Supreme Court confirms injunction against LexisNexis in the EBC copyright infringement case

Supreme Court

Supreme Court: In an appeal filed by LexisNexis against the injunction granted by the Allahabad High Court on 1.4.2014 in favour of Eastern Book Company, a Bench of Ranjan Gogoi and R.V. Ramana, JJ disposed of the appeal by a short order in the following manner:

The appellants will be at liberty to publish, sell and distribute the raw judgments of the Supreme Court of India and other Courts obtained from whichever source along with their own head-notes, editorial notes, paraphrasing, explanatory notes, etc. as laid down in Eastern Book Company v.D.B. Modak, (2008) 1 SCC 1. [Relax India Pvt. Ltd. v. Eastern Book Company, 2016 SCC OnLine SC 1388, decided on 23.11.2016]

Pratibha M. Singh, Sr. Adv. and Mr. Vikas Mehta, Adv. appeared for the appellants  and K.V. Viswanathan, Sr. Adv., Anitha Shenoy, Adv., Mr. Harshavardhan Reddy, Adv. Ms. Srishti Agnihotri, Adv. Mr. Dhananjay Bhaskar Roy, Adv. Mr. Rajshekhar Rao, Adv. appeared for the Respondents.

The Supreme Court in Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1 had granted copyright protection to Supreme Court Cases (SCC) in the following manner:

This extract is taken from Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1 at pages 114-15

“61. However, the inputs put in the original text by the appellants in (i) segregating the existing paragraphs in the original text by breaking them into separate paragraphs; (ii) adding internal paragraph numbering within a judgment after providing uniform paragraph numbering to the multiple judgments; and (iii) indicating in the judgment the Judges who have dissented or concurred by introducing the phrases like “concurring”, “partly concurring”, “partly dissenting”, “dissenting”, “supplementing”, “majority expressing no opinion”, etc., have to be viewed in a different light. The task of paragraph numbering and internal referencing requires skill and judgment in great measure. The editor who inserts para numbering must know how legal argumentation and legal discourse is conducted and how a judgment of a court of law must read. Often legal arguments or conclusions are either clubbed into one paragraph in the original judgment or parts of the same argument are given in separate paragraphs. It requires judgment and the capacity for discernment for determining whether to carve out a separate paragraph from an existing paragraph in the original judgment or to club together separate paragraphs in the original judgment of the Court. Setting of paragraphs by the appellants of their own in the judgment entailed the exercise of the brain work, reading and understanding of subject of disputes, different issues involved, statutory provisions applicable and interpretation of the same and then dividing them in different paragraphs so that chain of thoughts and process of statement of facts and the application of law relevant to the topic discussed is not disturbed, would require full understanding of the entire subject of the judgment. Making paragraphs in a judgment could not be called a mechanical process. It requires careful consideration, discernment and choice and thus it can be called as a work of an author. Creation of paragraphs would obviously require extensive reading, careful study of subject and the exercise of judgment to make paragraph which has dealt with particular aspect of the case, and separating intermixing of a different subject. Creation of paragraphs by separating them from the passage would require knowledge, sound judgment and legal skill. In our opinion, this exercise and creation thereof has a flavour of minimum amount of creativity.

62. The said principle would also apply when the editor has put an input whereby different Judges’ opinion has been shown to have been dissenting or partly dissenting or concurring, etc. It also requires reading of the whole judgment and understanding the questions involved and thereafter finding out whether the Judges have disagreed or have the dissenting opinion or they are partially disagreeing and partially agreeing to the view on a particular law point or even on facts. In these inputs put in by the appellants in the judgments reported in SCC, the appellants have a copyright and nobody is permitted to utilise the same.

63. For the reasons stated in the aforesaid discussion, the appeals are partly allowed. The High Court has already granted interim relief to the appellant-plaintiffs by directing that though the respondent-defendants shall be entitled to sell their CD-ROMS with the text of the judgments of the Supreme Court along with their own headnotes, editorial notes, if any, they should not in any way copy the headnotes of the appellant-plaintiffs; and that the respondent-defendants shall also not copy the footnotes and editorial notes appearing in the journal of the appellant-plaintiffs. It is further directed by us that the respondent-defendants shall not use the paragraphs made by the appellants in their copy-edited version for internal references and their editor’s judgment regarding the opinions expressed by the Judges by using phrases like “concurring”, “partly dissenting”, etc. on the basis of reported judgments in SCC. The judgment of the High Court is modified to the extent that in addition to the interim relief already granted by the High Court, we have granted the abovementioned additional relief to the appellants.”

Upon scrutiny of the judgments in the LexisNexis database, copyright protected elements were found in the versions of judgments of the Supreme Court in LexisNexis.

Eastern Book Company sued LexisNexis and the District Judge, Lucknow confirmed the ad-interim injunction in these terms:

98. The application for temporary injunction moved by the plaintiffs is allowed and during the pendency of the Suit, the defendants, their assigns and business franchisees, licensees, distributors, agents etc. are retrained from infringing the copyrights in the literary work of the plaintiffs in their law report “Supreme Court Cases” (SCC) and from selling, distributing or otherwise making available to the public, either as CD ROms or through their websites on the Internet or through any tablet or by any other means, copies of its law reports and databases which infringe the copyrights of the plaintiffs in and to the law reports titled Supreme Court Cases (SCC).” [Eastern Book Company v. Reed Elsevier Pvt. Ltd., RS No. 134/2012 dated January 1, 2014]

This injunction was confirmed by a Division Bench of the Allahabad High Court on 1.4.2014 in these terms:

“In the light of the aforesaid judgment, we arrive at conclusion that the exercise and creation of minimum amount of creativity has to be viewed in the context of journals to journals published by the parties and in order to examine it several facts have to be considered by the trial court in the light of the evidences adduced by the parties during the course of the trial. Therefore, keeping in view the ingredients which are necessary to examine the case for the purpose of temporary injunction, we are of the view that at this stage the respondents/ plaintiffs had prima facie case in their favour to issue temporary injunction against the appellants/defendants so that skill applied by their editor in editing the journals should not be misused by the appellants/ defendants.

Thus, we are of the definite opinion that the learned trial court has correctly appreciated the application for temporary injunction filed by the respondents/ plaintiffs and allowed it which do not require interference by this Court.

However, the appellants are permitted to publish, sell and distribute through their websites and C.D.Rom/ DVD the judgments pronounced by the Hon’ble Supreme Court and other Courts but along with their head notes and editorial notes with all precautions as has been cautioned by the Hon’ble Supreme Court in Modak’s case ( supra).” [Reed Elsevier Pvt. Ltd. v. Eastern Book Company, FAFO 134 of 2014 decided on 1.4.2014]

Significantly, in furtherance of the above directions, the Supreme Court directed the expeditious disposal of the suit and vacated the bar against the contempt proceedings, pending against LexisNexis, before the District Court, Lucknow.

On an earlier date (25.10.2016) the Court had passed this order:

“The prayers made in IA Nos. 5 and 6 (filed by the appellants), in our considered view, ought not to be allowed at this stage inasmuch as the grounds in support of prayer ‘c’ of IA No. 5 on which notice has been issued have been urged before the learned trial Court and the appellate court. Therefore, consideration of the said grounds and any finding thereon to sustain the relief so as to prayer ‘c’ of I.A. No. 5 is concerned, was amount to pre-judging the appeal.

However, to avoid any prejudice and in view of the assurance given by the learned counsel  for both the sides that the matter can be disposed of within a short time frame, we order hearing of civil appeal on 23rd November, 2016. The trial court and the High Court of Allahabad will take into account the present order of this Court before deciding whether it should proceed with the contempt case(s) pending before it.” [Reed Elsevier India Pvt. Ltd. v. Eastern Book Company. 2016 SCC OnLine SC 1380, decided on 25.10.2016]

 

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