Astor Technologies vs L.B. Thiagarajan

M. Venugopal, J.—This Appeal is filed by the appellants/defendants as against the orders passed by the learned Single Judge in Original

Application No. 814 of 2002 in C.S. No. 610 of 2002 dated 24.09.2003 in dismissing the temporary injunction application restraining the

respondent/plaintiff from infringing their copyright.

2.The appellants/defendants/applicants filed Original Application No. 814 of 2002 praying for the relief of an interim injunction restraining the

respondent/plaintiff or anyone claiming under him from in any manner infringing the copyright in the Computer Aided Design Software ''astor Eazy

Design'' and its variations and from dealing with the same, etc.

The learned Single Judge has dismissed the original application O.A. No. 814 of 2002 praying for interim injunction filed by the

appellants/defendants against the respondent/plaintiff inter alia stating that ''though the appellants/defendants have proved to be the owners of

CAD/Astor Eazy Design and its modules etc., it is too early to consider entitlement of the appellants/defendants for issuance of an order of

temporary injunction and that the claim and contention of the parties is in the nebulous stage and the parties are yet to go on trial and if temporary

injunction in any form is granted against the respondent/plaintiff, there is every possibility of its being mis-interpreted restraining him from doing the

business under the company name Essdi Infotech Corporation promoted by him and this is all the more so, when the differences between the

parties has been strained by the registration of the criminal case.''

It is the case of the appellants/defendants that the respondent/plaintiff has filed a suit for permanent injunction restraining the

appellants/defendants from infringing the copyright vested with him in respect of the Computer Software for garment manufacturing and that the

respondent/plaintiff has not produced the software in which he claims a copyright and further that the respondent/plaintiff has not produced the

appellants/defendants'' software for comparison between the two and all the more the appellants/defendants denied that the respondent/plaintiff is

the original inventor of the software titled ''Computer Aided Design'' for garment manufacturing technology and that the appellants/defendants have

employed the respondent/plaintiff as an employee to co-ordinate in the project of the appellants/defendants, who has a team of computer engineers

and technical experts already working on the project etc. and as per Section 17 of the Copyrights Act, 1957, any work in which copyright subsists

when created in the course of employment by any employee vests automatically with the employer, unless an agreement to the contrary is made

and that the appellants/defendants denied that the respondent/plaintiff is an ever an owner of the software or copyright therein and therefore, they

are entitled to claim the relief of interim injunction against the respondent/plaintiff.

It is to be borne in mind that the respondent/plaintiff has filed a suit C.S. No. 610 of 2002 inter alia stating that CAD software has been

developed by him which has gained reputation, recognition, identity and success among the garments industry and that he has developed the

software exclusively by himself without any reference to the appellants/defendants and that he is the true inventor of the said software and has the

absolute copyright in the said software apart from seeking the patent therefore and therefore, he has the right to trade and reproduce the same as

an author of the work to the exclusion of all others including the appellants/defendants and has prayed for the grant of permanent injunction

restraining the appellants/defendants, its partners, his men, agents, etc., or anyone claiming through them from in any manner infringing the copyright

vested on the plaintiff in the computer software CAD/CAM for garment manufacturing technology created and invented and developed by him and

for other reliefs.

The appellants/defendants have filed a written statement in the suit inter alia contending that the software claimed by the respondent/plaintiff is an

intellectual creation of the first appellant/first defendant and that respondent/plaintiff was only an employee of the first appellant/first defendant and

during his term he has also participated in development of the said software and as per Section 17(a) of the Copyright Act, 1957, copyright in any

work created by an employee during the course of his employment, shall vested with the employer alone except under certain conditions and that

the respondent/plaintiff left the services of the defendants in July 2001 and that the respondent/plaintiff clandestinely and illegally took away the

computer software ''astor Eazy Design'' and the source code of the said copyright when he left the services of the appellants/defendants and had

approached the customers of the defendants by using the appellants/defendants'' said software and that the appellants/defendants filed criminal

complaint against the respondent/plaintiff before the Central Crime Branch, Tiruppur and that an FIR under X Crime No. 6 of 2002 dated

25.06.2002 registered and that the criminal case is pending before the Tiruppur Magistrate Court and that the respondent/plaintiff has hijacked the

trade secrets of the appellants/defendants.

A categorical stand taken by the appellants/defendants while resisting the suit is that the second and third appellants/defendants being the

partners of the first appellant/defendant and other 3 being the employees of the firm have worked towards the said software and that all the five

persons were the original inventors of the software, which was duly assigned in favour of the first appellant/defendant firm which is the owner of the

said software programme and all intellectual property rights vested in it.

Generally, an injunction is the vital remedy against an infringement. Admittedly, the object of interlocutory injunction is to protect the plaintiff

against injury by violation of his right for which he could be adequately compensated in damages recoverable in the action if the uncertainty were

resolved in his favour at the trial. Equally, the plaintiff''s need for such protection should be weighed against the corresponding need of the

defendant to be protected against an injury resulting from his having been prevented from exercising his own legal rights for which he could not be

adequately compensated under the plaintiff''s undertaking in damages if the uncertainty were resolved in the defendants'' favour at the trial.

However, the Court must weigh one requirement against another and determine where ''balance of convenience lies''. It is to be noted that a rigid

invocation of injunction without visualising elasticity in the application of the rule as to the grant of injunction might at times result in inconvenience

which cannot be cured later.

It cannot be gainsaid that it is not the Court''s function at the interlocutory stage of a pending suit to try to settle conflicts on evidence, on affidavit

as to facts on which the claims of either person may ultimately devolves upon or to decide difficult questions of law which require elaborate

argument and mature considerations and admittedly, these points are to be dealt with at the time of trial. Moreover, in the field of copyright actions

where the grant or refusal of an interim injunction would in effect dispose of the action finally in favour of either of the parties, then, it is desirable

for the Court to hear full arguments and render a decision on merits, in the considered opinion of this Court.

At this stage, this Court points out apply that Hubbard and Anr. v. Vosper and Anr. (1972) 1 All ER 1023 Lord Denning, M.R. observed ''in

considering whether to grant interlocutory injunction, the right course for a Judge is to look at the whole case. He must have regard not only the

strength of the claim but also to the strength of the defence, and then decide what is to be done, etc.'' Added further, the Court has to see the

existence of the right and any of the defences that are asserted in relation to the admitted existence of that right, besides taking into account the

facts relating to the alleged breach, the evidence of the alleged breach etc.

As far as the present case is concerned, the learned Counsel for the appellants submits that the appellants have filed a written statement and the

counter claim. However, the respondent/plaintiff Counsel contends that the respondent/plaintiff has not worked as an employee but worked as a

consultant and received payments in that capacity from the first appellant/first defendant and therefore, the appellants/defendants cannot seek the

aid of Section 17(c) of the Copyright Act and further that the respondent/plaintiff has not assigned his copyright as per Section 18 of the Copyright

Act. Section 18 of the Copyright Act, 1957, recognises assignment of copyright. Section 19 of the said Act envisages that such assignment shall be

made in writing, signed by the assigner or his agent. Section 30 of the said Act recognises grant of licence by the owner, which too is required to

be in writing, signed by owner or his agent.

It is also the contention of the learned Counsel for the respondent/plaintiff that first defendant/appellant''s company came into existence in the

year 1999 and that the respondent/plaintiff has been a consultant for setting a garment factory and before the year 1999, the appellants/defendants

had a different company for garments and after 1999, the appellants/defendants say that the respondent/plaintiff worked as Senior Manager. But it

is the consistent case of the respondent/plaintiff that he never worked as an employee and that the employment of the respondent/plaintiff is yet to

be proved in the case and from the year 1994-1998, the respondent/plaintiff has not been in employment with the first appellant/defendant and that

the appellants/defendants has promised that he will be made as a partner in a company to be flouted by them but that has not been done and

further that the appellants/defendants made a promise with the respondent/plaintiff that they will make the respondent/plaintiff, a shareholder-

Director and that the respondent/plaintiff issued a legal notice dated 27.05.2002 to the appellants/defendants and also filed Form-6 before the

Controller of Patents on 15.06.2002 raising objections for grant of patent in the name of first defendant.

The appellants/defendants have lodged a criminal complaint against the respondent/plaintiff on 25.06.2002. The suit has been filed on

20.08.2002. In the instant case, originally the written statement has not been filed in time and later on the delay in filing of the written statement has

been condoned. It appears that the appellants/defendants have also filed a counter claim to which a reply has also been filed by the

respondent/plaintiff.

The learned Counsel for the appellants/defendants brings to the notice of this Court that when the written statement was filed, the patent issued

was pending before the authority concerned and as on date, the appellants/defendants have obtained a patents in their favour. To this, the learned

Counsel for the respondent/plaintiff submits that the respondent/plaintiff has already filed Form-6 before the Controller of Patents on 15.06.2002

raising objections and that the concerned authority has not issued any notice to the respondent/plaintiff or heard the objections of the

respondent/plaintiff before granting the patent in issue and in this regard, the learned Counsel for the respondent/plaintiff informs this Court that he

will work out his remedy before the appropriate authority in accordance with law.

It is not out of place to point out that the respondent/plaintiff has filed O.A. Nos. 598 and 599 of 2002 praying for (i) interim injunction

restraining the appellants/defendants, its partners, his men, agents, servants, or anyone claiming through them from in any manner infringing the

copyright vested on the respondent/plaintiff in the computer software CAD/CAM for garment manufacturing technology created and invented and

developed by the respondent/plaintiff; (ii) interim injunction restraining the appellants/defendants, its partners, his men, agents, servants, or any one

claiming through them from in any manner passing off of the computer software CAD/CAM for garment manufacturing technology developed by

the respondent/plaintiff either by sale or installation or in any manner advertising the same. Likewise, the appellants/defendants have projected

O.A. No. 814 of 2002 praying for the relief of interim injunction restraining the respondent/plaintiff or any one claiming under him from in any

manner infringing the copyright in the Computer Aided Design Software ''ASTOR EAZY DESIGN'' and its variations and from dealing with the

same by soliciting orders from customers etc. and also filed Application No. 3652 of 2003 praying to appoint an Advocate Commissioner with

specific directions to access the computer and other accessories, CD''s Floppy Disks containing source code of the impugned software, which

were seized by the police authorities in X Crime No. 6 of 2002 on 25.06.2002 or later during the course of investigation etc. and to take print outs

of the materials contained therein and to submit a report thereon along with the printouts within a time stipulated by this Court. By virtue of the

common order passed in O.A. Nos. 598 and 599 and 814 of 2002 and Application No. 3652 of 2003 in C.S. No. 610 of 2002, the learned

Single Judge has dismissed all the applications for the reasons assigned thereto.

On a careful consideration of respective contentions advanced on either side, this Court comes to the inevitable conclusion that the issues

involved in the case could not properly be tried upon affidavit evidence and therefore, as a logical corollary we opine that having regard to the

nature of controversies/disputes involved in the case, it is appropriate for the parties to workout their remedies in the main suit finally and

conclusively where they can lead oral and documentary evidence to substantiate their case and to thrash out the matter in entirety, enabling the

Court to hear the case finally and to render its decision on merits and in that view of the matter, the order of the learned Single Judge in dismissing

the O.A. No. 814 of 2002 on 24.09.2003 does not require any interference in the hands of this Court and accordingly, the Original Side Appeal

fails and the same is hereby dismissed in the interest of justice. Consequently, the order passed by the learned Single Judge in O.A. No. 814 of

2002 dated 24.09.2003 is affirmed for the reasons assigned by this Court in this appeal, leaving the parties to bear their respective costs.