1. ' MUHAMMAD SAYEED AKHT AR, J.---The facts giving rise to this appeal are that plaintif fs/respondents 1 and 2 filed a suit on 10-12-1988 for damages for infringement of copy right, permanent injunction and rendition of accounts against defendants/appellant and respondents 3 to 7. It was averred in the plaint that plaintif f No,1 had done his doctorate in Geography from University of Punjab and from the University of London. Plaintif f No,2 had also doctora te to her credit in the same discipline from the University of London.
2. By dint of their hard work, the plaintif fs jointly prepared and compiled an "Atla s" (in English and Urdu) under the title "Students Atlas for Pakistan" with the intention to publish the same for sale in the open market for profit as well as for enhancement of their intellectual status. The plaintif fs acting on the representations made by defendants Nos,5 and 6 (respondents 6 and 7) entered into an agreement with them on 7-7-1980 for publication and sale thereof on payment of royalty to the plaintif fs in acknowledgement of their intellectual property . Before finalizing the deal with the plaintif fs, the defendant No,5 (respondent No,6) struck a clandestine bargain with defendant No,1 (respondent No,3) regarding copyright in the "Atlas" to the total exclusion of the plaintif fs. The terms of the same were contained in a letter of agreement dated 21-12-1978 addressed to the Manager of defendant No,1 /respondent No,3. The plaintif fs came to know about the deal only when they came across their intellectual property i.e. "The Student Atlas for Pakistan" in the market published by Ferozesons, defendant No,4 and showing the copyright thereon in the name of defendant No,1/ respondent No,3. The plaintif fs demanded the expla nation from the defendants about the piracy on the plaintif fs' property and infringement of their copyright upon which the solicitors of defendants 1 to 3/respondents 3 to 5 supplied a copy of the agreement dated 12-12-1978 between the defendants and a copy of another agreement executed on 3-6-1985 by defendant No,1 conferring on defendant No,4 (Ferozesons) the rights to publish the said "Atlas".
3. The defendants had no right in the "Atlas" and the publication of the same had infringed the copyright of the plaintif fs. The plaintif fs offered the defendants 1 to 4 to settle the matter out of Court. The defendants 1 to 3/respondents 3 to 5 through their solicitors not only acknowledged the copyright of the plaintif fs in the "Atlas" but also of fered to pay the plaintif fs as follows:--
(a) For the English version, a sum of 5,500
(b) For the Urdu version,
(i) a sum of 5,500 on an outright basis if the plaintif fs assigned all their interest and copyright in the Urdu edition, to defendant No,1, or
(ii) a sum of 3,000 against an option for the plaintif fs to assign their interest and copyright in the Urdu edition to defendant No,1, if such option was exercised immediately and, a further sum of Pounds Sterling 5,000 later, and
(c) A reasonable contribution towards costs.
4. ' The plaintif f demanded a sum of 16,00 0 plus costs from the defendants but they refused to settle the matter out of Court and declined. To pay any compensation. The plaintif fs claimed Rs,20,00,000 by way of compensation from the defendants. In addition thereto the plaintif fs also claimed damages amounting to Rs,5,00,000 on account of mental torture, loss of earnings and profit with interest. The following prayer was made:- "The plaintif fs., therefore humbly pray that a decree be passed with costs against the defendants jointly and severally:--
(a) Directing the defendants to deliver to the plaintif fs their original work together with the unsold copies of the Atlas of the plaintif fs.
(b) Restraining the defendants from printing, publishing and selling any more copies of the "Students Atlas for Pakistan", whether in Pakistan or any other country of the world and from using the work of the plaintif fs directly or indirectly in any manner and in any form including by ways of refere nce or reproduction of any part of the Atlas belonging to the plaintif fs.
(c) Directing the defendants to render true and full accounts of the use and sales made of the Atlas in question, from its very inception.
(d) For a sum of Rs,25,00,000 by way of damages/ compensation or any higher sum found due from the defendants to the plaintif fs after rendition of accounts, with future interest @ 14% per annum with quarterly rests up to the date of its full and final payment or its realization.
(e) Such other relief as the Court may deem fit to be awarded to the plaintif fs against the defendants including confiscation of the unsold copies of the Atlas."
5. ' Defendants 5 and 6 (respondents 6 and 7) were proceeded against ex parte on 7-6-1993. The defendants 1 to 3 were proceeded against ex parte on 8-9-1993. Subsequently an offer was made to the plaintif fs by defendants 1 to 3 (respondents 3 to 5) to pay 7,500 as damages which was accepted by the plaintif fs on 18-10-1994.
6. ' Defendant No,4/appellant filed a written statement and contested the suit raising objection that the suit was barred by time under section 54 of the Specific Relief Act and that it had been instituted after three years from the alleged invasion of the copyright. It was alleged that the defendant/appellant entered into an agreement with defendant No,1 on his assurance that it was the sole owner of the copyri ght in question. The defendant had no knowledge of any body else having the copyright in the "Atlas". The defendant had acted in good faith as per terms and conditions of a valid agreement between it and defendant No,
1. The infringement of the copyright, if any, of the plaintif f and liability of the defendant to pay compensation for infringement of the same was specifically denied. "Atlas" in question was purchased by the defendant under a legal and valid contract for Rs,3,88,176 including the foreign exchange element equivalent to Rs,3,63,389. It was stated that the defendant had not imported more than 24500 copies of the "Atlas".
7. ' Out of the diver gent pleadings of the parties, the following issues were framed:--
(1) Whether the plaintif fs are the owners of the copyright of the Atlas in question, if so, has there been any infringement of the said copyright by defendants? OPP
(2) Whether the defendants are liable to pay damages to the plaintif fs for the infringement of their copyright, if so, to what extent? OPP
(3) Whether the suit is not competent against defendant No,4? OPD-4
(4) Whether the suit is frivolous and malicious and if so whether the defendant No,4 is entitled to special costs.
8. If so, to what extent? OPD-4
(5) Whether the plaintif fs entered into an agreement with defendants Nos,5 and 6 for the publication of "Atlas" and the defendants Nos,5 and 6 agreed to pay them a settled amount of royalty therefor? OPP
(6) Whether during the negotiations between defendants Nose.5 and 6, the defendants gained access to manuscript and clandestinely entered into an agreement with defendant No,1 for publication of "Atlas" to the exclusion of the plaintif fs? OPP
(7) Relief.
9. ' The learned trial Court/ District Judge, Lahore after recording the evidence of the parties decided Issues 1, 2, 5 and 6 in favour of the plaintif fs/respo ndents 1 and 2. Issues Nos,3 and 4 were decided against defendant/ appellant, consequently the suit of the plaintif fs/ respondents was decreed on 5-12-1994 granting the following relief:--
(a) The defendants Nos,1 to 3, as agreed to by them, shall pay 7500 (Pound s Sterling), as damages to the plaintif fs, which in Pakistani currency comes to Rs,3,62,400, as the present market rate of one Pound Sterling is Rs,48.32. The defendants Nos,4 to 6 shall pay the remaining amount of Rs,21,37,600 to the plaintif fs as damages/compensation.
(b) The defendants are directed to deliver to the plaintif fs their original work together with the unsold copies of the Atlas of the plaintif fs.
(c) The defendants are restrained from printing, publishing and selling any more copies of the "Students Atlas for Pakistan", under this title or any other , whether in Pakistan or in any other country of the world and from using the work of the plaintif fs directly or indirectly in any manner and in any form including by way of reference of the plaintif fs.
(d) The defendants are directed to render true and full accounts of the use and sales made of the Atlas in question, from its very inception.
2. The learned counsel for the appellant contended that the plaintif fs/respondents did not get the copyright registered before the Registrar of Copy rights, in the absence of issuance of certificate by the Registrar of the Copyrights no infringement of the copyright takes place nor can it be alleged. Learned counsel referred to sections 3, 9, 13, 38, 39, 40, 42 and 56 of the Copyright Ordinance, 1962. Relia nce was placed on M/s. Mishra Bandhu Karvalayua and others v. Shivratanlal Koshal (AIR 1970 Madhia Predesh 261) and S. Sibtain Fazli v.
(1) Star Film Distributors, (2) Muhammad Ali Khan (PLD 1964 SC 337). Learned counsel further argued that it was admitted by the plaintif f that only 25,000 copies of the "Atlas" were published and imported. The price of per "Atlas" was Rs,40 and the plaintif f was entitled to 10% royalty under the agreement. The plaintif fs have received more than their entitlement. Reliance was also placed on East Pakistan School Textbook Board v.
10. Debabrata Chaki and others (PLD 1968 Dacca 455), M. Yamin Qureshi v. Islamic Republic of Pakistan and another (PLD 1980 SC 22) and Government of Pakistan through the Secretary P.W.D. (Irrigation Branch), Lahore v . Mian Muhammad Hayat ( PLD 1976 SC 202 ).
11. ' Conversely the learned counsel for the respondents submitted that registra tion of the copyright was not mandatory it was only optional. Learn ed counsel referred to section 39 of the Copyright Ordinance, 1962.
12. Reliance was placed on M/ s. Manojah Cine Productions v. A. Sundaresan and another (AIR 1976 Madras 22), Stsang and another v. Kiran Chandra Mukhopadhyay and others (AIR 1972 Calcutta 523), Glax Operations U.K. Ltd. Middlesex (England) and others v. Samrat Pharmaceutical, Kanpur (AIR 1984 Delhi 265). Learned counsel further . Submitted that P.W.-4 stated that they ,suffered loss to the tune of Rs,25,00,000 and the witness was not cross-examined on this point and the same remains unrebutted. Relies on Dhjaram Dutt Dhawan v. Ram Lal Suri etc. (AIR 1957 Punjab 161), Associated Publishers (Madras) Ltd. v. K. Bashyam alias `Alya' and another (AIR 1961 Madras 114), Syed Iqbal Hussain v. Mst. Sarwari Begum (PLD 1967 Lahor e 1138) and 1991 SCMR 300).
4. We have gone through the judgment of the trial Court and perused the record and the relevant provisions of Copyright Ordinance, 1962. Before us the copyright of the plaintif fs/respondents has not been contested by the appellant. However it was urged that it was mandatory to get the copyright registered under section 39 of the Copyright Ordinance, 1962 for alleging the infringement of the same. The Honourable Supreme Court in the case of S. Sibtain Fazli v. (1) Star Film Distributors, (2) Muhammad Ali Khan (supra) traced the history of copyright which is reproduced as under:- "The position in Pakistan with respect to copyrights of foreign origin is as follows: In 1911 the British Parliament enacted the Copyright Act which as provided in section 25 was to apply to all British dominions including India. It came into force in India, however , on 31st October 1912, when there was a Proclamation by the Government of India in the Official Gazette under section 37(2) (d) of the Act. In 1914 was enacted the Indian Copyright Act, which made some modifications in the (English) Copy right Act in its application to India which are not relevant for the present discussion. The (English) Copyright Act protected only such copyright as had its origin in the British dominions, but there was a provision in section 29 empowering His Majesty , to apply the Act, by an Order -inCouncil, even to a foreign country . When India was partitioned the (English) Copyright Act, as modified by the Indian Copyright Act became applicable to both the countries but the two countries became foreign count ries for each other , and there being no Order -in-Council relating either to India or to Pakistan, Copyright having its origin in one country was deprived of protection in the other .
13. Copyright of Indian origin is not recognizable in Pakistan and the same is the position with respect to copyright of Pakistani origin in India. India has now repealed the Act of 1911 and has enacted the Copyright Act of 1957, but the last mentioned Act has not af fected the situation in relation to Pakistan."
14. ' The Copyright Act of 1911 passed by the Parliament of the United Kingdom and the Copyright Act, 1914 (III of 1914) were repealed by section 83 of the Copyright Ordinance, 1962.
15. ' Sections 39 and 42 of the Copyright Ordinance, 1962 are reproduced as under:-- 39.. 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.
(2) On receipt of an application in respect of any work under subsection (1), the Registrar shall enter the particulars of the work in the Register of Copyrights and issue a certificate of such registration to the applicant unless, for reason to be recorded in writing, he considers that such entry should not be made in respect of any work.
42. Register of Copyrights to be prima facie evidence of particulars entered therein.---(1) The Register of Copyrights and the indexes shall be prima facie evidence of the particulars entered therein and documents purporting to be copies of any entry therein or extracts therefrom certified by the register and sealed with the seal of the Copyright office Shall be admissible in evidence in all Courts without further proof of production of the original.
(2) A certificate of registration of copyright in a work shall be prima facie evidence that copyright subsists in the work and that the persons shown in the certificate as the owner of the copyright is the owner of such copyright.
16. ' A bare reading of section 39 shows that the use of expression "may" is permissive and does not make it obligatory for an author to get the copyr ight registered. We' are unable to infer from the language of section 39 any meaning making the registration compulsory or mandatory for the enforcement of the copyright. The natural and ordinary meaning of the word "may" would make the registration optional and not compulsory . The words "may" and "shall" in legal parlance are interchangeable, depending upon the context in which they are used but legislative intent is to be seen and given effect to. See Muhammad Saleh v. The Chief. Settlement Commissioner , Lahore and 2 others (PLD 1972 SC 326), Qamaruddin v. Muhammad Sadiq and others (2001 CLC 848) and Craies on Statute Law. Similarly the phrase used in section 42 says that the Register of Copyrights and indexes shall he the prima facie evidence of the particulars entered therein. It only raises a presumption that the person whose name is entered in the register is the autho r of the copyright. It certainly does not Make the presumption conclusive. The authority M/ s. Mishra Bandhu Karvalayua and others v.
17. Shivratanlal Koshal (supra) relied upon by the learned counsel for the appellant has not been followed in the other High Courts of India. See M/ s. Manojah Cine Productions v. A. Sindaresan and another (AIR 1976 Madhya Perdesh 22), Nav Sahitya Parkash and others v. Anand Kumar and others (AIR 1981 Allahabad 200), Satsang and another v. Kiran Chandra Mukhopadhyay and others (AIR 1972 Calcutta 533) and Glax Operations U.K. Ltd. Middlesex (England) and others v. Samrat Pharmaceutical, Kanpur (AIR 1984 Delhi 265). It was observed in Glax Operations U.K. Ltd. Middlesex (England) and others v. Samrat Pharmaceutical, Kanpur (supra) as under:-- "It is apparent from a plain reading of section 45 that it is discretionary with any author of any work to apply for the registration of copyrights and that registration as such does not confer any rights. There is no other provision at all in the Copyright Act which confers rights on account of registration of a copyright. Therefore, copyrights exist whether the registration is done or not and the registration is merely a piece of evidence as to when a certain author started claiming copyrights in some artistic or some other work."
18. ' The mere failure to get the copyright registered does not invalidate or impair the copyright, nor destroy the right to sue for copyright infringement. See 18-Corpus Juris Secundum, para.67 . Registration is not a condition precedent to the securing and preserving of a copyright. This leaves no scintilla of doubt in our mind that the registration of the copyright with the Registrar is not mandatory for bringing a suit for infringement of the same.
19. ' The next contention of the learned counsel for the appellant is that no infringe ment of the copyright has been caused by the appellant. Section 56 of the Copyright Ordinance, 1962 states as to when the infringement of the copyright takes place. It reads as under:-
56. 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 a 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 of fers 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.
20. ' The, case of the plaintif f is squarely covered by clause (b) of section 56 of the Copyright Ordinance, 1962.
21. ' Having come to the conclusion that the registration of the copyright is not mandatory and the infringement of the copyright having been made, the question of damages remains to be settled. Para. 16 of the plaint shows that only 24550 copies of the "Atlas" have been printed and published. The price of the "Atlas" per copy is admitted to be Rs,40. The memorandum of agreement dated 7th of July, 1980, Ext. P.2 shows that the plaintif fs were entitled to 10% royalty to be shared equally between them. Similarly agreement dated 2-12-1985 Ext.P- 228, between plaintif fs and the appellant granting the right/licence to print and publish the copyright titled "Map of Punjab" also shows that the plaintiffs were to be paid 10% royalty on the net retail price of the map, to be equally divided between the two authoRs, We can safely come to the conclusion that the plaintif fs are entitled to 10% royalty on the net retail price. Their royalty on the sale of 24550 copies of "Atlas" comes to about Rs,90,200. The plaintif fs/respond ents have already received 7,500 which in Pak currency comes to Rs,3,62,400 (as calculated by the learned trial Court @ Rs,48.32). This amount exceeds than the 10% royalty to which the plaintif fs/respondents are entitled to as per terms of agreement Ext.P-228. The plaintif fs claimed damages as follows:--
(i) Rs,20,00,000 by way of compensation from all the defendants jointly and severally .
(ii) Rs,5,00,000 on account of mental torture, loss of earnings and profits.
22. ' The damages are classified into general and special damages. General damages flow from the injury the plaintif f has complained. These damages must be averred and proved subsequently . Special damage is the item of loss which the plaintif f alleges to be the result of the defendant's infringem ent. The damages are further subdivided into:--
(a) Non-pecuniary damages.
(b) Pecuniary loss.
23. "All who united in the infringement are jointly and severally liable for the damages regardless of the profits realized by them". See 18 Corpus Juris Secundum, Para.135, In the case of Exchange Telegraph Co. v. Gregory & Co. (1896) 1 QB 147, it was held that:-- "It is not necessary to give proof of specific damage. The damages are at lar ge."
24. ' The above principle of law laid down by Lord Esher M.R. Is still the good law: Halbury's Laws of England, para.947 reads as under:- "947. Damages for infringement .---In an action for infringement of copyright it is not necessary to give proof of actual damage; the damages are at large. Even in a case where the only damage appearing is that the infringement complained of tends to vulgarize the plaintif f's work, the plaintif f is entitled to nominal damages and costs. The damages assessed may include, in addition to the amount which would have been received by the plaintif f if he had himself been able to sell the copies sold by the defendant, a substantial sum for injury to trade by reason of the fact that the defendant's prices were lower than those usually charged by the plaintif f.
25. Other relevant considerations in the assessment of damages are the profit which the plaintif f would have made and the licence fee that he would have char ged.
26. ' The Court may award such additional damages as it may consider appropriate when it is satisfied that ' effective relief would not otherwise be available to the plaintif f having regard to the flagrancy of the infringement and any benefit shown to have accrued to the defendant by reason of the infringement.
27. ' As an alternative to damages a plaintif f may have an account of the profits made by the defendant by the use of his work; this remedy is an equitable remedy ancillary to an injunction, and the plaintif f must elect which remedy he will have. Damages may not be awarded where the infringement is shown to have been innocent.
28. ' Damages for infringement of copyright may be additional to damages in respect of some other cause of action arising from the same subject-matter ."
29. ' In our view the plaintif fs have already received more than they are entitled to. In the peculiar circumstances of the case we consider that the plaintif fs have already been adequately compensated by payment of 7,500 by respondents 3 to 5 and are not inclined to give larger award. The defendants are jointly and severally liable.
30. The learned counsel for the respondents vehemently contended that plaintif f, K.U. Qureshi, who appeared as P.W.-4 stated in his testimony that "the damages suffered by us on account of violation by the defendants are not less than Rs,25,00,000". He was not subjected to cross-examination on this point, as such the amount should be taken as a gospel truth. We are unable to agree with the learned counsel for the. Respondents. It is well settled by now that the plaintif f must succeed on its own merits and not on the weakness of the defendant's case. The loss of earnings and profits are covered by the amount already grante d to the plaintif fs. There is no evidence on record proving the mental suffering by the plaintif fs. In the absence of any proof of loss as alleged by the plaintif fs, the figure claimed by him remains a wild guess. The authori ties relied upon by the learned counsel for the respondents are not applicable to the facts of the instant case.
31. ' The learned counsel for the respondents claims damages "at large". We do not find ourselves in agreement with him. Section 60 of the Copyright Ordinance, 1962 reads as under:--
60. Civil remedies for infringement of copyright. ---(1) Where copyright in any work has been infringed, the owner of the copyright shall, except as otherwise provided by this Ordinance, be entitled to all such remedies by way of injunction, damages, account s and otherwise as are or may be conferred by law for the infringement of a right: ' Provided that if the defendant proves that at the date of the infringement he was not aware that copyright subsisted in the work and he had reasona ble ground for believing that copyright did not subsist in the work, the plaintif f shall not be entitled to any remedy other than that an injunction in respect of the infringement and a decree for the whole or part of the profits made by the defendant by the sale of the infringing copies as the Court may in the circumstances deem reasonable.
(2) Where, in the case of a literary , dramatic, musical or artistic work, a name purporting to be that of the author or the publisher , as the case may be, appears on copies of the work as published, or, in the case of an artistic work, appeared on the work when it was made, the person whose name so appears or appeared shall, in any proceedings in respect of infringement of copyright in such work, be presumed, unless the contrary is proved, to be the author or the publisher of the work, as the case may be.
(3) The costs of all parties in any proceedings in respect of the infringemen t of copyright shall be in the discretion of the Court."
32. ' The proviso to subsection (1) clearly states that where the defendant proves that at the date of the invasion he was not aware that copyright subsisted in the work and had reasonable ground for believing that copyright did not subsist in the work, the plaintif f shall not be entitled to any remedy other than an injunction and a decree for whole or part of the profits made by the defendant by the sale of the infringing copies. Dr. U.K. Qureshi, one of the plaintif fs appeared as P .W.-4 and stated in his testimony as under:-- "M/s. Feroze Sons, defendant No,4 were fully aware that the plaintif fs were the authors of this project and they were negotiating these publications with M/s. Wajid Alis and M/s. Collins-Lo ngman. M/s. Feroze Sons had been corresponding with M/s. Collins-Longman and they had published the document with full knowledge of the contravention of copy rights."
33. ' Conversely Zaheer Salam, one of the Directors of the appellant, appeared as D.W.-1 and stated that the contract dated 3-6-1985 (Exh.D-2) between appellant and M/s. Collins-Longman bears his signatures. In cross- examination he denied the suggestion put to him in the following words:-- "Before purchasing the books/Atlas from the M/s. Collins-Longman I was sure that the Firm being an Internationally reputed establishment had under gone all formalities of having its copy rights etc. And we entered into to deal with them in good faith without knowing that what was the dispute between the plaintif fs, Wajid Alis and the Collins Longman."
34. ' He further denied as under:-- "It is incorrect to suggest .That we knowingly entered into to deal for the purchase of Atlas Exh.P-5. The copyrights, in fact, belonged to the plaintif fs. In fact, when we came to know the factual position we terminated the contract."
35. ' The assertion made by the plaintif f about the knowledge of the appellant is not corroborated from any other evidence documentary or otherwise on the record. We, therefore, hold that the appellant had no knowledge of the copyright of the plaintif fs/respondents. In a copyright case titled Fenning Film Service Limited v. Wolver - Hampton, Walsall and District Cinemas Ltd. (1914) 3 KB 1 171, it was observed as under:-- "I do not think the defendants acted wilfully . It is quite possible that they thought that the agreement gave them the right to act as they did, and I do not think they acted mala fide in any way. The damages are, in the language of Lord Esher M.R., "at lar ge," and therefore I can give what amount I think right as if I were a jury ."
36. ' In the instant case we think that the appellant had no L knowledge and did not invade the copyright wilfully or acted mala fide in any way .
6. The upshot of the above discussion is that this appeal is partly allowed. The decree to the extent of payment of Rs,21,37,600 against the appellants is set aside. However the appellant cannot be allowed to enrich himself at the cost of the plaintif fs by infringing their copyright. The decree for the profits made by the appellant by the sale of the infringed copies can be granted under section 60 of the Copyright Ordinance, 1962. We therefore uphold the decree granting other reliefs of injunction and rendition of accounts etc. To the plaintif fs.