ARTICLE ON PARALLEL IMPORT INTO PAKISTAN
By ZAIN SHEIKH
FRAMEWORK OF COPYRIGHT LAW
2- (A) Subject matter of copyright
3- (B) Ownership of copyright
4- (C) Registration of copyright is not mandatory.
5- (D) New discloure requirements in respect of records and video films.
6- (E) Infringement of copyright
PARALLEL IMPORT INTO PAKISTAN
7- (A) Definition.
8- (B) Rights of exclusive licenses versus free movement of goods.
9- (C) Procedure for application to restrain import of infringing copies.
10- Enforcement of order of Registrar prohibiting import of infringing copies.
11- Power of Censor Board.
12- Criminal Prosecution of Importers.
13- Suit for infringement of copyright against importer.
I. INTRODUCTION :
Copyright Piracy has assumed global proportions due mainly to the rapid advance in technology. The emergence of new techniques of copying, apart from photocopying, such as recording, fixation and reproduction of audio visual programmes have led to trans national piracy on a massive scale. The object is to avoid payment of legitimate taxes to the Government and royalty to owners of copyright works. In the main there are three types of piracies namely, piracy of the printed word, sound recordings and cinematographic works. The loss of revenue to owners of copyright, and in particular to producers of cinematographic works and sound recordings due to transnational piracy is estimated in billions of dollars. In Pakistan as in many third world countries thousands of video parlours and rental outlets have sprung up which exhibit sell and hire out uncertified video films and pirated sound recordings of local and foreign copyright works. In order to combat this particular form of piracy stringent amendments have been made in the copyright laws of many third world countries at the insistence of International Organisations and the countries at the insistence of International Organisations and the countries which are badly affected by such illegal acts. Pakistan, as well, emended its Copyright Law in 1992.
II- FRAMEWORK OF COPYRIGHT LAW :
(A) Subject-matter of copyright
Pursuant to Section 10(1) of the Copyright Ordinance 1962 (hereinafter referred to as the said Ordinance) copyright subsists, throughout Pakistan, in the following classes of works:
(i) original literary dramatic, musical and artistic works;
(ii) cinematographic works (including video films of every
kind by virtue of copyright amendment Act, 1992 viz.,
sub-clauses (h) of Section 2 of the Ordinance).
The definition of literary works given in sub-clause (p) of Section 2 of the Ordinance has been expanded to include a new hybrid category of copyright work namely, computer programmes. Although laser discs embodying sound recordings and cinematographic films were not conceived of at the time the traditional categories of copyright works were formulated. The definitions of “cinematographic work”, “record”, “recording”, “audio-visual work” and “copy” are wide enough to encompass new forms of reproduction of copyright works such as “laser discs”. In Pakistan, in Section 2 of the said Ordinance, as amended by the Copyright Amendment Act, 1992, the following terms have been given wide meaning :
(ha) “copy” includes any material subject in which a work is fixed by any method and from which the work can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device;
(zb) “record” means any disc, tape, wire, perforated roll or other device in which sounds are embodied so as to be capable of being reproduced therefrom, other than a sound track associated with cinematographic work;
(zc) “recording” means the aggregate of the sound embodied in and capable of being reproduced by means of a record;
(ca) “audio-visual work” means a work which consists of a series of related images which are intrinsically intended to be shown by the use of the machine or device such as a projector, viewer or electronic equipment together with accompanying sound, if any, regardless of the nature of the material object, such as film or tape in which the work is embodied.
In the light of the abovementioned definition it is possible to conclude that laser discs fall within the ambit of protected copyright works in Pakistan.
(B) Ownership of Copyright :
As in the case of other copyright regimes around the world ownership of copyright in Pakistan also depends upon the nationality, domicile and place of first publication of the work. In order to determine who would be deemed to be the owner of copyright in Pakistan we would have to examine Sections 10, 13 and 54 of the Ordinance.
Section 13 of the Ordinance in relevant part, provides that “subject to the provisions of this Ordinance the author of a work shall be the first owner of the copyright therein……………..” and sub-section (d) of Section 2, in relevant part provides, “…….(v) in relation to cinematographic work the owner of the work at the time of its completion, (vi) in relation to a record, the owner of the original sound plate from which the record is made at the time of the making of the plate…………..” shall be deemed to be the author.
Sub-section 2 of Section 10 of the said Ordinance states, in relevant part, “copyright shall not subsist in any work………….other than a work to which the provisions of 53 and 54 apply, unless (i) in the case of a published work, the work is first published in Pakistan or where the work is published outside Pakistan, the author is at the date of such publication,………..a citizen of Paksitan or domiciled in Pakistan, (ii) in the case of an unpublished work………the author is at the date of making of the work a citizen of Pakistan or domiciled in Paksitan………..”
Section 54 of the said Ordinance, in relevant part, states :
“Power to extend copyright to foreign works. (1) The Central Government may, by order published in the official Gazette, direct that all or any of the provisions of this Ordinance shall apply –
(a) to works first published in a foreign country to which the order relates in like manner as if they were first published with Pakistan;
(b) to unpublished works, or any class thereof, the authors whereof were at the time of making of the work, subjects or citizens of foreign country to which the order relates, in like manner as if the authors were citizens of Pakistan ;
(c) in respect of domicile in a foreign country to which the order relates in the like manner as if such domicile were in Pakistan;
(d) to any work of which the author was at the date of the first publication thereof, or, in a case where the author was dead at that date, was at time of his death, a subject or citizen of a foreign country to which the order relates in like manner as if the author was a citizen of Pakistan at the date or time;
and thereupon, subject to the provisions of this Chapter and of the order, this Ordinance shall apply accordingly.”
Pakistan is a member of the Berne Convention and the Universal Copyright Convention. And pursuant to SRO No. 790 (K)/68 “International Copyright Order, 1968, all the provisions of the Copyright Ordinance, 1962, other than those of Chapter (IV) thereof (Rights of Broadcasting Organisations) apply to members of the Berne Copyrights Union and the Universal Copyrights Convention.
In the circumstances, it is possible to conclude that foreign works of most countries of the world including the U.S.A. and those in Europe are protected in Pakistan.
In addition to Pakistani and foreign owners of copyright, for purposes of civil remedies, Section 59 of the said Ordinance provides, in relevant part, that “unless the context otherwise requires the expression’ owner of copyright’ shall include………… (a) an exclusive Licensee………” Furthermore, sub-section (2) of section 74 of the said Ordinance, in connection with offence and penalties sates, in relevant part that “Any person having an interest in any copies of a work…………may within fifteen days of such seizure (of infringing copies) make an application to the Magistrate for such copies plates or recordings equipments being restored to him…………..”.
It is therefore, clear that for the purposes of civil and criminal remedies in Pakistan an exclusive licensee shall be deemed to be an owner of copyright to the extent of his interest and an aggrieved party in any legal proceedings to combat piracy in Pakistan.
(C) Registration of Copyright is not mandatory :
Section 39 of the Ordinance provides for registration of copyright, and in relevant part states as follows :
“Registration of copyrights. – (1) The author or publisher of, or the owner of, or other person interested in the copyright in any work may make an application in the prescribed form accompanied by the prescribed fee to the Registrar for entering particulars of the work in the Register of Copyrights.”
When Section 39 is read with Section 10(1) of the said Ordinance there is no doubt that copyright subsists by virtue of creation in respect of the expressly mentioned categories of works. Registration of copyright is merely optional. In any case as Pakistan is a member of the Berne Copyrights Union and the International Copyrights Union, Pakistan cannot impose any formal registration requirements in order to protect foreign copyright works within its own jurisdiction.
However, registration of copyright under Section 39 of the Ordinance by the author (owner) or other person interested in the work such as an exclusive licensee (distributor in Pakistan) shall constitute according to Section 42 of the Ordinance prima facie evidence that copyright subsists in the work and that the person shown in the certificate as the owner of the copyright is the owner of such copyright.
A certified copy of the registration in any country which is a member of any one of the International Conventions should facilitate registration of copyright in Pakistan. The owner of copyright or his exclusive licensee in Pakistan can apply for registration of copyright in Pakistan under Rule 4(1) of the Copyright Rules, 1967. The application is to be accompanied by a copy of the work along with the prescribed government filing fee in the sum of Rs. 500.00.
(D) New disclosure requirements in respect of
records and video films :
A new Section 57(A) has been added by Copyright Amendment Act, 1992. The said Section provides as follows :
“Particulars to be included in records and video film. – (1) No person shall publish a record in respect of any Paksitani work unless the following particulars are displayed on the record and on any container thereof, namely :
(a) the name and address of the person who has made the record;
(b) the name and address of the owner of the copyright in such work; and
(c) the year of its first publication.
(2) No person shall publish a video film in respect of any Pakistani work unless the following particulars are displayed in the video film when exhibited, and on the video cassette or other container thereof, namely :
(a) if such work is a cinematographic film required to be certified for exhibition under the provisions of the Motion Picture Ordinance, 1979 (XLIII of 1979), a copy of the certificate granted in respect of such work by the Central Board of Film Censors under sub-section (3) of section 5 of that Ordinance or by any other agency authorized by the Government for the purpose;
(b) the name and address of the person who has made the video film and a declaration by him that he has obtained the necessary licence or consent from the owner of copyright in such work for making such video film; and
(d) the name and address of the owner of the copyright in such work.”
The display of the abovementioned information will greatly facilitate the detection and prosecution of audio and video piracy. The failure to comply with the said provision is punishable with imprisonment which may extend to 3 years and/or with fine which may extend to Rs. 100,000.00. However, it is unfortunate that the requirement for displaying the said information is restricted to reproduction, recording, and video films in respect of Pakistani works only. This restriction, at any rate, does not affect the copyright in video film containing foreign works and the right to sue for infringement thereof.
(E) Infringement of Copyright :
A very expansive meaning has been given to infringement of copyright by Section 56 of the said Ordinance. The said Section is reproduced below :
“when copyright infringed. Copyright in a work shall be deemed to be infringed —–
(a) when any person without the consent of the owner of the copyright or without a licence granted by such owner or the Registrar under this Ordinance or in contravention of the conditions of a licence so granted or of any condition imposed by competent authority under this Ordinance, —
(i) does anything, the exclusive right to do which is by this Ordinance conferred upon the owner of the copyright; or
(ii) permits for profit any place to be used for the performance of the work in public where such performance constitutes an infringement of the copyright in the work unless he was not aware, and had no reasonable ground for suspecting that such performance would be an infringement of copyright; or
(b) when any person –
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade to such an extent as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into Pakistan,
any infringing copies of the work.”
Explanation :—- For the purpose of this section, the reproduction of a literary, dramatic, musical or artistic work in the form of a cinematographic work shall be deemed to be an ‘infringing copy’.
It is clear from a bare reading of the said Section that copyright in any work is deemed to have been infringed in Pakistan when any person, without the consent of the owner of the copyright or without a licence granted by such owner or in contravention of the conditions of a licence does anything the exclusive right to do which is conferred upon the owner of the copyright. Furthermore, in order to facilitate legal action against parallel imports, the section expressly encompasses import into Pakistan of any infringing copies of the particular work.
Infringing copy has been defined in sub-section (n) of Section 2, in relevant part as follows :
(ii) “in relation to cinematographic work a copy of the work or a record embodying the recording in any part of the sound track associated with the film;
(iii) in relation to a record, any record embodying the same recordings;…………..”
If such reproduction copy or record is made or imported in contravention of any provisions of this Ordinance.”
The exclusive rights granted to owners of copyright in respect of copyright in respect of cinematographic works and records are given in sub-sections © and (d) of Section 3 of the Ordinance which are reproduced below :
(c) in the case of a cinematographic work, to do or authorize the doing of any of the following acts, namely :–
(i) to make a copy of the work;
(ii) to cause the work in so far as it consists of visual images, to be seen in public and, in so far as it consists of sounds, to be heard in public;
(iii) to make any record embodying the recording in any part of the sound track associated with the work by utilizing such sound track;
(iv) to broadcast the work;
(d) in the case of a record to do or authorize the doing of any of the following acts by utilizing the record namely : —
(i) to make any other record embodying the same recording;
(ii) to use the recording in the sound track of a cinematographic work;
(iii) to cause the recording embodied in the record to be heard in public;
(iv) to communicate the recording embodied in the record by broadcast.
III. PARALLEL IMPORT INTO PAKISTAN :
Section 58 of the said Ordinance deals with parallel imports of infringing copies into Pakistan. The said Section is set out in full hereinbelow :
“Importation of infringing copies – (1) The Registrar, on application by the owner of copyright in any work or by his duly authorized agent and on payment of the prescribed fees, may, after making such enquiry as he deems, fit, order that copies made out of Pakistan of the work which if made in Pakistan would infringe copyright shall not be imported.
(2) Subject to any rules that may be made under this Ordinance, the Registrar or any person authorized by him in this behalf may enter any ship, vehicle, dock or premises where any such copies as are referred to in sub-section (1) may be found and may examine such copies.
(3). All copies to which any order made under sub-section (1) applies shall be deemed to be goods of which the bringing into Pakistan has been prohibited or restricted under section 16 of the Customs Act, 1969 (IV of 1969) and all the provisions of the Act shall have effect accordingly.”
Pursuant to sub-section 1 of Section 58, the Registrar may, on the application of the owner of copyright or his duly authorized agent and after making such enquiry as he deems fit, order that copies made out of Pakistan which if made in Pakistan would infringe copyright shall not be imported.
Section 58 itself does not make a distinction between importation of works illegally made in the country of manufacture and those legally made and/or first sold in the country of manufacture. Without a doubt importation of a work illegally made in the country of manufacture would fall within the ambit of Section 58 of the Ordinance and that of paramateria sections in any national copyright legislation. With respect to works legally made and/or first sold in the country of manufacture, the essential question would be whether the rights of the ‘owner of copyright’, which term in this context would include an exclusive licensee in Pakistan, have been infringed by the importation into Pakistan. Sub-section (1) of Section 2 of the Ordinance defines an exclusive licence as follows :
“Exclusive licence means” a licence which confers on the licensee and persons authorized by him, to the exclusion of all other persons (including the owner of the copyright) any right comprised in the copyright in a work, and ‘exclusive license’ shall be construed accordingly.
In the alternative one would have to examine whether there are any restrictive covenants on the resale of works in the country of import, which could be legally enforced either in the country of export or import.
(B) Rights of Exclusive licensee versus free movement of goods.
In the U.S.A. the Government has brought suits against various, British and American Publishers on complaints that their Agreements were in breach of the Anti-Trust Laws of the U.S.A., (commonly known as the Sherman Act) and consent decrees have been secured which ensure that the publishers are enjoined directly or indirectly from preventing any purchaser of a lawfully published work from importing or exporting such works to or from the U.S.A.
In the U.K., which is a member of the European Economic Community, certain public policy principles such as free movement of goods, have had a impact on national copyright law. Apart from such converse European Economic Community policies some jurists have even suggested that since copyright does not encompass subsequent sale and use there exists an implied permission to export work which have been marketed by the owner of copyright. And that expressly or impliedly a licence may confer authority to produce copies in one country and then to transship them to another, notwithstanding the prohibitions in the copyright law in the country of import.
Such converse policies and considerations in the U.S.A. and EEC countries were tested in cases brought against parallel importers in Australia and India. In Time-Life v/s Inter-state Parcel (1978) F.S.R. 251. Time-Life was exploiting its copyright in certain books by licensing them exclusively to a Dutch subsidiary, which in turn sublicensed an exclusive distributor in Australia. A parallel importer brought copies in the U.S.A., where it was first published, from the American licensee. The importer argued that he had an implied licence to import and sell the books in Australia by reason of the sale in U.S.A. in the ordinary course of business without restrictions on resale.
The high Court of Australia interpreted the Australian Copyright Act, which, in relevant part is paramateria to provisions on the Copyright Ordinance 1967 in Pakistan, and held that an importer who purchased books in the U.S.A. from an American Licensee of the copyright infringed the Australian Act by importing the books into Australia without the permission of the Australian Licensee. The Court further held that the unconditional sales in U.S.A. did not carry any implied licence to import into Australia. In the circumstances, it was not necessary to show an express limitation such as (“not for sale in Australia”), or surrounding circumstances such as knowledge of exclusive distributorship in order to negate the argument in support of implied licence to export and/or import.
There is no case law directly on point in Pakistan. However, in Penguin Books Limited, England v/s Indian Book Distributors and others AIR 1985 Delhi 29 reliance was placed on Time-Life International v/s Interstate Parcel Express Co. in order to prove secondary infringement by the importer. The case of the Plaintiff/Appellant Penguin Book Limited of England was that they were exclusive licensee and assignees of territorial rights in copyright in the imported books for India. Being exclusive licensee they claimed that they were entitled to restrain Indian Book Distributors from importing the parallel American Editions of 23 titles in India. The Court held at page 34, para 22, as follows :
“Importation of books which are ‘infringing copies of the work’ is an infringement. So is the sale thereof. If any person, without the licence of the copyright owner imports into India for the purpose of selling or distributing for purposes of trade the literary work the copyright is infringed. Any importation of infringing copies is therefore an infringement unless it is for the importer’s own use. American books may be lawfully published in America. But when the copies of those publications are imported into this country, an action for infringement would lie in this country against the importer in respect of those copies. An action would also lie against any person who for instance sold or distributed such copies here. Because the books have been imported and sold without the licence of the owner of the copyright or his exclusive licensee.”
The Court observed at page 35, para 23, that ;
“Infringing copy” is defined in S. 2(m). An infringing copy means a copy “imported in contravention of the provisions of the Act”. The central provision in S. 51 which says copyright shall be deemed to be infringed where any person without a licence granted by owner of the copyright” does anything the exclusive right to do which is by this Act conferred upon the owner of the copyright. The owner of copyright or his licensee has the “exclusive right” of printing or otherwise multiplying publishing and vending copies of the copyrighted literary production in India. India Distributors are infringing this right. Therefore India Distributors are deals in “infringing copies”. They are handling unlicensed copies.”
Before dealing with the issue of infringement the Court addressed the argument raised by the Defendants with respect to an implied right to import conceded by the Plaintiffs in a consent decree in the U.S.A. Under the terms of the consent decree the Plaintiffs were enjoined and restrained directly or indirectly from preventing or restricting any purchaser of lawfully published books from importing or exporting such books to or from the United States. In the U.S.A. such restrictions violate anti-trust laws. On this issue the Appellate Court was of the view that the relevant clause of consent decree has no extra territorial effect. According to the Court all jurisdiction is properly territorial, and that such a clause does not destroy or qualify the statutory rights belonging to publishers, which they may have in foreign countries under regional arrangements.
The Counsel for the Plaintiffs contended that importation is forbidden unless a licence is given. Unless this view is accepted not only will the right to grant exclusive licences be affected, but the national regimes of copyright, existing under International treaties, in so far as they provide for partial assignments and exclusive licences, would become ineffective. On this issue the Court held at page 32 in para 10 as follows :
“Copyright law is a territorial concept and each nation has its own laws. In America it may not be possible to place restrictions on the resale of books. But sale within the United States obviously cannot abrogate the effect of the laws of the particular place where they are imported. It appears to me that an importer would be subject to the law of the particular country to which he happens to take the books. The importer cannot disregard the laws of other countries. I would decide against the freedom (“liberty” as the learned Judge phrased it) from restriction claimed by India Distributors. The learned Judge upheld this freedom. In my respectful opinion he was wrong. American books cannot be sold into India so as to defeat the rights of the exclusive licensee.”
In the light of the abovementioned cases it evident that in India and Australia, and in all probability in countries outside the EEC the national copyright law will prevail over claims of implied licence to import. In this respect the copyright law in Pakistan is paramateria and the Courts are more than likely to take the same view. In the circumstances, it is possible to conclude that outside the U.S.A. and the EEC there is no general “concept International exhaustion” in national copyright regimes.
(C) ) Procedure for application to restrain import of infringing copies :
Pursuant to rule 18 of the Copyright Rules 1967 an owner of (which would include an exclusive licensee) or his duly appointed agent may make an application to the Registrar of Copyright on Form (VI), accompanied by the specified fee given in the second schedule, giving the particulars of the importation of infringing copies of the work. Thereafter the Registrar may, after making such enquiry as he deems fit, order that copies made out of Pakistan shall not be imported. Rule 19 of the said Rules requires the Registrar or any person authorized by him in this behalf to collaborate with the customs authorities for the purpose of examining alleged infringing copies on any ship vehicle dock or other premises where such copies may be found.
Apart form particulars of the Applicant and the copyright work, the following details with respect to the import of infringing copies is required :
(i) Country of origin of the infringing copies.
(ii) Name, address and nationality of the importer in Pakistan.
(iii) Name, address and nationality of the maker of the infringing copies.
(iv) Expected time and place of import of the infringing copies into Pakistan.
(d) Proceedings before Registrar are quasi judicial in nature.
An order under Section 58 of the Ordinance is made only after such enquiries as the Registrar deems fit. Once the order is made the offending copies are deemed to be goods whose import has been prohibited or restricted under Section 16 of the Customs Act, 1969. The Section gives the Federal Government the authority to prohibit or restrict importation or exportation of certain goods notified in the official Gazette. The said section is reproduced here below :
“Power to prohibit or restrict importation and exportation of goods. The Federal Government may, from time to time, by notification in the official Gazette, prohibit or restrict the bringing into or taking our of Pakistan of any goods of specified description by air, sea or land.”
However, there is one fundamental difference between a notification in the official Gazette under Section 16 of the Customs Act, 1969 and an order under Section 58 of the Ordinance, whereas the former is a quasi legislative Act the latter is quasi judicial in character. The Registrar shall exercise his discretion as to whether to pass an order under Section 58 of the Ordinance in the light of all the circumstances of the case. He takes into consideration whether (a) the copies would infringe if made in Pakistan, (b) the applicant owns the copyright or is the exclusive licensee, and (c) any defence of the respondent importer, such as a possible legally enforceable right to import into Pakistan. An appeal is provided to the Copyright Board under Section 75 of the Ordinance.
In this connection, under the Customs Act, 1969 a clear distinction is made between smuggled goods which fall under Section 2(s) and goods which are restricted or prohibited by Notification or any other Act, such as the Copyright Act which fall under Section 16 of the Customs Act, 1969. and the punishment in respect of the limited items mentioned or notified under Section 2(s) is also much more severe. Importation of infringing copies would fall in the prohibited category of Section 16 read with Section 58 of the Copyright Act.
Since the Registrar of Copyrights performs a quasi judicial function under section 58 of the Ordinance he is required to take expeditious action on application for prohibiting imports of infringing copies. In the case of Gramaphone Company of India Limited v/s Birendra Bahadur Panday 1 (1984) 25 SCC 534; AIR 1984 SC 667 a writ in the nature of mandamus was filed in the High Court of Calcutta by the Applicant for an order by the Registrar of Copyright to prohibit the import of infringing copies. The Petitioner felt that the Registrar was not taking expeditious action in the matter. The Petitioner apprehended that in the absence of an order by the Registrar the copies would be released by customs authorities for tran shipment to Nepal. On the request of the Petitioner the Court issued a rule nisi and made an interim order which permitted the Petitioner to inspect the consignment of cassettes and if any cassettes were suspected to contain infringing material they were to be detained pending the hearing before the Registrar which was required to be completed within eight weeks from the date of the order of the High Court.
In Gramaphone Company of India Limited v/s Birendra Bahadur Pandey supra a second issue with respect to the meaning of the word “import” was involved. The Respondent argued and the Court of first appeal held that the word “import” did not merely mean bringing the goods into India but required a further act of incorporating and mixing of the imported goods with goods in the territory. In other words the import should be for the purpose of putting the infringing copies into the stream of commerce in India. As the infringing copies were held in transit enroute to Nepal the Court held there was no import for purposes of India. However, in appeal to the Supreme Court the decision of the first Court of Appeal on the issue was reversed. The Supreme Court observed that in order to determine the meaning of the word “import” we have to look no further than the language of Section 53 (the equivalent of Section 58 of the Ordinance). The Court held that the language of Section 53 does not justify reading the words “imported for commerce” for the word imported. Nor was there any reason to assume that such was the object of the legislature. The Court was of the view that even under the Customs act import has been defined to mean “bringing into India from a place outside India”. The Court had no hesitation in concluding that the word import is not limited to importation for commerce only but includes goods in transit awaiting tran shipment to another country.
IV. ENFORCEMENT OF ORDER OF REGISTRAR PROHIBITING IMPORT OF INFRINGING COPIES :
Once an order, under Section 58 of the Ordinance, has been made by the Registrar, the import of infringing copies shall be deemed to be illegal and prohibited and all provisions of the Customs Act shall apply to the impugned import.
Pursuant to Rule 19 of the Copyright Rules 1967, the Registrar of Copyrights is required to act in collaboration with customs authorities for purposes of examination of the impugned copies.
After the decision of the Registrar, the owner of copyright would have to be lodge a complaint with the Collector of Customs, alongwith supporting documentation, including the order of the Registrar under Section 58 of the Ordinance. The Collector of Customs shall pass orders thereon directing the Deputy Collector or an Assistant Collector to take action in the matter. At the request of the Agent for the complainant he has the power to detain the consignment of infringing material pending the proceedings before the Customs authorities. The detention is affected by issuing necessary instructions to relevant customs officials not to process the Bill of Entry with respect to the impugned consignment.
The Deputy or Assistant Collector concerned will then give notice of hearing to the importer to show cause why the consignment should not be seized. If satisfied at the hearing, the consignment shall confiscated under Section 17 of the Customs Act 1967, which is reproduced herebelow:
“Detention and confiscation of goods imported in breach of Section 15 or Section 16. where any goods are imported into or attempted to be exported out of Pakistan in violation of the provisions of Section 15 or of a notification under Section 16, such goods shall, without prejudice to this Act, or any other penalty to which the offender may be liable under this Act, or any other law, but subject to rules, be liable to detention and confiscation.”
It is clear that the confiscation and detention under Section 17 of the said Act is without prejudice to any other penalty to which the offender may be liable under the Act or any other law.
Under Section 168 of the said Act an appropriate Customs Officer may also seize any goods liable to be confiscated and any documents or things which may be useful as evidence in proceedings under the Act and issue a Show Cause Notice within two months of seizure.
Pursuant to Section 156(1)(9), the penalty for importing such prohibited or restricted goods is that, (a) such goods are liable to confiscation, (b) and any person concerned in the offence shall be liable to a penalty not exceeding two times the value of the goods.
Finally, under Section 202 when a penalty is imposed on any person under this Act the appropriate officer may either (a) deduct such amount from money owing to such person which may be under the control of the Customs authorities, or (b) recover such amount by detaining and selling any goods belonging to such person which are under the control of the customs authority. In the alternative, if the amount cannot be recovered as stated above the appropriate officer may recover such penalty as arrears in land revenue.
(e) Ownership of infringing copies :
The right of customs authorities to sell prohibited or restricted goods in order to recover penalties imposed on the offender are qualified in the case of import of infringing copies. Section 202 of the Customs Act 1969 must be read with Section 63 of the Ordinance. Section 63 is reproduced hereinbelow :
“Right of owner against persons possessing or dealing with infringing copies. All infringing copies of any work in which copyright subsists, and all plates used or intended to be used for the production of such infringing copies, shall be deemed to be the property of the owner of the copyright, who accordingly may take proceedings for the recovery of possession thereof or in respect of the conversion thereof.
Provided that the owner of the copyright shall not be entitled to any remedy in respect of the conversion of any infringing copies, if the opponent proves –
(a) that he was not aware that copyright subsisted in the work and he had reasonable ground for believing that copyright did not subsist in the work of which such copies are alleged to be infringing copies; or
(b) that he has reasonable ground for believing that such copies or plates do not involve infringement of the copyright in any work.”
Pursuant to the said Section all infringing copies belong to the owner of copyright and he therefore has the right to recover the possession of the unsold infringing copies and the price of copies sold by way of an action for conversion.
In case the infringing work has not been incorporated with any other non infringing material, the infringing copies can be recovered by the owner of copyright. However, once the said incorporation and/or sale occurs the remedy of the owner of copyright is only by way of an action for conversion. Although damages for infringement and damages for conversion are not alternative (mutually exclusive) remedies, in assessing damages overlapping will be avoided.
V. POWERS OF CENSOR BOARD :
The Motion Pictures Ordinance, 1979 (MPO) was promulgated to provide for censorship and regulation of exhibition of films in Pakistan. Section 4 of the Motion Pictures Ordinance, 1979 prohibits the exhibition of uncertified films and states, in relevant part, as follows :
“4(1). No person shall make or arrange a public or private exhibition of a film by means of cinematograph unless the film has been duly certified for public exhibition by the Board, provided that nothing in the sub-section shall be deemed to apply to the exhibition, in the residential premises of any person, of a film which only records events in the life of such person or any member of his family.
Sub-section 5 of Section 8 of the Motion Pictures Ordinance, 1979 provides for seizure of uncertified film and states, in relevant part as follows :
(5) Where a film in respect of which no certificate has been granted under this Ordinance is exhibited…………….any police officer not below the rank of Inspector may, upon a report in writing made by the Board or by a person authorized by it in this behalf, or under the orders of the District Magistrate, enter any place licensed for the exhibition of films in which there is reason to believe that the film has been of is being exhibited, search it and seize the film and projection equipment.”
According to sub-section 5 of the Section 8 if a complaint is lodged with the District Magistrate of a particular area, he may authorize a raid by the police in order to seize uncertified films which are being exhibited. If the procedure before the Registrar of Copyrights is found to be protracted and/or the films have been released by the Customs authorities it might be worth considering the possibility of applying to a District Magistrate in order to seize the infringing copies, on the basis of sub-section 5 of Section 8 of Motion Pictures Ordinance, 1979 as well.
The penalties for exhibiting an uncertified film are given in Section 18 of the Motion Pictures Ordinance which states, in relevant part, as follows
“18(1). Whoever –
(a) exhibits or causes or permits to be exhibited in any place, or abets the exhibition of, any film which has not been certified by the Board or which, when exhibited, does not display the prescribed mark or has been altered or tampered with since such mark was affixed thereto; or
(b) without lawful authority, alters or tampers with, in any way, any film after it has been certified; or
(c) fails to comply with the provisions of section 5 or of any order made under this Ordinance;
shall be punishable with imprisonment for a term which may extend to three years, or with fine which may extend to one lac rupees, or with both, and, in the case of a continuing offence, with a further fine which may extend to ten thousand rupees for each day during which the offence continues.”
The punishment for a person who exhibits an uncertified film is severe and he is subject to a heavy fine, which may extend to ten thousand rupees for each day during which the offence continues. However, it is provided in sub-section 5 of Section 18 that no Court shall take cognizance of an offence punishable under the said section except upon complaint by the Censorship Board or a person authorized by it. In the circumstances, even prosecution of offenders under the said section is a protracted two step procedure. In spite of the fact that the remedy against an offender under the said section is not efficacious prosecution of some incorrigible offenders might serve as a detterent, as the punishment and fine would be in addition to any fine and punishment under the Copyright Ordinance, 1962 and any damages for infringement that may be recovered if a suit were filed against the offender.
VI. CRIMINAL PROSECUTION OF IMPORTER :
The Copyright Ordinance, 1962 as amended by the Copyright (Amendment) Act of 1992 itself provides servers criminal sanctions against infringement of copyright.
An importer could also be deemed to be a person who commits secondary infringement. Pursuant to Section 66 of the Copyright Ordinance, 1962, such a person shall be punishable with imprisonment which may extend to 3 years or with fine which may extend to one hundred thousand rupees or with both.
Section 66 (B) and 66(C) of the Ordinance which were inserted in 1992 and provide the punishment and fine for infringement of sound recordings cinematographic and audio visual works are reproduced hereinbelow:
“66(B). Penalty for unauthorized reproduction or distribution of counterfeit copies of sound recording and cinematographic work. Any person who unauthorisedly makes or distributes counterfeit of sound recording and cinematographic work for the purpose of business profit or gain shall be punishable with imprisonment which may extend to three years, or with fine which may extend to one hundred thousand rupees, or with both.”
“66(c). Penalty for exploitation and appropriation of recording or audio-visual work intended for private use. – Any person who for the purpose of business, profit or gain exploits or appropriates any sound recording or audio-visual work intended for private use, shall be punishable with imprisonment which may extend to three years, or with fine which may extend to one hundred thousand rupees, or with both.”
In the case of subsequent offences, Section 70(B) of the provides for an enhanced fine upto rupees two hundred thousand.
Section (69) of the Ordinance provides an additional penalty for making false statement for the purpose the purpose deceiving or influencing any authority or officer The offender is liable to suffer imprisonment for upto two years and fine which may extend to one hundred thousand rupees.
Section 72 of the Ordinance provides that no Court inferior to that of a Magistrate of the first class shall try any offences under the Ordinance and sub-section (3) of Section 74 provides that all offences under the Ordinance and cognisable and non bailable. This last provision will certainly have a detterent effect once infringers release that police officers can take action against them without the necessary delay in securing search warrants and that they will not be entitled to bail as a matter of course.
Since offences under the Copyright Ordinance 1962 have now become cognisable the procedure for initiating criminal prosecution has also been simplified. A person interested in the Copyright may file a First Information Report under Section 15A the Criminal Procedure Code regarding the infringement. In support of the complaint the interested party may be required to show some evidence in support of his exclusive rights in the copyright material. Thereafter under Section 157 of the Criminal Procedure Code if the officer incharge of a Police Station suspects the commission of a cognisable offence he shall forthwith send a report to the Area Magistrate and proceed to investigate the facts and circumstances of the case and if necessary take measures for the discovery and arrest of the offender.
In this connection section 74 of the Ordinance provides Police Officer with the power to seize infringing copies plates and recording equipments. The said Section in relevant part, provides as follows :
“Any police officer, not below the rank of sub-Inspector, shall if he is satisfied that an offence under Chapter XIX in respect of infringement of copyright in any work has been, is being, or is likely to be, committed, seize without warrant equipments used for the purposes of making infringed copies of the work and all plates and recording equipments u used for purpose of making infringed copies of the work, wherever found, and all copies, plates and recording equipments so seized shall, as soon as practicable, be produced before a Magistrate.”
VII. SUIT FOR INFRINGEMENT OF COPYRIGHT AGAINST IMPORTER:
As the importation of infringing copies would also constitute a violation of Section 56 of the Ordinance (which deal with infringement of copyright). A civil suit for infringement of copyright against the importer in Pakistan can be instituted by the copyright owner or his exclusive licensee in Pakistan, claiming damages and an injunction to stop the violation. A prayer for seizure of the infringing copies in Pakistan would be included as part of the relied claimed.
In Penguin Books Limited v/s India Book Distributors AIR 1985 Delhi 29 the Defendants claimed that the suit for infringement and grant of injunction was misconceived and the remedy, if any lay with the Registrar of Copyrights. On this issue the Court observed that the argument was meritless it was of the view that Section 53 (corresponding provision in Pakistan Section 58) gives an additional remedy.
The Court held: at page 36 in para 30 that
“Section 53 is no bar to the owner of the copyright or licensee from claiming civil remedies for infringement of copyright given in Ch. XII. S. 53 cannot be called a civil remedy notwithstanding the fact that the Registrar is enjoined to make an enquiry into the matter of importation of infringing copies under S.53. The enquiry (before the Registrar) is at best quasi judicial it cannot be equated with judicial or civil remedies conferred by law for infringement of right (S.55)”.
The Court further held at page 37 “For infringement civil remedies are given in S.55. They are injunctions, damages and accounts. Confiscation is not provided. Nor has the Customs Act any application. Confiscation is provided in S.53 by Registrar and in S.66 by Magistrate dealing with offences. So the nature of the remedy is different. It is true that in each case the common factor is an ‘infringing copy’. But remedies are different. Under S.53 it is confiscation. In S.51 injunction, damages and accounts. In S.66 imprisonment, fine and delivery of infringing copies to the copyright owner.”
VIII. CONCLUSION :
As outlined above, Section 58 of the Ordinance provides a two step procedure for stoping the parallel import of infringing copies into Pakistan. Once the Registrar o Copyrights has passed an order prohibiting the import one can make sue the provisions in the Customs Act 1969 in order to seize the impugned infringing copies and thereafter initiate criminal prosecution against the importer. If the Registrar of Copyrights does not act expeditiously in respect of an application under Section 58 it would, on the authority of the Gramaphone case be possible to file a writ in the High Court for an order permitting the petitioner to inspect the impugned consignment and allowing the detention of suspected infringing material pending the hearing before the Registrar.
In the alternative, or if the infringing copies have been released by the Customs authorities or are already in the market one can, independent of other remedies, initiate criminal proceedings and/or conduct raids in order to apprehend the offender and seize the infringing copies. As stated above criminal prosecution has been greatly facilitated by the amendments in the copyright law in 1992 which made offences thereunder cognisable and bailable.