Snippet: Delhi High Court Passes “John Doe” Order for the Movie “Chakravyuh”

On October 19, 2012, in a suit instituted by Eros International, C.S.(O.S.) 3163/2012, the Delhi High Court issued “John Doe” order against unknown defendants in relation to the film “Chakravyuh”, besides restraining named defendants such as Jyoti Cable Network from communicating, making available, distributing, duplicating, displaying, releasing, showing, exhibiting in the film in any manner without obtaining prior authorization/license from Eros International.

I thank Ms.Sneha Jain for bringing this development to my attention.

Section 52(1)(a) of the Indian Copyright Act and Fair Dealing in the CCH Canadian Case

In an earlier post, I had discussed the scope of exemption from infringement available under Section 52(1)(i)(i) which deals with “reproduction of any work by a teacher or a pupil in the course of instruction”. 

In that post, a reader of the blog posed a few interesting queries in the comments on the scope of “fair dealing for the purpose of private or personal use, including research” under Section 52(1)(a) of the Indian Copyright Act, 1957 with reference to the interpretation of "research" by the Canadian Supreme Court in Law Society of Upper Canada v. CCH Canadian Limited.

For the benefit of those readers who may not subscribe to the blog’s group mails, this post captures my thoughts in the comment on the Canadian decision and its applicability to the Indian provision. 

Before placing reliance on the Canadian decision’s expostulation on the scope of “research” under fair dealing, it is imperative to note the following facts in light of which the decision was delivered:

1. The Appellant/Defendant in the case which was sued for infringement of copyright was the Law Society of Upper Canada which sought to be treated as a library. It was also a non-profit organization.

2. The subject-matter of the allegation of infringement was largely law reports/judicial decisions. This is the reason the Canadian verdict was cited by the Indian Supreme Court in the EBC v. D.B.Modak decision.

3. The photocopy service provided by the Law society was "request-based" in certain instances, and in certain other, only photocopiers were provided by the Society for use by its patrons. In other words, the patrons/users of the Library were the triggers for the act of photocopying. What is to be noted is that the Law Society did not issue copies of copyrighted material on its own to its patrons. This has been addressed under the issue of "authorization" in the decision (refer to Paras 37-47 of the decision).

4. The issue of "authorization" is extremely critical to understand as to who is entitled to the defense of "fair dealing for the purposes of research". If an individual approaches a photocopier to make a photocopy of a copyrighted material for research or private use, it is only then that the next question as to the degree of "fair dealing" needs to be addressed. However, if a photocopier decides to issue photocopies on his own, I am not sure if he is entitled to the defense at all in the first place or whether the question of "degree of photocopying" needs to be addressed.

5. What is also important to note is that in Para 55, the Court goes on to observe thus:

"In assessing the character of a dealing, courts must examine how the works were dealt with. If multiple copies of works are being widely distributed, this will tend to be unfair. If, however, a single copy of a work is used for a specific legitimate purpose, then it may be easier to conclude that it was a fair dealing. If the copy of the work is destroyed after it is used for its specific intended purpose, this may also favour a finding of fairness. It may be relevant to consider the custom or practice in a particular trade or industry to determine whether or not the character of the dealing is fair.

For example, in Sillitoe v. McGraw-Hill Book Co. (U.K.), [1983] F.S.R. 545 (Ch. D.), the importers and distributors of “study notes” that incorporated large passages from published works attempted to claim that the copies were fair dealings because they were for the purpose of criticism. The court reviewed the ways in which copied works were customarily dealt with in literary criticism textbooks to help it conclude that the study notes were not fair dealings for the purpose of criticism."

It is to be noted that in the above-reproduced para, there is a clear reference to another case where "study notes" were being issued under the garb of "fair dealing", which was rejected.

On the issue of degree of copying, if the issue of authorization and character of dealing do not fall within the defense of "research or private study", I don’t think the issue of degree needs to be addressed since degree is the second step after establishing that the character of dealing is entitled to a defense under the Act. 

Further, in Para 57 of the decision, the Canadian Court also discusses the alternatives to the dealing. In other words, if a non-infringing alternative exists and it was not even explored, it could be used against a defendant.

The last factor considered by the Canadian Court is the effect of the dealing on the sales of the original. This is extremely important in situations where the photocopied material is capable of replacing, and hence undermining the sales of the original within that limited segment in which the original is sold. If photocopied study notes undermine the sales of text books, it is a relevant factor to understand as to what constitutes "fair". 

The decision also appears to have turned significantly on the reasonable access guidelines of the Law Society, which are as follows:

Guidelines to Access

 1. The Access to the Law service provides single copies for specific purposes, identified in advance to library staff.

 2. The specific purposes are research, review, private study and criticism, as well as use in court, tribunal and government proceedings.  Any doubt concerning the legitimacy of the request for these purposes will be referred to the Reference Librarian.

 3. The individual must identify him/herself and the purpose at the time of making the request.  A request form will be completed by library staff, based on information provided by the requesting party.

 4. As to the amount of copying, discretion must be used.  No copies will be made for any purpose other than that specifically set out on the request form.  Ordinarily, requests for a copy of one case, one article or one statutory reference will be satisfied as a matter of routine.  Requests for substantial copying from secondary sources (e.g. in excess of 5% of the volume or more than two citations from one volume) will be referred to the Reference Librarian and may ultimately be refused.

 5.  This service is provided on a not for profit basis.  The fee charged for this service is intended to cover the costs of the Law Society.

In Para 67 of the decision, the Court notes thus on the character of dealing of the copyrighted work by the Law Society:

“The character of the Law Society’s dealings with the publishers’ works also supports a finding of fairness. Under the Access Policy, the Law Society provides single copies of works for the specific purposes allowed under the Copyright Act. There is no evidence that the Law Society was disseminating multiple copies of works to multiple members of the legal profession.”

Conclusion

Therefore, a reading of the Canadian decision makes it crystal clear that the discussion on the issue of “fair dealing” should not start or revolve solely around the "number of pages". Instead, it must first begin with issues such as “authorization” and “character of dealing”. This, in my opinion, applies to the defense of “fair dealing for the purpose of private or personal use, including research” under Section 52(1)(a) of the Indian Copyright Act as well.

Snippet: Delhi HC on Ownership of Underlying Works

A few weeks ago, I had blogged on ownership of underlying works in a sound recording. I had taken the view that the owner of a sound recording does not need the consent of the owners of copyright in lyrics and musical composition for the communication of the sound recording to the public. A Division Bench of the Delhi High Court too has taken a similar view in the case of Indian Performing Right Society Ltd vs Aditya Pandey & Ors. 

The Division Bench has held that  no separate or additional permission needs to be obtained from the owners of underling works (lyrics and musical composition) for communication sound recording to the public. In other words, it is sufficient to obtain a license from Phonographic Performance Limited (PPL) alone, without there being a need to seek a license from IPRS. 

Snippet: Supreme Court Rules Copyright Board Has No Power to Fix Interim Royalties

A short while ago, I was given to understand that today the Supreme Court of India has ruled that the Copyright Board does not have the power to pass interim orders in proceedings instituted under Section 31 of the Copyright Act, 1957. Section 31 deals with the power of the Copyright Board to grant compulsory license in respect of copyrighted works.

The said decision was passed in a Special Leave Petition against a decision of Justice Vikramjit Sen of the Delhi High Court delivered on September 1, 2011.

Justice Sen in his order of September 2011 had ruled thus:

“We make it clear that the Copyright Board is free to come to its own conclusion in respect of an interim arrangement as well as final terms of a compulsory licence, if it finds no impediment in doing so, without being influenced in any manner by the interim arrangement devised by us.”

I tend to agree with the decision of Justice Sen because a body such as the Copyright Board, which is vested with the power to fix final royalties must be logically deemed to have the power to decide interim royalties as well until a final decision is taken. It is surprising that the Supreme Court is of the opinion that the Board does not have the inherent equitable power to fix interim rates.

Before commenting any further, we will await the release of the final copy of the written order.

Ownership of "Sound Recording" and Underlying works

In one of our recent posts, Divya has crisply discussed the decision of the Calcutta High Court in the Oh la la/ Dirty Picture controversy. In light of this controversy, I have a few thoughts to share on ownership of sound recording and underlying works.

The first limb of the issue that needs to be understood with clarity is the very definition of “sound recording”. Unless and until there is unanimity/ consensus as to what constitutes a sound recording, i.e. the subject-matter of copyright protection, there is no point in proceeding any further with the discussion.

Sound recording is defined in Section 2(xx) of the Copyright Act, 1957. The definition reads as follows:

"Sound Recording" means a recording of sounds from which such sounds may be produced regardless of the medium on which such recording is made or the method by which the sounds are produced.

From the definition, it becomes clear that the subject-matter of protection is the content of the recording, namely the sounds which form part of the recording/ sounds which are embedded in the recording, and not the recording itself. In other words, the protection is not restricted to a specific recording that is made at a given point in time, but is in fact conferred or bestowed upon the very sound itself. 

Critically, it must be pointed out that sound recording is not synonymous with a song. Songs merely form a subset of sound recording. In a song, which is also a sound recording, the peculiarity is that its constituents, namely the musical composition and the lyrics are themselves protected by distinct/ independent copyrights. Consequently, a song, at its very creation, is a combination of copyrighted works, thereby bringing it within a broad definition of a "Derivative work".

What must be understood here is that, merely because a song which is a sound recording is a combination of underlying copyrighted works, it does not follow that the stand-alone copyright in the sound recording is undermined or is inferior in anyway. In other words, the owner of a sound recording/ owner of a copyright in a song/ producer of a cinematograph film enjoys as much protection under the Copyright Act as the owners of underlying works. Simply put, the scope of protection of the owner of the song extends to the combination of music and lyrics. 

The practical consequence of this protection is that the owner of the song has the exclusive right over the said combination of music and lyrics, the emphasis being on the "combination". Therefore, if either of the ingredients of the combination were to be reproduced individually, the owner of the song would be traversing well beyond the scope of the copyright in the song. In other words, he would be infringing the copyrights of the owner of the underlying work.

The converse is that no third party, including the owners of the underlying works can come together to create the same combination as that of the original song. It follows that the caveat applies not just to re-creation, but also extends to reproduction and copying. This is supported by the bundle of rights conferred under Section 14(e) to the owner of a sound recording. 

The long and short of all the above verbiage is that a sound recording has a "unitary" nature wherein the individual constituents are complete in themselves which enjoy independent copyrights. However, the vestation of such independent copyrights in such ingredients does not affect the unitary nature of a sound recording or its unitary use. Only when the use is not unitary, it results in the infringement of copyrights in underlying works/ ingredients. 

This proposition is beautifully articulated in a decision of the Delhi High Court Super Cassettes v. Chintamani delivered in July 2011. The relevant portion of the judgment reads as follows:

55. There is no quarrel with the proposition that cinematograph films and sound recordings are derivative works, which are eventually derived from original literary, dramatic, musical and artistic works. That does not make copyright in cinematograph films and sound recordings inferior. In Entertainment Network (India) Ltd. (supra), in para 41, the Supreme Court has held that only because the term for holding copyright under section 27 (in relation to a copyright in sound recording) is different from the term of the copyright in relation to original literary, dramatic, musical and artistic works, the same would not mean that the right of the copyright owner in sound recordings is somewhat inferior. Even though the copyright in relation to derived work such as cinematograph films and sound recordings operate in a relatively restrictive field, when compared to the copyright in original literary, dramatic, musical and artistic works, to the extent that the said copyright in derived work is vested by the Act, the same operates with full force and vigour. The decision of the Supreme Court in Entertainment Network (India) Ltd. relied upon by the defendant, India TV in no way advances their submission that cinematograph films and sound recordings are covered by Sections 52(1)(a) and 52(1)(b) of the Act.

Time for Ooh La La! To say Ui Amma!?!?!?

The Dirty Picture that won perhaps the most awards last year, appears to have fallen into trouble, in spite of making the “Ooh La La”!!! 

The blockbuster song, that had audience’s attention captured, was alleged to be infringing an old song called “Ui Amma Ui Amma”. 

Interestingly, the song Ui Amma (an expression originally meaning Oh Mother! ) was composed by Bappi Lahiri, who gave his voice to Ooh La La.

However, to my eyes, this appears to be a case of crying “Wolf!!! Wolf!!!”. The movie all set to be released for television viewing this Sunday, had the plaintiffs moving just in time to perhaps prevent the same.

The Calcutta High Court heard the interim application,and was of the opinion that damages would suffice in this instance to bring about a balance of convenience. In deciding the verdict, the Hon’ble judge heard both the songs and reached a prima facie finding of infringrment. 

The court ordered for a deposit of Rs. 2 Crores to be made to the Court and ordered the Registrar to invest the deposit the sum in a short term deposit. Being an interim order, am sure we all appreciate that the order is likely to be overturned, either in appeal to the interim order itself, or during the course of trial.

In the course of hearing, the issue of assignment also came about. The court noted, that in the absence of the term of assignment being absent, the same is construed to be for a period of five years. However, in this case, the court observed that the deed was entered into much before this provision was incorporated into the Act. I am not sure how well this argument would play out, in view of all aspects associated with the case.

The Court to my eyes, however has left a few loose ends, perhaps for the final order to address.

The music for the movie, as the Court order points out, was released on October 21, 2011. The Court does not question why a delay was made in instituting the suit for infringement, especially if such a striking aspect of the song was in question. Further, in the normal course of civil proceedings, the limitation period to institute a suit is three months.

This brings us back to the question, that while no copyright exists in the portion of a work of authorship, would the fact that it forms the substantial and representative bit of a work, be enough to make a finding as to infringement.

Further, while the infringing song was sung by Bappi Lahiri and the infringed song was also his composition, it is unlikely that there could have been an instance where he wouldn’t have recognized a striking similarity between the compositions. Even if he did, perhaps Bappi da thought that being the composer of Ui Amma, his singing Ooh La La was an exercise of implied acquiescence to the use of a similar tune/riff. The Court is absolutely silent on this aspect as well.

With the multifarious questions that appear to have been shoved under the carpet, I just find myself wishing for Pink Floyd’s Let There Be More Light!

Phone Booth rings a Bell- A Knock Out Punch at Mumbai High Court!

A few weeks back, I expressed my worry about “Inspirational Plagiarism”. To my delight, I was turned to a decision of the Mumbai High Court rendered in 2010, Twentieth Century Fox Film Corporation vs. Sohail Maklai Entertainment Pvt. Ltd., discussing a similar issue, albeit in the context of film scripts.

The extremely popular “Phone Booth”, produced by Twentieth Century Fox moved a suit against the producers of Bollywood flick Knock-Out, alleging infringement and praying for an injunction against the release of the movie and distribution of copies of the movie, in any manner. The decision reveals that several letters had been exchanged between Twentieth Century Fox and Sohail Maklai Entertainment Ltd., even before the matter moved to Court.

The producers of Knock-Out claim that the only similarity between the scripts is that “the guy is trapped in a phone booth”.

For our readers who have seen the English movie, will agree when I say that such “Entrapment” (and what a movie that was!) is central to the Twentieth Century Fox production. The judge, in cognizance of this fact, states, amongst other points of comparison:

"The conversation between the caller and the protagonist are rather similar; such similarity cannot be co-incidental. Its style as well as the content of the conversation and the design in bringing out the conduct of the man would leave an unmistakable impression that one was copied from the other. That is the basic concept of the two films.”

Further the Judge taking note of the differences between film making styles in Hollywood and Bollywood says:

“It is seen that the duration of both the films is rather different; though the first is long enough the second is far longer for the message it conveys. Consequently and naturally, the second has further and other aspects to convey and portray more specially the political drama with several more characters and scenes which are essentially embellishment and ornamentation in developing the expression of the idea or the prime thought of the first film.”

In the paragraphs that follow, the judge makes a rather interesting comparative:

“These ideas can be understood by the distinction of a discovery and an invention. Whatever is there but not brought out would be discovered; but whatever is not there is invented for the first time. The inventor would, therefore, alone have copyright in the expression of that invention which is the artistic work. Hence copyright is contained in the original expression of the idea. It is expressed in the frame of the product. It is the thought that is sought to be portrayed and conveyed which carries a copyright and not the original idea. Hence whilst the idea may not be unique to the author, the image portrayed or the expression made is essentially unique to the author. If such an expression in the shots of a film is copied, lifted from an earlier film, the infringement is complete.”

I think this paragraph sums up the view that the judge takes, rather succinctly and drawing an interesting comparative, while doing that! For those who worry about the rampant Inspirational Plagiarism like me.. Here Comes the Sun!

Of Music and Lyrics Too...

The Delhi High Court, addressing a similar issue as the last post, rendered its concurrence with the decision of the Mumbai High Court, pronounced early last week.

Although the Mumbai High Court arrived at its decision by referring to several authorities, foreign judgments and statutory amendments, the Delhi High Court decision has given the issue a shop-floor approach.

The interim order, passed jointly in IPRS v. Aditya Kumar and PPL v. CRI Events Pvt. Ltd. & Ors., denied the grant of an order for interim injunction on the allegations of copyright infringement in the first suit, while issuing a temporary injunction order in favor of the Copyright society in the second.

The Court in arriving at the decision, touched upon multifarious factors. As pointed out in the comments to the related post, the Delhi High Court stated that:

“There would be no reason for the sound recording producer to pay once for acquiring the right to make the master sound recording and then pay separately for each reproduction thereof or each communication to the public. It is urged that if the plaintiff’s argument were to be accepted, then for each reproduction of the sound recording a separate royalty would be due from the producer of the sound recording to the owner of the rights in the underlying musical works and lyrics.”

Further, in view of Copyright being a bundle of rights, the Court commented upon the unity of ownership, and suggested that the stand taken by IPRS, would lead to discrimination in regard to identical content of copyrights of two different “works”, prove illogical and undermines the purposes of the Act.

In other words, the Court, opined that if IPRS’ proposition were to be admitted, it would put the licensee in a compelling position to seek permission from the authors of the underlying work. If a stand otherwise be taken, the same would perhaps, render the entire scheme of broadcasting rights oblivious- thus causing a dent to a huge segment of the entertainment industry.

The Court also looked into another critical issue- where royalty payments ensued, and to whom. CRI Events, urged that the fact that, since, the audience were not expected to make a payment, they were not obliged to pay royalties. In response to this line of assertion, the Court observed that:

“The enactment uses the phrases “public performance” and “communication to the public” in relation to a copyrighted work. The question what is “public” ought not to be considered in the abstract, and in isolation, but in the context of the definition of “infringement” of a copyrighted work, under Section 51."

J. Bhatt’s view that “public” ought to be considered in view of infringement, also brings to my mind , an extremely impactful paragraph, from one of his earlier judgments, Univ. of Oxford v. Narendra Publishing House and Ors ,

“Fair use provisions, then must be interpreted so as to strike a balance between the exclusive rights granted to the copyright holder, and the often competing interest of enriching the public domain. Section 52 therefore cannot be interpreted to stifle creativity, and the same time must discourage blatant plagiarism. It, therefore, must receive a liberal construction in harmony with the objectives of copyright law. Section 52 of the Act only details the broad heads, use under which would not amount to infringement. Resort, must, therefore be made to the principles enunciated by the courts to identify fair use."

By citing this paragraph, what I intend to communicate is that, it is clear (although not expressly stated) that at least in the Court’s mind, “communication to the public”, “public performance” and “performance or communication” per se, can be differentiated by the standards applied to personal use as enumerated under the constituents of fair use.

The judicial line of thought, from these two decisions, seems to be very clear- separation of rights between separate authors. Undoubtedly, the 1994 amendment of the Act brought about a change, that seems to affect the rights of the authors of the underlying works to a considerable degree, which, in today’s context I personally view to be one that is important and much necessitated.

My opinion is further influenced by the fact that the manner in which production houses function today, is similar to that of corporates- thus the notion of “work for hire” holding greater relevance, while also strengthening the economic rationale for producers to pay a lyricist or music director towards their contribution.

While music and lyrics are an inseperable part of Bollywood, and despite this decision having left a few stakeholders a bit unhappy, the decision is one which finds sufficient justification within the four corners of the law.

Of Music and Lyrics- Mumbai HC sounds the drum!!!

The much awaited judgment from Mumbai High Court has finally been pronounced-awaited not so much because the issue has national prominence, but more so, because the subject matter concerns one of India’s most widely shared passions...running a close second to Cricket- Film Music!!!

A few months back, many may recall, noted members of the film fraternity came out with their views on their right to royalties, vis-à-vis broadcast of sound recordings consisting of their underlying works, namely lyrics and music. The Mumbai High court has put the matter to some rest, in the Judgment pronounced in Music Broadcast Pvt. Ltd. V. Indian Performing Rights Society (IPRS), on Monday July 25, 2011.

To give a brief overview of the case, the issue centered around whether IPRS was entitled, and Music Broadcast Pvt. Ltd., in turn, obligated to pay royalties to the members of the IPRS, for broadcast of recordings containing their (IPRS members’) underlying works. 

For the uninitiated, Music Broadcast Pvt. Ltd. carries on the business of establishing, operating and maintaining FM Radio broadcasting stations in various cities of India. IPRS, on the other hand, is a non-profit organization, registered as a Copyright Society under Section 33 of the Copyright Act, 1957. 

The Society undertakes to issue Licenses to users of music and collect Royalties from them, for and on behalf of its Members i.e. the Authors, the Composers and the Publishers of Music, and distribute this Royalty amongst them after deducting its administrative costs.

The Court while deciding this case, in my humble opinion, has given Copyright a very holistic approach. While the Court looked at Copyright as how it (again IMHO) must be envisioned, i.e. as a bundle of rights, it made multifarious references to noted international authors, and also commented on the non-applicability of several precedents to the case at hand. 

 In resolving the issue, the Court also pointed out that the Phonographic Performances Ltd., another Copyright Society established under S. 33 of the Copyright Act, is the only body entitled to collect royalties for the broadcast of sound recordings.

To me, the most impactful statement(s) putting the whole controversy to rest were in Para 59, on Pages 72 and 73. The extract I refer to reads:

“Thus, once the author of a lyric or a musical work parts with a portion of his copyright by authorising the producer of a sound recording to make a sound recording in respect of his work and thereby to have his work incorporated or recorded in a sound recording, the producer of the sound recording acquires by virtue of section 14(1)(e) of the Act, a copyright which gives him the exclusive right stipulated in section 14(1)(e) which includes the right to communicate the sound recording to the public. A distinct copyright comes to vest in the sound recording as a whole.”

From the start of the issue, I was of a similar opinion as echoed in the extract - I interpret the judgment to treat copyright as a bundle of rights that may be separated into various strands. Further, as the Court also notes, the manner in which Section 14 of the Copyright Act outlines the various constituents while explaining the “meaning of copyright”, the provision clearly distinguishes rights in a literary work from a musical work, and the two from rights in a sound recording.

Although the judgment does not state, yet to me, it appears that apart from seperability of the various types of works and the rights that constitute the copyright bundle for each of these, the Court somewhere at the back of its mind also had the economic rationale in mind. 

What I intend to state, and as I see (and probably would also advocate), is that while a sound recording is made, one part of their right, has been exhausted - i.e. the right to adapt or make a derivative sound recording of their work.

Having said so, of course, these exceptionally talented people are also sufficiently remunerated at the time they contract for their work to be used in a sound recording. Granted that this may not be a typical work for hire, yet if they desire to be compensated for the future use and benefits accruing from something that involves (or is based on) an underlying work on which they hold a copyright, the same should be a matter for contractual negotiation and not of royalty collection from a copyright society, with whom they do not have the capacity to deal. 

The reason I term them incapacitated to do so, is not their stature, or, standing, but simply because as mere authors of a literary or musical work, they are not holders of copyright in the sound recording.

As I shall read the 108 page decision another time, I am almost certain that many more points, views and contradictions shall come to mind. In the meanwhile, I hope that our readers shall have a lot more to say, rebut and in Sai’s words- refute! Until then… Let the Music Play!!!

Some reflections- of Harry Potter, Infringement and Fair Use..

Sai’s Harry Potter post and his cursory reference to derivative works, albeit in a different context, brought to my mind instantly Warner Bros. Entertainment Inc v. RDR Books, or the Harry Potter Lexicon case, as we commonly refer to at Law School.

The case, dwelling on derivative works, infringement and the defense of fair use, looks at whether creation of a lexicon for the multifarious terms for the Harry Potter series, amounts to infringement of the right to make derivative works. While the court ruled in favour of J.K. Rowling, it also undertook an extensive fair use analysis.

Talking of derivative works reminds me of a movie called Hari Puttar, that came to the Indian cinemas about two plus years back. Warner Brothers being vigilant watchers of their intellectual property, moved for an injunction. However, they failed before the Indian courts to secure an interim injunction. Warner Bros. Entertainment Inc. v. Harinder Kohli and Ors. (Could someone please throw light on the fate of the proceedings??? I lost track soon after!)

The two right owners, in two different jurisdictions, chose to enforce their rights albeit with different strategies. While the Lexicon case had a pure copyright approach, the Hari Puttar case seemed to take the route of trademark rights being infringed.

As I was thinking about these cases in tandem, to me it seemed like Warner Bros. may have taken up such different arguments on purpose.

Undoubtedly in a copyright infringement case, fair use, a judicially developed doctrine in the US would be argued- and was very vehemently argued in the Lexicon case. The doctrine as many of you would be familiar, involves consideration of:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

India, on the other hand, has a statutorily defined framework for “Certain acts not amounting to infringement”, which we consider to be our fair use related provisions. In this view, is it possible that the fact that statutory exclusions are more susceptible to be strictly enforced, have dettered Warner Bros. from instituting a Copyright action in India? Perhaps… and also may be perhaps they wanted to allege only similarity in the titles and not the content of the subject matter itself. In this scenario, a trademark action seems to have better suited their case.

However, the question that ticks in my mind is, will something like S. 52 in the Copyright Act, 1957 always be more strictly interpreted? The answer probably is kind of obvious, however, when I think of this in greater depth, I am reminded of what J. Bhatt has to say in Chancellor Masters and Scholars of the Univ. of Oxford v. Narendra Publishing House and Ors , at Para 33:

“Fair use provisions, then must be interpreted so as to strike a balance between the exclusive rights granted to the copyright holder, and the often competing interest of enriching the public domain. Section 52 therefore cannot be interpreted to stifle creativity, and the same time must discourage blatant plagiarism. It, therefore, must receive a liberal construction in harmony with the objectives of copyright law. Section 52 of the Act only details the broad heads, use under which would not amount to infringement. Resort, must, therefore be made to the principles enunciated by the courts to identify fair use."

This to me seems to tilt the coin against towards giving fair use a broader, rather judicially crafted interpretation, as against a pure application of statutory provisions. And to me, it appears rightly so - pertinently with the advent of technology, social media as well as the varied forms of derivative works coming of age.

I welcome the take from our readers on this line of fuzzy thought!!

Right to Information and Copyright Infringement: Delhi HC Cracks the Whip on DMRC

So the pride of Delhi, DMRC says:

 “I am not an instrumentality of the State, I am entitled to the protection offered to a “ third party” under Section 8(1)(d) of the Right to Information Act and also to the exemption provided to prevent copyright infringement under Section 9 of the RTI Act”

Delhi High Court says:

“No way! You are an arm of the State within the meaning of Article 12 of the Constitution! You dare not hide behind the RTI to conceal your faulty designs which took the lives of 6 people!”

This, in a nutshell, captures the decision of the Delhi High Court delivered on December 24, 2010.

What exactly are the facts? And what are these RTI provisions the DMRC wanted to hide behind?

An architect, Sudhir Vohra, invokes the RTI to seek “all structural drawings of both the pile foundation and the superstructure, including all steel reinforcement details, foundation details, engineering calculations and soil tests", pertaining to the cantilevered bracket of Metro Pillar No. 67 which collapsed on 12^th July, 2009 resulting in the death of six persons and injury to several others”

DMRC rejects the RTI application citing Sections 8(1)(a),(d) and (h). Let’s see what Section 8 says:

8. Exemption from disclosure of information.-

(1) Notwithstanding anything contained in this Act, there shall be no obligation to give any citizen,-

(a) information, disclosure of which would prejudicially affect the sovereignty and integrity of India, the security, strategic, scientific or economic interests of the State, relation with foreign State or lead to incitement of an offence;

(d) information including commercial confidence, trade secrets or intellectual property, the disclosure of which would harm the competitive position of a third party, unless the competent authority is satisfied that larger public interest warrants the disclosure of such information;

(h) information which would impede the process of investigation or apprehension or prosecution of offenders;

I can understand that sub-clause (d) makes for a decent legal argument (even if erroneous), but how is sub-clause (a) even relevant to the case? How does disclosure of the designs prejudicially affect the “sovereignty and integrity” of India?! (unless the DMRC fears that disclosure of the faulty designs could incite members of the public into committing an offence..which would be a justified fear...)

As for sub-clause (h), I really can’t fathom how sharing the designs with a member of the public, and that too an architect, can impede the process of investigation of the accident by the police...sometimes I think parties just miss the point about litigation; it isn’t just about the law, it has got almost everything to do with public perception of a stance taken by a party, even if it is rooted in law. 

And Courts too aren’t completely immune to these perceptions, so the sensible thing to do would be to take a stance which is balanced, and not anything and everything that is available under a statute.

As far as sub-clause (d) is concerned, the Court categorically held that DMRC, being an agency of the State, did not fall within the meaning of “third party”. Even if it did, I would think the larger public interest warrants disclosure of the information because in this country, you just can’t assume that an investigation by the establishment (particularly of its own conduct) would be independent and reliable. So disclosure must be made to other members of the public who wish to probe such information with a fine-toothed comb.

On Section 9, which reads thus:

9. Grounds for rejection to access in certain cases- Without prejudice to the provisions of Section 8, a Central Public Information Officer or State Public Information officer, as the case may be may reject a request for information where such a request for providing access would involve an infringement of copyright subsisting in a person other than the State

the Court again clearly held that Section 9 vested the State with the right to reject a request for information only if its disclosure involved or amounted to infringement of the copyright subsisting in a person other than the State. Since the Court had already deemed DMRC as falling within the State, Section 9 was held inapplicable to it.

What surprises me is that an organisation helmed by someone so scrupulous as Mr.E.Sreedharan (inset), has taken a stance which goes against the very values he professes and practices. 

Anyways, this judgment was delivered by one of the most erudite Judges I have heard and seen in action- Hon’ble Justice Muralidhar. It is an absolute delight and education to see Justice Muralidhar apply his incisive mind to a case and explain his reasons for interpreting a provision of the law in a particular manner. Not just that, his judgments have an altruistic tone to them, which are finely balanced. This makes them all the more delightful to read. 

One hopes we have more of his breed in our Courts

I thank Sneha Jain for sharing this update with me!

Kraft Foods v. Britannia Update: Summons Issued to Britannia

I had earlier blogged on Kraft Foods suing Britannia for copyright and trademark infringement in relation to Kraft’s “Oreo” biscuits. 

On the 4^th of January, 2011, the Delhi High Court issued summons to the Defendant, Britannia Industries, in the suit as well as the “application” (the Delhi high Court website doesn’t say if the application is the application for interim injunction, but I am assuming so).

The matter’s now listed for January 25, 2011. We’ll keep our readers posted on the developments in the case.

Section 62 of the Copyright Act and Extra-Territorial Jurisdiction? Not Long Enough...

Banyan Tree may have clarified the import of Section 62 of the Copyright Act, 1957 significantly, yet there seems to be a pervasive opinion that Section 62 vests Indian Courts with unlimited long arm jurisdiction even in strictly and purely extra-territorial situations.

Somehow I am not convinced that Section 62 empowers Indian Courts to seize a matter which would rightly fall within the seisin of a foreign Court. What are the reasons for holding this view?

Even if one did not have the benefit of referring to the view taken by a Division Bench of the Delhi High Court in Banyan Tree, the issue may be approached as follows:

A. Section 62 of the Copyright Act is a provision, which cannot be invoked in the absence of a cause of action arising with respect to the Indian copyright within the territory of India. In other words, it is a stretch of an argument to contend that Section 62 vests Indian Courts with the power to entertain a suit instituted to seek redressal for an act of “infringement” which has been committed outside the territory of India.

B. In other words, a so-called “infringing act” which has been committed outside the territory of India is not an infringement of the Indian copyright, since the copyright granted under the Indian Act is purely territorial in nature. In my opinion, there is no such thing as an “international copyright” under the Indian statute.

C. Further, long-established principles of interpretation of statutes, as applied by Indian Courts with respect to Indian legislations, clearly postulate that the underlying presumption of any Indian statute is always against extra-territorial application of Indian law. For an Indian legislation to have unlimited long-arm jurisdiction beyond Indian shores, there must be an express provision to that effect.

D. There is no such express provision in Section 62 which clearly spells out extra-territorial application. If it is contended that since Section 62 does not link jurisdiction with cause of action, it has an extra-territorial reach, one could extend the argument and prove its inherent fallacy (applying the principle of Reductio ad absurdem).

To prove the fallacy, let’s take a look at Section 20(a) of the Code of Civil Procedure:

Section 20(a) of the CPC:

Subject to the limitations aforesaid, every suit shall be instituted in Court within the local limits of whose jurisdiction-

(a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain

Nowhere does Section 20(a) contain a whisper about cause of action. Does this mean it is available for us to argue that a suit may be instituted at the place of residence or business of the defendant, even if the cause of action has not arisen anywhere within the territory of India??? NO!

What I seek to convey is that the default presumption must always be that a legislation can speak of only those acts which fall within the territory over which the legislature holds sway i.e. India. For this presumption to be rebutted, there must be an express provision. In the absence of any such presumption, the statute applies only and only to acts which have been committed within the territory of India.

Is Section 62(2) of the Copyright Act an exception to this rule? Let’s take a look at the provision itself:

62. Jurisdiction of court over matters arising under this Chapter – (1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.

(2) For the purpose of sub section (1), a "district court having jurisdiction " shall notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908), or any other law for the time being in force, include a district court within the local limits of whose jurisdiction , at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.

Sub-section (1) of Section 62 clearly speaks of infringement of a right conferred by this Act. Every legislation typically spells out its scope and extent in Section 1, which reads thus:

“It extends to the whole of India”

This means that what has been granted for enjoyment within the territory of India can be “infringed” only within the territory of India. The consequence of this is that, all that Section 62(2) confers on the right owner, is the power to institute a suit in his own place of residence or business, provided there is a cause of action which has arisen within the territory of India.

This provision is a departure from traditional principles which require the suit to be instituted at the defendant’s place of residence or business or where the cause of action has arisen inside India. This explains the non-obstante clause in Section 62(2) which says “notwithstanding anything contained in the Code of Civil Procedure, 1908”.

In other words, Section 62(2) is merely a limited departure from the principles governing jurisdiction only insofar as it allows the owner of a right under the Copyright Act to institute a suit at a place of his residence or business, provided the right conferred under the Copyright Act has been infringed anywhere within the territory of India.

Therefore, I would think any attempt to seek to apply Section 62(2) to acts which have been committed outside India, amounts to subversion of the provision to suit one’s convenience.

Opinions and Corrections are, as always, welcome!