a) Civil
b) Criminal, and
c) Administrative
It is only the first two remedies, namely civil and criminal, which are
of any real practical importance.
A. CIVIL REMEDIES :
The most importance civil remedy is the grant of interlocutory injunction since most actions start with an application for some interlocutory relief and in most cases the matter never goes beyond the interlocutory stage.
The other civil remedies include damages - actual and conversion; rendition of accounts of profits and delivery up.
This paper is confined to remedies available in common law jurisdictions and it may well be that in civil law countries, the emphasis or focus is somewhat different.
i) INTERLOCUTORY INJUCTIONS:
The principles on which interlocutory injunctions should be granted were discussed in detail in the English case of American Cyanamid v Ethicon Ltd. [1975] AC 368 (HL(E)]. After this case, it was believed that the classic requirements for the grant of interim injunction, namely,
a) Prima facie case
b) Balance of Convenience; and
c) Irreparable injury
had been modified and there was no need to establish a strong or even a prima facie case but it was sufficient to show that there was a triable issue. Lord Diplock's oft quoted observations are as follows:
"Assessing the relative strength of the parties' cases, however, should be done only where it is apparent upon the facts disclosed by evidence as to which there is no credible dispute that the strength of one party's cases is disproportionate to that of the other party."
In Series 5 Software Ltd. v Philip Clarke & Others [1996]FSR 273, Laddie J re-examined the principles and took a fresh look at what Cyanamid had actually decided. The learned judge held :
a) the grant of an interlocutory injunction was a matter of discretion and depended on all the facts of the case;
b) there were no fixed rules;
c) the court should rarely attempt to resolve complex issues of disputed fact or law;
d) major factors the court should bear in mind were (i) the extent to which damages were likely to be an adequate remedy and the ability of the other party to pay (ii) the balance of convenience (iii) the maintenance of the status quo, and (iv) any clear view the court may reach as to the relative
strength of the parties' case.
Thus, this case places emphasis on the merits and the effect may well be to obtain a non-binding view by a judge on the merits. This may lengthen the hearing of application for interlocutory. injunction as parties may lead evidence on the merits but it may have the overall effect of putting an early end to the main action.
ii) PECUNIARY REMEDIES:
Under the Copyright laws of some countries like the United Kingdom it is essential for the plaintiff to elect between damages and an account of profits although in the two recent cases, namely Baldock v Addison [1994] FSR 665 and Island Records v Tring International plc [1995] FSR 560, the court held that there could be a split trial and a procedure could be adopted by which the trial could be divided so that once liability has been established, thereafter the plaintiff would be able to seek discovery in order for him to make an informed decision on which of the two of the remedies to elect, namely damages or account of profits. In Cala Homes (South) Ltd. v Alfred McAlpine Homes East Ltd [I995] FSR 818, Laddie J held that additional statutory damages could be granted even where the plaintiff elected for account of profits.
Under Indian law, however, there is a departure made and the plaintiff, under sections 55 and 58, can seek recovery of all three remedies, namely (a) account of profits (b) compensatory damages and (c) conversion damages which are assessed on the basis of value of the article converted.
iii) ANTON PILLER ORDERS:
The Anton Piller Order derives its name from a Court of Appeal decision in Anton Piller AG vs Manufacturing Processes [1976] Ch55. An Anton Piller Order has the following elements:
a) An injunction restraining the defendant from dealing in the infringing goods or destroying, them;
b) An order that the plaintiffs solicitors be permitted to enter the premises of the defendants, search the same and take goods in their safe custody; and
c) An order that defendant be directed to disclose the names and addresses of suppliers and customers and also to file an affidavit will a specified time giving this information.
iv) MAREVA INJUNCTION:
Mareva Injunction is an order which temporarily freezes assets of a defendant thus preventing the defendant from frustrating the judgement by disposal of such assets.
v) NORWICH PHARMACAL ORDERS:
These are orders by which information can be discovered from third parties.
B. CRIMINAL REMEDIES:
Criminal remedies for copyright violation include :
i) Punishment through imprisonment which, under Indian law, may not be less than six months but which may extend to three years;
ii) Fines which, under Indian law, shall not be less than Rs.50.000. and which may extend to Rs.200,000.
ii) Search and seizure of the infringing goods including plates which are defined as including blocks, moulds, transfers, negatives, duplicating equipment or any other device used or intended to be used for printing or reproducing copies of the work.
iv) Delivery up of infringing copies or plates to the owner of the copyright.
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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