This post is in continuation of my previous post here, wherein I mentioned certain considerations to be kept in mind when taking criminal recourse to an IP infringement. As far as my knowledge goes, neither civil action nor criminal action, taken separately, can give your client the best relief. So, what would be an appropriate litigation strategy in case of, let’s say, infringement of a million dollar artistic work?
Indian IP laws provide for both types of remedies i.e. civil and criminal. In addition to this, it is also possible to take both these remedies simultaneously i.e. both these remedies are coexistent. The following remedies are generally available in case of civil enforcement of IP rights –
- Injunctions (Permanent, Temporary, Mareva)
- Damages (Lump sum payment or Royalty)
- Accounts for Profits
- Orders (Anton Pillar, John Doe/Ashok Kumar)
The following remedies are available in case of criminal enforcement of IP rights –
- Registration of FIR or criminal complaint;
- Followed by Raid – search and seizure of goods
- Arrest of accused
Furthermore, one can also avail administrative remedies in case of IP infringement, such as –
- Complaint to Custom Authorities giving the details of the infringed goods;
- Custom Officers have the power to search goods in respect of the complaint;
- Such infringed goods are liable to be confiscated.
Thus, the best litigation strategy would be a combination of all the three remedies.
Lets understand this by an example.
Mr. Xye is a well known artist in India, he is famous for his million dollar art work of “The Zefad”, an Egyptian style painting. One fine day while loitering around the streets of New Delhi’s famous Connaught Place he finds some people selling the exact replica of his artwork under the name of another artist. Mr. Xye approaches you.
As an IP attorney, what you ought to do is to first file a complaint at the local police station, giving evidence of the infringed goods and the value of the original artwork, and some evidence showing the high reputation of Mr. Xye. In most cases, the police authorities would be satisfied with such circumstantial evidences and would agree to register a FIR. The police would then start investigating the matter. After the raid and the investigation are over the police would file a charge-sheet along with the list of evidences. The trial would then take place in the court of a Judicial Magistrate.
In the meantime you can also file a civil suit for IP infringement (praying for damages and accounts for profit) against the artist who is selling your client’s painting under his name. You can also file an application of interim injunction retraining the artist from further copying your client’s artistic work. Additionally you should also make a complaint in the requisite format to a custom authority, attaching relevant court orders and details of the suit.
Since the cause of action of both your cases i.e. criminal and civil are same, therefore, parallel proceedings in both cases can take place.
Image from here.