Bombay High Court: In a very important case relating to rights of an owner of the copyright in sound recordings, S.J. Kathawalla, J. issued a permanent injunction against Wynk Music restraining it from infringing the copyright if Tips Industries held by it in over 25,000 songs. The Court was faced with determining the issue of easy/ready access to music /sound recording vis-a-vis the restrictions which can be put on the same by the bonafide owners of copyright in the said music/sound recording.
Tips Industries — owner of copyright in over 25,000 sound recordings (“Repertoire”) — licensed its Repertoire to Wynk Music, owner and operator of Wynk — an over the top service available on the internet through which, the subscribers, upon payment of a subscription fee, can listen to numerous sound recordings and audio-visual recordings including Tips’ Repertoire. The Repertoire was licensed to Wynk by the copyright society — Phonographic Performance Ltd. (“PPL”). However, the said license expired on 31-8-2016.
The negotiations which ensued thereafter for extending the license failed, and Tips requested Wynk to deactivate its Repertoire from their platform — which request according to Tips, was not complied with by Wynk. Thereafter, Tips issued a cease and desist notice to Wynk on 17-11-2017. In reply, Wynk invoked Section 31-D of the Copyright Act, 1957, claiming that they are a broadcasting organisation entitled to a statutory license under the said section to communicate the work to the public by way of a broadcast of Tips’ musical work and sound recordings, Consequently, on 29-1-2018, Tips filed two suits against Wynk for infringement of copyright, disputing Wynk’s right to avail statutory license provided for by Section 31-D and claiming permanent injunction, restraining them from — (a) communicating to the public Tips’ Repertoire; and (b) giving on commercial rental/sale, Tips’ Repertoire of songs by way of providing download services/features.
The High Court held a detailed discussion on several issues as framed before it. After considering various provisions of the Copyright Act and several case laws on the subject, the Court answered the issues as follows:
(a) It is evident that Wynk through its purchase feature and download feature, is enabling its customers to store physical files/electronic copies Tips’ Repertoire on their devices in abrogation of the exclusive rights granted to Tips under Section 14(1)(e)[copyright in respect of sound recording] of the Act.
(a-i) The defence provided in Section 52(1)(a)(i) is not available to Wynk at all. The defence of fair use may be available in a given case, to an individual user. The activities of Wynk can never be termed as ‘private’ or ‘personal use’ or ‘research’. Wynk is clearly selling and /or commercially renting sound recordings including, iner alia, Tips’ Repertoire for their own commercial benefit.
(a-ii) The provisions of Section 52(1)(b) are fairly straightforward. It is clear from the nature of Wynk’s activities that the offline storage, either permanent or temporary, of electronic copies of the sound recordings on the customer’s devices, is the primary selling point/unique object of Wynk’s business. The electronic storage of Tips’ sound recording on the platform of Wynk can neither be termed as ‘transient’ nor ‘incidental’. The sound recordings may be stored on the customers’ devices during the tenure of their subscription or as per their discretion, as the case may be. In such circumstances, the storage of the sound recordings cannot be said to be incidental or transient to services of Wynk.
(a-iii) Section 31-D contemplates communication to public by way of broadcast of sound recordings only, and not their commercial rental and/ or sale. Since the services (download/purchase feature) provided by Wynk are in the nature of commercial rental and/or sale of sound recordings, they do not fall within the purview of Section 31-D of the Act and Wynk is prohibited from exercising a statutory license apropos thereto.
(b) Provisions of Section 31-D read with Rules 29 to 31 of the Copyright Rules, 2013 coupled with the legislative history preceding the passage of Copyright Amendment Act, 2012 clearly support the submission that Section 31-D contemplates only television and radio broadcasting and to internet broadcasting. Moreover, prior determination of royalty rates is a necessary precondition for the exercise of rights in respect of a Statutory License under Section 31-D. Therefore, even assuming that ‘internet broadcasting’ was covered within the ambit of Section 31-D. Wynk could not have exercised Statutory License under the said section in the absence of pre-fixation of the rate of royalty by the Appellate Board.
(c) Rule 29 of the Copyright Rules, 2013 and its proviso which state that prior fixation of royalty rates is a necessary precondition to the exercise of Statutory License under Section 31-D was challenged as invalid by Wynk. However, the challenge was dismissed and the rule was held valid.
(d) Wynk relied on Government of India’s Office Memorandum dated 5-9-2016 which clarified: “… in view of the above, the words any broadcasting organization desirous of communicating to the public may not be restrictively interpreted to cover only radio and television broadcasting, as the definition of Broadcast read with communication to the public appears to include all kinds of broadcast including internet broadcasting. Thus, the provisions of Section 31-D of the Copyright Act, 1957 are not restricted to radio and television broadcasting only but cover internet broadcasting also.” It was held that the said Memorandum lacks a ‘statutory flavour’ and cannot prevail over an interpretation which is drawn under the Act and the Rules. The interpretation of Section 31-D in the said Memorandum is inconsistent with the interpretation drawn by this Court and this Court is not bound by the said Memorandum.
(e) High Court has no jurisdiction to grant a Compulsory License which is within the exclusive domain of the Copyright Board. Furthermore, permitting Wynk to deposit money whilst permitting it to use Tips’ Repertoire for its commercial activities would amount to a grant of a Compulsory License, for which the High Court, being a Civil Court doesn’t have the jurisdiction.
(f) Tips’ entire Repertoire is being widely exploited by Wynk without payment of any royalty. The balance of convenience was in favour of Tips. An injunction order restraining Wynk from using the Tips’ Repertoire would preclude them from using 25,000 songs out of 2.6 million songs. An injunction order against Wynk shall not bring its business to a standstill or cause irreparable injury.
Insofar as the download and purchase feature of Wynk’s activities are concerned, the same amount to infringement of Tips’ rights provided under Section 14(1)(e)(ii) of the Copyright Act; insofar as the on-demand streaming services are concerned, the same amount to infringement of Tips’ rights provided in Section 14(1)(e)(iii) of the Copyright Act; and the provisions of Section 31-D of the Act are not applicable to internet broadcasting.
The Court considered its necessary to grant reliefs in favour of Tips industries in terms of the permanent injunction claimed by it as mentioned above. The present notice of motion were therefore allowed.[Tips Industries Ltd. v. Wynk Music Ltd., Notice of Motion (L) No. 197 of 2018 in Commericial Suit IP (L) No. 114 of 2018, decided on 23-04-2019]