trade usage as a defence to copyright infringement underscores the primacy of the statutory scheme over customary practice.

The court’s interpretation of Section 4 of the Indian Copyright Act III of 1914 that a failure to translate a work within ten years destroys only the author’s exclusive right of translation, not the copyright in a translation once made is a doctrinally significant clarification that protected translations as original literary works in their own right regardless of when they were produced relative to the original. This holding gave effect to the principle established in Byrne v. Statist Co. (1914) that a translation is an original literary work independently copyrightable by the translator.

Finally, the court’s application of the principle that quality of copying is more important than quantity and that the extraction of vital passages essential to the narration of a story constitutes a substantial reproduction even if they represent a small percentage of the total words of the original reaffirmed the qualitative test for infringement that has remained central to Indian copyright jurisprudence in all subsequent cases involving literary abridgments, summaries and guide books.

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