Deshmukh and Co. (Publishers) Pvt. Ltd. Vs. Avinash Vishnu Khandekar and Ors2006 (2) BomCR 321

This case note is written by Keerthana R Reddy, who is a second-year law student at Christ Academy Institute of Law.

1. Background

Deshmukh and Company Publishers Private Ltd. is a leading book publisher, which carries its business in Pune. In this case, the publishing house is the plaintiff while Avinash Vishnu Khandekar and others are the defendants. The case deals with the ownership rights of certain literary works.

In an arrangement with Shri V.S. Khandelkar, the plaintiff, Deshmukh and Company Publishers (Pvt) Ltd., granted him exclusive publishing rights. After he died in 1976, Shri V.S. Khandelkar left a will in which he left all of his possessions to his wife, who went on to establish the appellant company and give the company all of her publication rights in the works.

In a lawsuit filed under Section 62 of the Copyrights Act, 1957, the plaintiff (appellant in this case) sought, among other things, 

• A declaration that she had an existing copyright in the publication of 14 books,

• A negative declaration that no defendant had the right to print or publish the same; 

• An additional decree for a permanent injunction, which would prevent the respondents from taking any action about the books listed. 

Furthermore, the plaintiffs have requested compensation in the amount of Rs. 10,000/-. It was claimed that the defendants, Avinash Vishnu Khandekar and others, violated the plaintiff’s copyright by publishing and distributing copies of the book without permission which constituted a copyright infringement. The defendants, in contrast, denied the plaintiff’s claims and argued that they were entitled to publish and sell the book as it was in the public domain. 

The trial court held that the agreement amounted to nothing more than a simple license to print and publish books as long as the terms and royalty payments specified therein were met. The plaintiff was not entitled to the declaration and permanent injunction that was requested in the claim, the trial court said in dismissing the case. The plaintiff, who was not satisfied by the ruling, decided to opt for an appeal. 

2. Important Provisions

Copyright Act, 1957. 

Section 18- Assignment of copyright 

Section 19- Mode of Assignment 

Section 19A- Revocation of Assignment 

Section 30- Licences by copyright owners

3. Issues

The main issue before the court was:

Whether the said document is an assignment of copyright or a mere license to publish books?

4. Arguments advanced by: 

• Petitioner

The appellant argued that the said agreement was a deed of partial assignment rather than only a license to produce and publish books. They argued that since copyright is a collection of rights as defined by Section 14 of the Copyright Act if the agreement merely contained a license, it would not be necessary to include provisions for the author’s numerous rights to be retained. It was argued that the term “Licensor, Licensee, or Licence” alone does not determine whether an instrument is a license or not.

• Respondent

The respondents argued that the arrangement was only a license to publish books in the appellant’s favor, not an assignment of copyright. The appellant did not acquire any enduring rights from it, and the grantor might withdraw it whenever they desired. The arrangement must be interpreted as little more than a simple license to publish books because the appellant had a continual responsibility to pay royalties. 

5. Judgement

The Bombay High Court distinguished between an assignment and a license as follows: 

A license simply grants the right to do something that would be illegal otherwise; it does not transfer the copyright itself. In contrast, an assignment deals with the copyright itself and transfers an interest in it according to Section 14 of the Act. A license just allows the licensee to carry out specific actions; an assignment conveys copyright title. While the license is personal and cannot be transferred or reassigned without the grantors’ approval, the assignee owns the title in the copyright and may reassign. Additionally, the assignee does not need to join the assignor to initiate a lawsuit for infringement. However, since the licensor owns the copyright, the licensee is unable to file a lawsuit on his own for copyright infringement.

The court determined that the agreement merely constituted a publishing license, as demonstrated by the endorsement of one of the well-known books written by the late Shri Khandekar, “YAYATI”, which was published by Shri Deshmukh and clearly stated that “All rights are reserved with the author”.

6. Key Judgements Cited

Mishra Bandhu Karyalaya v. Shivratan Lal Koshal AIR 1970 MP 261

7. Author’s Insights

The current ruling indicates that the terms “assignment” and “license” are different and should not be used interchangeably. While Section 30 of the Copyright Act addresses licenses, Section 19 of the Act lists the requirements for copyright assignment. It is necessary to infer from the language used in the agreement whether the parties intended it to be an assignment or a license.