• TIPLPR

EVASION OF JURISDICTION IN INTELLECTUAL PROPERTY INFRINGEMENT CASES (PART-2)

As mentioned in the first part that in recent times the quality of justice surrounding IP disputes is material so there is an increasing risk of harassment and risk of the wrong jurisdiction too along with evasion of jurisdiction to create havoc among all with weak infringement cases being brought in multiple jurisdictions.

The issues with jurisdiction and judicial approach of the IP Infringement cases were discussed in the first part of the blog series. This part covers critical analysis and conclusion of the same.

CRITICAL ANALYSIS

In Conflict of Laws by Setalvad,[i] the learned author mentioned that when,

“Jurisdiction of a court agreed between the parties already through a contract then the court has to decide the same on a true interpretation of the contract along with the facts and the circumstances of each case.

The personal jurisdiction can be constitutionally exercised when it is directly proportionate to the nature and quality of commercial. Additionally, an infinitesimal fraction of a cause of action will confer jurisdiction. In both the scenario jurisdiction is not only related to the territory, it is based on where the cause of action arises or harm is done to the plaintiff but the interpretation is also vast.

There is a test of Purposeful "Avoidance" for clarifying jurisdiction in which the initial burden to prove the case will be on the Plaintiff to show that the Defendant "purposefully availed" itself of the jurisdiction of the forum court. Along with that the "Effects" and "Sliding scale" testis also evolved for determining the Court's jurisdiction for businesses with an online presence. The "effects" test was evolved in the U.S case of Calder v. Jones. In the effects test rather than a place of cause of action, the intention and tortious actions must be observed on the other hand the "sliding scale" or the "Zippo" test is evolved in the case of Zippo Manufacturing Co. v. Zippo Dot Com, Inc. In which court observed that the jurisdiction should be directly proportionate to the nature and quality of commercial activity that an entity conducts over the Internet and it must not be limited to the territory.

In short, the Courts of Delhi will have jurisdiction over the subject matter of suit when the interactive website of the defendant is accessible and when defendants are situated outside Delhi to carry on business at Delhi. IP rights have territorial limits and they exist within a jurisdiction and thus, it would be infringed only within the jurisdiction. But the territorial limits are not covered through evasion of jurisdiction then in such a situation, IP law disputes arise.

Section 21 of the C.P.C., 1908 enacts that no objection to the place of suing should be allowed by an appellate or Revisional Court whether it is for territory or pecuniary base. An objection as to the local jurisdiction of a Court can be waived and this principle has given statutory recognition under the above provision. It is also a principle that two suits having different causes of actions can be clubbed together as a composite suit for justice and convenience.

In an additional ground for attracting jurisdiction of the Court, the case for infringement of copyright can be filed and initiated at the place wherein the plaintiff carries on business and where a person works for gain as under Section 62(2) of Trademarks. Scope of Section 134 (2) of the Trademark Act which covers the jurisdiction of District Courts, are not to be curtailed by reference to Section 20 of the Civil Procedure Code. Basically, Section 62 of the Copyright Act and, Section 134 of the Trade Marks Act has an additional ground for attracting the jurisdiction of an along with Section 20 of the C.P.C., 1908.Section 62(2) of The Copyright Act has covered a right conferred by statute to a plaintiff to maintain a suit to the place where he lives or has business.

There are some cases where the Court observed that jurisdiction is lacking in the allegation/averment by the plaintiff in circumstances when the defendant is selling or offering for sale or exposing for sale of a product under the alleged trademark, copyright, design, etc. Regarding jurisdiction, the expression carries on a business and the expression personally works for gain connotes two different meanings. To carry on business is not concerned with the presence of a man at a place. It is not necessary on the contrary a business may be carried at a different place an agent or a manager or through a servant. Here the phrase "carries on business" at a certain place would mean having an interest in a business at that place. Then in such scenario evasion of jurisdiction is not on the same footing as territorial jurisdiction because the defendant can expand his business more than one territory through intermediary or by different approaches.

A WAY FORWARD

Intellectual Property Rights can be territorial but a violation of the same can be done in each territory, and each IPR has an independent cause of action. In all such instances, the IP holder has jurisdiction where the cause of action arises but one jurisdiction will not stop the owner from protecting its rights in another jurisdiction that is why evasion of jurisdiction becomes important in the light of justice, convenience, and diligence of IP holders. But on the other hand, once such jurisdiction is chosen by the party then multiple causes of actions cannot be maintained for the same violation or infringement in multiple jurisdictions, this is something wrong which can be termed as deliberate evasion of Intellectual Property infringement.

Personal Jurisdiction is defined under Black’s Law Dictionary as “A court’s power to bring a person into its adjudicative power; jurisdiction over a defendant’s rights, rather than merely over property interests.”

Or in other words, it refers to the power of the court to enter a binding judgment against a person or other legal entity especially the wrongdoer. All this clearly shows that jurisdiction is important for adjudication of matter and in such scenario deliberate evasion of jurisdiction cannot be easily overlooked. Recently IP market expands globally hence the jurisdiction is not limited to territory only. In cases like (India TV) Independent News Service Pvt and Banyan Tree Holding, it was observed that the foreign precedents were used by courts to justified exercising jurisdiction over the defendants even there is an evasion of jurisdiction by parties. On the contrary jurisdiction in our courts is constrained to territorial as well as pecuniary jurisdiction under Section 20(c) of Code of the Civil Procedure.

Moreover in India mere establishment of contact with the forum state or with the place of jurisdiction is not enough.Deliberate direction from the defendant and harm to the plaintiff is necessary for the existence of jurisdiction and mere evasion of jurisdiction cannot interfere with territorial jurisdiction. There is a difference between the theory of jurisdiction in India and in foreign jurisdictions. In India, for territorial jurisdiction, cause of action needs to arise at the place where the case is instituted, whereas, in international cases, it is clearly held that for serving interest in the society territorial jurisdiction can extend to a wide degree. So for the convenience of the IP holders, India should also extend its approach in deciding the jurisdiction of cases for better serving of Justice and Equity, India must enhance the quantum of jurisdiction for handling infringement cases.

[i]Setalvad, Conflict of Laws 203 (3 ed. Lexis Nexis 2014). This article has been written by Rachi Gupta, a final year law student at Vivekananda Institute of Professional Studies ,GGSIPU, New Delhi.