What Does Mandatory Registration Mean for Your Copyright?

Copyright is one of the oldest forms of IP protection, dating back to a statute in 1770s England. It took another century for uncoordinated author rights to be better codified by the 1886 Berne Convention. Today, about 140 nations around the world follow the provisions of that long-ago document, with relatively few major changes.

There have been plenty of controversies arising over copyright limits and restrictions over time, especially with the advent of the internet and greater means (not always legal) of disseminating authors’ works all around the world. Disney, for example, has been criticized for lobbying to extend personal and corporate copyright terms to far beyond what was previously normalized, dragging other countries in its wake. Copyright is also, due to the extended proliferation of media in our daily lives, now subject to greater scrutiny from the general public. In early March, authors and consumers on US twitter got into an argument about the validity of copyright for 30 years total, without including the lifetime of the author.

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All laws, including IP, are a reflection of the society we live in. Copyright in particular is fascinating, purely because the common person interacts far more with it than with any other form of IP, even if they don’t realize the legal implications. That, however, is content for another day. Right now, let’s look into the 8 March 2021 Bombay High Court order stating that registration was not necessary for copyright protection.

The facts of the case are these: Company A sued Company B for infringing on both the Trademark and the Copyright of their label for soya oil. The mark used by Company A was designed by an employee of Company C under common management and control. This mark was then assigned to Company A in perpetuity. Company A, while not claiming exclusive ownership of the common elements in the trademark (many of which are descriptive), but does claim rights as owners of the original artistic work that makes up the mark. The Court found in favor of Company A, but Company B cited a 2012 Bombay High Court decision (Dhiraj Dharamdas Dewani v Sonal Info Systems Pvt Ltd & Others) holding that registration under the Copyright Act was a pre-requisite for relief.

The Court disagreed, citing four separate cases Bombay High Court cases contradicting the citation made by Company B’s counsel. The Court therefore declared the cited case per incuriam, as the bench acted in ignorance of previous Court decisions. The Court then goes on to state that unlike Trademark, Copyright registration does not give the registering party additional rights, and that the judgement of the cited case in reading “may” as “shall” (in terms of registration) was incorrect.

It has to be noted that various High Courts have penned differing opinions on the subject. The Bombay High Court in this Order cited a Supreme Court decision as well, but that decision did not clearly state that Copyright did not require registration- the implication was assumed by the Court not addressing the matter, which is tricky territory. In other words, we have still not reached a clear consensus on the point.

While most countries are signatories of the TRIPs Agreement, different jurisdictions have different requirements for Copyright Registration. In the USA, for example, while Copyright does get automatic protection, Registration is necessary before instituting a lawsuit. In addition, the plaintiff can only ask for attorney’s fees and statutory damages if they have registered the copyright within three months of the work being published. All of this means that effectively, it is far more practical for an author to register their work in the USA than not, even if it’s not technically required. On the other end of the spectrum, some countries in the EU (such as Germany) do not even have a copyright registration system, sticking very strictly to the spirit of the TRIPS Copyright protection clauses.

Indian Courts, as it may be seen, have taken a middle-ground approach to the matter, and the issue is still in flux. It’s possible we will soon hear from the Supreme Court on the matter, settling the question of registration once and for all.

Author: Varsha Valsaraj, Legal Associate at PA Legal.

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