The second thing that may happen is that the defendant may come to the court and deny that he ever made the product in question and consequently deny the infringement and it would be difficult for the plaintiff to prove otherwise; unless a Commissioner had been appointed and an Anton Piller Order had been executed and goods seized from the defendants premises. Even where goods are seized from the defendants premises, the defendant may claim that these were in fact original goods and may be able to produce invoices showing purchase of original goods from authorised dealers as the defendant may have cleverly mixed up the originals with counterfeits. He may resort to the shelter of some legal documents to cover the whole lot of goods. These are the kind of cases which are appropriate subject matter for criminal action.
Of course there are all kinds of considerations which deter the copyright owner from having resort to criminal action. For example, in the first case a criminal court is incapable of granting an injunction so that each time a person does a wrong, a criminal complaint has to be instituted and goods seized.
Another major problem area is that the criminal court requires a complainant to be present on all dates of hearing. There is a reasonable probability of getting an exemption but such an exemption cannot be invoked too often and it is normally kept for situations where a complainant is in genuine difficulty. A rule cannot be made of it so that by and large the complainant must be present and this naturally means that companies delegate the job of being a complainant to a relatively junior officer where again they have to balance his capabilities with his busy schedule because if he is not capable, he would not be able to give evidence on behalf of the company.
The complainant sometimes in the case of a foreign proprietor may be overseas and the company may be unwilling to delegate the power to someone local for fear of losing control. At other times, the proprietor may have a local joint venture company or a licensee whose manager may be a suitable complainant and for this purpose may be given a power of attorney. Some times the complainants lawyer may appoint a junior person from his office to be the constituted attorney and sometimes an investigator may be so appointed. In the case of a proprietor who is not willing to lose control if the complainant is overseas and finds it very difficult to visit on all dates of hearings, this would naturally deter the proprietor from resorting to criminal process.
The other problem about criminal proceedings is that apart from the court and the opposite party the right owner has to deal with an additional agency, namely, the police and the police is difficult to deal with; difficult because of corruption, because of ignorance and lack of education and a proper understanding of intellectual property. Also difficult at times because police officers are highly egoistic. For instance, in some software cases of Microsoft and other members of the Business Software Alliance, the Bombay police despite there being a court order, refused to take cognizance of the same and to search the premises of the accused and seize goods. They gave all sorts of excuses. First they said that there is a list of 8 printed priorities of the Bombay police and let alone copyright even economic offenses are not on that list so that the police force cannot be spared. Their next excuse was that it is difficult for the police to distinguish between original and pirated software so that they would request the Government approved testing laboratory' to give a report on the distinguishing features between the original and the spurious which is a process which might have taken months and only when the report came would they have been able to take action. Another reason given was that this would open another avenue of corruption to the police. The last reason given by them was that the Bombay police themselves use pirated software and they might even embarrass themselves if they take action against pirates. It took about 3 weeks of camping in Bombay to convince one individual that it was necessary to execute these orders before he actually took action and of course when he did, he had the psychology of an over enthusiastic, fresh convert and not only did he arrest 4 persons but later, when the accused and the complainants settled the matter,, displayed a lot of displeasure at the fact that a settlement had taken place.
When one is dealing with goods that are known to be infringed in a particular locality, for instance, computer software piracy is concentrated in the Nehru Place area of New Delhi, then it becomes difficult to go through the local police of that area as the said police are normally hand-in-glove with the pirates on account of associations which the pirates have formed and the associations naturally have no problems in funding defenses which provide protection to all of them and in giving protection money to the police- What has started to happen in the world in several countries is to also involve the association or the owner of the premises in the action if there was evidence to suggest that an owner has been charging a premium for the premises and has full knowledge of the commission of the offense.
Naturally a good strategy is to bring the police from outside which means if one is raiding in the Nehru Place area, one would come through the Central Police or Crime Branch in Delhi or if one is raiding geographically in Bombay to get police from Delhi. That would be an ideal way of ensuring confidentiality, but the problems with that are jurisdictional problems. The police can only go out of their jurisdiction if there has been a previous raid conducted within their jurisdiction and goods have been seized and from the accused information has been given which leads to the accused in an outside area. There has to be a link between the two jurisdictions.
In the BSA actions after the kind of problems that were faced with the Bombay police, the owners tried to encourage the Delhi police to go for Bombay raids and particularly where a raid took place in Delhi and the Delhi accused pointed a finger to a Bombay supplier then that gave the necessary jurisdiction to the police to go to Bombay. There is an IPR Cell in the Delhi Police which is manned only by one man and the head is a DCP, (I.e. Deputy Commissioner of Police) under whom there is a single inspector and one sub-inspector. With two officers, the pressure on them is so much that they are in perpetual demand Their timings are like film stars. It is very difficult to get them and for that reason in an outstation matter, one is encouraged to instead rely on civil actions because at the last minute the police inspector is likely to say that he has been caught up in some other engagement and is unable to cooperate. In case of software, goods are never available off the shelf. They have to be ordered and a decoy has to be sent for that purpose so that on a particular day when delivery is to take place, and the decoy is ready to receive the goods, if the police does not land up, or refuses to go, it may spoil the plan completely. This has been another reason which has compelled some persons to resort to civil actions.
There are therefore many reasons why one would have to resort to civil actions. At the end of the day the greatest advantage of the criminal action is the fear which the entry of a police man on the premises of an economic offender creates. It just creates terror. A plain clothesman never produces that terror. The word "police" creates tremendous psychological discomfort and creates a high degree of embarrassment and if there is a possibility of an arrest then a dozen civil actions on one side and one criminal action with an arrest on the other side. That is the balance in terms of the degree of deterrence which they create and this would be a factor which would certainly favour resort to criminal proceedings.
So as one sees in the end, there are civil and criminal remedies and both have their strong and weak points. What is important is to use a mix of strategies, some times civil, sometimes criminal and sometimes both to suit the circumstance, the availability of resources and so on.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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