India: Guidelines For Appointment Of Local Commissioner In Software Infringement And Piracy

Last Updated: 29 September 2008

The onset of the computer era brought in just as many adversities as advantages. While softwares customize computers to perform desired functions, the exclusivity and expertise that some of these packages offer, make them susceptible to infringement and piracy. Autodesk Inc., owners of copyright in world famous software 3DS Max and Autodesk Maya filed a suit against A.V.T. Shankardass and another for infringement and unauthorized use of their software to restrain infringement of copyright, delivery up as well as rendition of account of profits and damages for unlicensed usage of their software. The suit was accompanied with an application for interim injunction and a application for ex parte appointment of Local Commissioner. An appeal lay at the Delhi High Court [Autodesk Inc. and Anr. v. A.V.T. Shankardass and Anr {2008 (37) PTC 581 (Del.)}] against the order of the Single Judge dismissing their prayer for appointment of a Local Commissioner ex parte.

The Court while issuing a notice in the appeal appointed ex-parte a Local Commissioner to visit the premises of Shankardass to prepare an inventory of unlicensed software belonging to Autodesk, while allowing him to take into custody the Central Processing Units (CPUs), Floppy Discs/DVDs and while taking the assistance of Autodesk' representatives and their technical expert. The Court having received the Report of the Local Commissioner, which reflected him having found incriminating evidence of unlicensed software being used and noted having taken possession of the same. The Court noted that negotiations thereafter took place between the parties, pursuant to which a proposed settlement was filed before the learned Single Judge.

The parties to the present appeal both urged that in view of divergent views and orders being passed by Single Benches on the request for appointment of Local Commissioner in cases of piracy and infringement of copy right in computer software, it was of critical importance that the Division Bench lay down guidelines for exercise of discretion in such matters. Accordingly, the Court, while appointing Local Commissioner indicated that they did propose to do so. Autodesk while seeking Appointment of Local Commissioner had averred that their software had acquired international acclaim for being a pioneer in designing and in animation programmes. Autodesk' suit claimed damages amounting to Rs.20 lakhs in pursuance of which a settlement had been arrived at. They also stated that a single licence to Media Factory India Pvt. Ltd had been issued for the use of software 3DS Max. They alleged that the use of the software in 29 other computers was unauthorized. No licence had been granted for the software Autodesk Maya.

They appointment of a Local Commissioner ex parte was stated to have been sought on the ground that upon receipt of summons in suit or notice in the injunction application, the infringers could easily remove the evidence of infringing software. In order to make out a prima facie case for appointment of a Local Commissioner an affidavit sworn by a private investigator stating his findings on investigation had been placed on record, which was used in pursuance to getting the matter decided. However, the Single Judge found that the affidavit of the private Investigator alone did not make out the existence of a strong prima facie case . He further held that the question of protection of evidence likely to be erased did not arise since the affidavit did not point to any credible or reasonable suspicion and that the affidavit simply invited the Court to presume a state of affairs.

Autodesk urged that the essential question for consideration dealt with the preservation of infringing and incriminating evidence. They also pointed out the learned Single Judge in another case with similar allegations and wherein an affidavit of the same Investigator was filed, the Judge had granted ex parte appointment of Local Commissioner. Not only that, the learned Single Judge had permitted the Local Commissioner to visit any other premises where the he may have reason to believe that infringing/offending software was being used. Autodesk averred that the Single Judge, declined to appoint the Local Commissioner for reasons as noted by him, held that there was an absence of strong prime facie case, inasmuch as the affidavit did not reveal any material finding and that the investigator had not made even a single visit, while there being no basis for credible or reasonable suspicion.

The Division Bench opined that the order was not sustainable. They stated that the Single Judge had erred in holding that the appellant did not have a strong prima facie case. In view of the circumstances urged by Autodesk, they stated that it was incorrect to conclude that a strong prima facie case was non-existent. Commenting that the element of surprise was crucial to an action of infringement of software and piracy, they stated that issuance of notice would result in effacement of the incriminating evidence, thus being a question of preserving evidence rather than collecting evidence. The decision in Anton Pillar KG Vs. Manufacturing Processes Limited and others[FSR 1976 Pg. 129] was also referred to since the Single Judge had failed to exercise jurisdiction vested in him in accordance with law, especially in failing to pass orders, which would preserve and protect the incriminating evidence.

Shankardass' aversion as to non-seizure and return of computer systems and the CPUs found or suspected to be involved in use of infringing software and the admission of ghost copies of the same including the software for purposes of evidence in Court, was vehemently opposed by Autodesk. The Court opined that it was most appropriate to leave such considerations and concessions to be dealt with on a case-to-case basis.

Hearing the recommendations of both parties as to guidelines to be set, the Court here observed that it was neither feasible nor practical to lay down guidelines, which would cater to numerous and all the situations that may arise. However, the following factors and guidelines were enumerated to govern the appointment of a Local Commissioner in software infringement and piracy matters:-

  1. The object of appointment of a Local Commissioner in software piracy matters is not, as much to collect evidence but to preserve and protect the infringing evidence. The pirated software or incriminating evidence can only be obtained from the premises of the opposite party alone and in the absence of an ex parte appointment of a Local Commissioner there is likelihood that such evidence may be lost, removed or destroyed;
  2. Request for ex parte appointment of a Local Commissioner in such matters is usual and in fact is intended to sub serve the ends of justice as it is imperative to have an element of surprise so that the actual position is not altered;
  3. The test of reasonable and credible information regarding the existence of pirated software or incriminating evidence should not be subjected to strict proof or the requirement to demonstrate or produce part of the pirated software/incriminating evidence at the initial stage itself. It has to be tested on the touchstone of pragmatism and the natural and normal course of conduct and practice in trade.
  4. It may not always be possible for a plaintiff to obtain any admission by employing decoy customers and gaining access to the defendant's premises. Any such attempt also inheres in it the possibility of disappearance of the pirated software/incriminating evidence in case the decoy customers is exposed. Accordingly, visit by decoy customer or investigator is not to be insisted upon as pre condition. A report of private Investigator need not be disregarded or rejected simply because of his engagement by the plaintiff. The information provided by the private Investigator should receive objective evaluation.
  5. In cases where certain and definite information with regard to the existence of pirated software or incriminating evidence is not available or where the Court may nurture some element of doubt, it may consider asking the plaintiff to deposit cost in Court so that in case pirated software or incriminating evidence is not found then the defendant can be suitably compensated for the obtrusion in his work or privacy.

© Lex Orbis 2008

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions