• Authored By: Dr. Mohan Dewan Co-authored by: Attorney Mr. Vinay D. Dwarkadas

In Tekla Corporation & Anr. vs. Survo Ghosh & Anr decided by the Delhi High Court recently, the Court was required to consider the Doctrine of Copyright Misuse (“the doctrine” ) as evolved in the US courts.

The Plaintiff is the owner of copyright in a software program titled “Tekla Structures”. The Defendant installed the same without obtaining a license. The Plaintiff filed a suit to restrain the Defendant from infringing the copyright in the software program. The Defendant was in the first instance restrained by an ex-parte ad-interim order from dealing in or using the same.

In their written statement the Defendant took the plea that the conduct of the Plaintiff constituted copyright misuse and consequently the Plaintiff was precluded from claiming reliefs for infringement.

Relying upon several judgments of the US courts, the Defendant contended that the Plaintiff is involved in anti-competitive and restrictive trade practices violating public policy on which copyright laws are based and which amounted to copyright misuse. The Defendant further contended that the defense of copyright misuse is recognized across several jurisdictions world over.

The Defendant submitted that the terms of license of the software program titled “Tekla Structures” were an abuse of the monopoly in their copyright. The Defendant cited several instances of the Plaintiff’s conduct of copyright misuse viz. charging unreasonable fees in addition to license fees under the garb of providing services of training, assistance, compelling licensees to accept unreasonable conditions of paying for annual maintenance service agreements and failure to accept which resulted in imposition of penalties, paying for training fees but which training is not provided. Licensees are compelled to accept these terms and conditions as a part and parcel of the license.

The Court enquired with the Defendant’s counsel whether there was any provision under the Copyright Act, 1957 (“the Act”) as applicable in India, permitting the defense of copyright misuse. The Defendant contended that although there was none under the Act or for that matter under any other copyright law in jurisdictions worldwide, the defense provided equitable relief and ought to be entertained. The Defendant referred to and relied upon several decisions passed by the US courts in support of its contentions.

The Counsel for the Plaintiff contended as follows:

1. even if the doctrine were to be held to be available in India, the plea of the Defendant could not constitute a defense of copyright misuse.

2. copyright is a creation of a statute which provides a categorical list of defenses that a Defendant has in a suit for infringement. The doctrine is not one of them and neither has the doctrine been ever applied in India.

3. that even if the doctrine were considered there is no misuse in the present case.

4. as regards the plea of the defense of unreasonableness of fees charged by the Plaintiff the Defendant can approach the Registrar of Copyright for grant of a compulsory license.

5. the end user license agreement does not mandate licensees to compulsorily avail of services of training or maintenance and they are optional.

6. the Plaintiff’s copyright is only in the software program and which once purchased by the Defendant, the Defendant would have the full right to use without any conditions.

After hearing the parties, the Court concluded that the doctrine of copyright misuse had no applicability in India for the following reasons viz:

1. none of the cited judgments of the US courts define “copyright misuse”.

2. the doctrine has no statutory support in American jurisprudence.

3. the defense of copyright misuse by the holder is not available under the Act.

4. the provisions of the Act do not provide that a copyright owner will have exclusive rights only if does not misuse copyright.

5. entertaining the defense of copyright misuse would result in copyright being a conditional right, a right subject to being not misused and liable to suspension if misused.

6. if a copyright holder is misusing copyright, the remedy of the aggrieved person is to seek recourse to prohibit him from such misuse and not plead it as a defense in an action for copyright infringement.

7. if a party is in law entitled to relief, it cannot be denied even if the plaintiff is in violation of any other law. Indian jurisprudence does not subscribe to retributive justice. A wrong by a plaintiff, howsoever wrong, is not to be met by doing wrong to the plaintiff.

8. to accept the doctrine would result in allowing a person to unilaterally decide that the owner has lost copyright by reason of misuse.


In passing the order, the Court logically took into consideration that allowing the defense of copyright misuse would result in considering an act of infringement as not such an act on the ground of misuse of copyright by its owner.


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