copyright infringement

Op EdsOP. ED.

Introduction

 Intellectual (and artistic) progress is possible only if each author builds on the work of others. No one invents even a tiny fraction of the idea that make up our cultural heritage.   – Judge Easterbrook in Nash v. CBS Inc.[1]

Sampling of music is as old as music itself, but there has been a paradigm shift from analogue to digital sampling over a period of time. One of the latest examples of digital sampling of a Bollywood song is Lata Mangeshkar’s infamous song “Thoda Resham Lagta Hai” sampled in “Truth Hurts ft Rakim – Addictive” and the “Black Eyed Peas – Don’t Phunk with My Heart (2005)” borrows its melody from “Aye Naujawan Sab Kuch Yahan” and samples “Yeh Mera Dil Pyaar ka Deewana” both of which were originally performed by a renowned bollywood vocalist Asha Bhosle.

Digital sampling has been described as the conversion of analogue sound waves into a digital code. The digital code that describes the sampled music can be reused, manipulated or combined with other digitalised or recorded sounds using a machine with digital data processing capabilities, such as computer synthesiser.[2] In simpler words, sampling can be defined as a process of taking a portion or a sample of sound recording and using it in new work.

This article discusses the essence of “sampling” i.e. the definition, defences, legality and use in India.

Definition

Black’s Law Dictionary defines “sampling” as “[t]he process of taking a small portion of a sound recording and digitally manipulating it as a part of the new recording.”[3] A contemporary musician may sample a large portion of a pre-existing recording or only a few notes.[4] Advances in digital recording, playback, and synthesis technology have made sampling quite easy, even for an average sampler on a personal computer,[5] causing the practice of sampling to penetrate nearly across all genres of modern popular music.[6]

In Hawkes & Son v. Paramount Film Service Ltd.,[7] the phrase “substantial part” was elucidated for the first time. While the phrase varies from case to case, the usage of mere 20 seconds of a four-minute long music piece was construed as a “substantial part”.

“Copyrights can be extended to two major aspects of music:

  1. the musical composition, which is usually the composition and lyrics;
  2. the physical embodiment of a particular performance of the musical composition, usually in the form of a master recording.”[8]

Sampling of any musical work without prior permission of the original copyright-holder infringes the holder’s right.  However, to prove infringement, the plaintiff must show the “ownership of the copyright” and “unauthorised copying of the copyrighted work”.[9] In order to substantiate a claim for unauthorised copying, the following must be established:

  1. the defendant has actually copied the plaintiff’s work; and
  2. the copying is illegal because a substantial similarity exists between the defendant’s work and the protectable elements of plaintiff.[10]

Once a prima facie case of copyright infringement against the defendant has been made out by the owner of the copyright, the onus will lie on the alleged infringer to prove his innocence. This may lead to the use of affirmative defences, such as fair and de minimis uses, as well as estoppel, laches, misuse, etc. to prove innocence.

Affirmative defences

 Music sampling can “at time” be legal. The fundamental purpose of copyright is to strike a balance between the interests of the copyright-holder and the consumers.

Therefore, to strike the balance and avoid infringement, the following affirmative defences can be used:

  1. The defence of de minimis.
  2. The defence of fair dealing.

1. The defence of de minimis

 The de minimis defence to a copyright infringement is based on the legal maxim de minimis non curat lex, meaning “the law does not concern itself with trifles”.[11] According to this principle, the incorporation of a word and/or usage of tune should be minimum or negligible. For example, if a musician who utters the phrase “Yo Jude” as a deliberate reference to the Beatles’ song “Hey Jude” in the musician’s own new song, this would probably be a clear-cut case of a de minimis use.[12] To some extent, copying is permitted and is not conclusive of infringement. However, it is necessary to show that it has not been done to an unfair extent.

The High Court of Delhi in India TV Independent News Service (P) Ltd. v. Yashraj Films (P) Ltd.[13] has held that:

  1. the use of de minimis, as applied in other areas of the law, without any modification or without having any marriage of convenience, has three significant advantages in the field of copyright law. Firstly, the fair use concept would be a bad theoretical fit for trivial violations. Secondly, de minimis analysis is much easier. Thirdly, a de minimis determination is the least time consuming, and needless to state it is in the interest of the parties as also the society that litigation reaches its destination in the shortest possible time.
  2. After all, the factors commonly considered by courts in applying de minimis are well listed. They are five in number:

(i) the size and type of the harm;

(ii) the cost of adjudication;

(iii) the purpose of the violated legal obligation;

(iv) the effect on the legal rights of third parties; and

(v) the intent of the wrongdoer.

2. Fair dealing of copyrighted work

 The doctrine of “fair dealing” is the second defence to copyright infringement that allows restricted use of copyrighted work without the owner’s permission. It acts as a limitation as well as an exception to the exclusive right provided to a copyright-holder under the Copyright Act, 1957[14] (“the Act”). Section 52 of the Copyright Act lays down certain acts or works that cannot be considered as an infringement of copyright, namely, fair dealing with a literary, dramatic, musical or artistic work.[15] The idea behind the introduction of this doctrine is to prevent stagnation of creativity and to differentiate between bona fide and mala fide usage of the copyrighted work.

Legality of music sampling in India

Indian copyright law provides protection for works created in India.[16] While the Act does not include a provision particularly dealing with music sampling, it protects various works, including, dramatic, musical works, original literary, sound recordings and even films. Any violation of these rights of the right-holder is considered a copyright infringement.

Section 14 of the Act provides the copyright-holders with the right to protect their complete or a substantial part of their work. Section 14(a) in particular, provides the owner of a “musical work”, the right to make any adaptation of the work, issue copies of the work to the public not being copies already in circulation, perform the work in public and communicate it to the public, etc.[17] “Musical work” is defined under Section 2(p) of the Act. It means work consisting of “music” and includes any graphical notation of such work but does not include any words or any action intended to be sung, spoken or performed with the music.[18]

Protection of foreign works

 The Act additionally protects any foreign work that is the product of countries mentioned in the international copyright order, as if such works are “Indian works”[19]. The international copyright order safeguards works of nationals of countries included in the Berne Convention for the Protection of Literary and Artistic Works, the “Trade Related Aspects of Intellectual Property Rights Agreement”, and the “Universal Copyright Convention”.[20]

Two-pronged test to determine copyright infringement

In cases of infringement, the courts have adopted a two-pronged test. This test determines whether the rights of a copyright-holder have been infringed. The test requires substantial similarity between the original and infringing works, and the challenged work to be a copy of the original work.[21] The same has also been upheld by the Supreme Court of India in Eastern Book Co. v. D.B. Modak[22] wherein the Court first examines if the entire work is original or if there are any substantial similarities between the original work and the work in question.

1. Originality

Since the definition of the term “originality” is not defined under the Indian copyright law, we will have to rely on the jurisprudence to understand the term. The Supreme Court of India in Eastern Book Co. v. D.B. Modak[23], following the principles laid down in CCH Canadian Ltd. v. Law Society of Upper Canada[24], held that “the original work should be the product of an exercise of skill and judgment and it is a workable yet fair standard. The sweat of the brow approach to originality is too low a standard which shifts the balance of copyright protection too far in favour of the owner’s right and fails to allow copyright to protect the public’s interest in maximising the production and dissemination of intellectual works. On the other hand, the creativity standard of originality is too high”.

The Court further observed that the copyrightable work must be original and should be independently created by “application of substantial degree of skill, industry or experience”. It is pertinent to note that Indian courts have time and again stressed the fact that copyright vests in independently created work regardless of their resemblance to a pre-existing work.

2. Substantial similarity

The sampling of a substantial portion of the original copyright work is determined by the quality of the copyrighted work and not its quantity. The High Court of Bombay in Twentieth Century Fox Film Corpn. v. Sohail Maklai Entertainment (P) Ltd.[25] held that “substantial similarity” between the original and the copied work is determined by the quality of the copied work and not the quantity. The mere fact that only four notes have been used for the sample has insignificant implications on determining whether the similarity is substantial. If a qualitative analysis of the work shows a clear similarity between the works, then there is a possibility of an infringement.

However, Indian courts have largely relied on “look and feel” or “audience test” to fairly determine the infringement. The Supreme Court of India in R.G. Anand v. Deluxe Films[26] has held that look and feel or audience test are the most reliable tests to determine a copyright infringement where the “reader, spectator or viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises”.

Further, the High Court of Delhi in India TV Independent News Service (P) Ltd. v. Yashraj Films (P) Ltd.[27] had highly relied on American jurisprudence to determine the substantial similarity between the original and the work in question. The Court observed that the prerequisite to copyright infringement is the demonstrable copying of the work amounting to substantial similarity. The Court further identified two types of substantial similarity: (i) comprehensive non-literal similarity; where courts have strived to identify the “fundamental essence of the structure”, and it being copied, even where specific expression is not copied. (ii) Fragmented literal similarity, in which bits of specified expressions are copied, but the overall structure is not. The term fragmented literal similarity is defined by the 9th Circuit Court in Newton v. Diamond[28], is where “the defendant copies a portion of the plaintiff’s work exactly or nearly exactly, without appropriating the work’s overall essence or structure”.

In cases of digital sampling, the use of a sample is deemed to not be substantially similar, only when an average listener cannot recognise such usage. However, there is a high degree of similarity between the works, but the onus will lie on the infringer to establish that the similarities are trivial or de minimis and not substantial.

Consequences of Infringement – Damages to the aggrieved

 The High Court of Madras in Lahari Recording Co. Ltd. v. Music Master Audio Video Mfg Co. (P) Ltd.[29], discussed in length the types of damages available to a copyright owner i.e. Sections 55 and 58 of the Act. The Act provides civil remedies for a copyright-holder in an infringement suit, which includes injunctions and damages, with the costs of proceedings determined by the court’s discretion.[30] Additionally, the Act also makes copyright infringement a criminal offence, punishable by imprisonment and fines.[31] It is important to note at this juncture that the courts have made it certain that, the damages can be levied only if the infringement is established. 

Conclusion

Just like the principle of “live and let live” music has prevailed and developed over the concept of “sample and let sample”. The Copyright Act does not specifically deal with the concept of music sampling. However, it provides ample provisions for the protection of music. Further, even the Indian courts have spoken in length regarding damages to a plaintiff in cases of infringement. While the safest way out of repercussions for music sampling is obtaining a licence, the Copyright Act has provided certain exceptions like de minimis and fair dealing of copyrighted musical works as a leeway from legality.

*Authors are Founder and Associate respectively with Shivadass & Shivadass (Law Chambers). The authors would like to acknowledge the contribution of Ms Shachi Gambhir, a 3rd Year law student from National Law University, Odisha.  The contents and comments of this document do not necessarily reflect the views/position of Shivadass and Shivadass (Law Chambers) but remain solely of the author(s). For any further queries or follow up, please contact admin@sdlaw.co.in.

[1] 899 F 2d 1537, 1540 (7th Cir 1990).

[2] Jarvis v. A & M Records, 827 F Supp 282, 286 (D.N.J. 1993).

[3] Black’s Law Dictionary 1368 (8th Edn., 2004).

[4] Peter Cuomo, Claiming Infringement Over Three Notes is Not Preaching to the “Choir”. Newton v. Diamond and a Potential New Standard in the Copyright Law, 10. B.U.J. Sci. & Tech. L.177, 179 (2004).

[5] Id.

[6] See David S. Blessing, Who Speaks Latin Anymore? Translating De Minimis Use for Application to Music Copyright Infringement and Sampling, 45 William & Mary L. Rev. 2399, 2404-05 (2004).

[7] Hawkes & Sons (London) v. Paramont Films Services Limited, (1934) 1 Ch 593.

[8] Ulloa v. Universal Music and Video Distribution Corpn., 303 F Supp 2d 409, 412 (SDNY 2004).

[9] Jorgensen v. Epic/Sony Records, 351 F 3d 46, 51 (2nd Cir 2003) [citing Feist Publications Inc. v. Rural Telephone Service Co. Inc., 1991 SCC OnLine US SC 46 : 113 L Ed 2d 358 : 499 US 340, 361 (1991) and Castle Rock Entertainment Inc. v. Carol Publishing Group, 150 F 3d 132, 137 (2nd Cir 1998)]. Also see Saregama India Ltd. v. Mosley, 687 F Supp 2d 1325 (S.D. Fl. 2009).

[10] Hamil America Inc. v. GFI, 193 F 3d 92, 99 (2nd Cir 1999) [quoting Knitwaves Inc. v. Lollytogs Ltd., 71 F 3d 996, 1002 (2d Cir 1995)]; Tufenkian Import/Export Ventures Inc. v. Einstein Moomjy Inc., 338 F 3d 127, 131 (2d Cir 2003); Boisson v. Banian, Ltd., 273 F 3d 262 (2nd Cir 2001).

[11] Black’s Law Dictionary, 1713 (8th Edn., 2004).

[12] The example comes from the Sixth Circuit case, Toulmin v. Rike-Kumler Co., 316 F 2d 232 (6th Cir 1963).

[13] 2012 SCC OnLine Del 4298.

[14] http://www.scconline.com/DocumentLink/L6l9i233.

[15] The Copyright Act, 1957, S. 52, http://www.scconline.com/DocumentLink/2fbh55Hy. As substituted by Act 27 of 2012, Section 32(i), for clause (a) (w.e.f. 21-6-2012).

[16] Government of India, Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, A Handbook of Copyright Law, <https://copyright.gov.in/Documents/handbook.html> (last visited 13-7-2021).

[17] The Copyright Act, 1957, Section 14(a).

[18] The Copyright Act, 1957, Section 2(p). http://www.scconline.com/DocumentLink/aO004I3F.

[19] Government of India Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, A Handbook of Copyright Law, <https://copyright.gov.in/Documents/handbook.html> (last visited 13-7-2021), “Indian work” means a literary, dramatic or musical work, the author of which is a citizen of India; or which is first published in India; or the author of which, in the case of an unpublished work is, at the time of the making of the work, a citizen of India.

[20]Government of India, Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, A Handbook of Copyright Law, <https://copyright.gov.in/Documents/handbook.html> (last visited 13-7-2021), “Indian work” means a literary, dramatic or musical work, the author of which is a citizen of India; or which is first published in India; or the author of which, in the case of an unpublished work is, at the time of the making of the work, a citizen of India.

[21] K.M. Gopakumar and V.K. Unni, Perspectives on Copyright: The “Karishma” Controversy, 38 Economic & Political Weekly 2935, 2935 (2003).

[22] (2008) 1 SCC 1.

[23] (2008) 1 SCC 1.

[24] 2004 SCC OnLine Can SC 13.  http://www.scconline.com/DocumentLink/8BTs70WN

[25]  2010 SCC OnLine Bom 1577.

[26] (1978) 4 SCC 118.

[27]  2012 SCC OnLine Del 4298.

[28]  204 F Supp 2d 1244, 1249-50 (C.D. Cal 2002).

[29] 2008 SCC OnLine Mad 177.

[30] The Copyright Act, 1957, Section 55, http://www.scconline.com/DocumentLink/0Bzdx2AE.

[31] The Copyright Act, 1957, Section 63. http://www.scconline.com/DocumentLink/9TuhWwpE.

Case BriefsHigh Courts

Delhi High Court: Subramonium Prasad, J., granted an interim injunction in favour of Tata Sons (P) Ltd. in a case where the defendant has got a domain name registered which is identical to the website of their e-commerce arm.

Plaintiffs’ Counsel, Pravin Anand submitted that plaintiff 1, holding company of the TATA Group of Companies was the owner and registered proprietor of the trademark TATA as well as the device mark TATA. Plaintiff 2 was a part of the TATA Group and engaged in the business of e-commerce, dealing in various products through its e-commerce platform www.tatacliq.com.

It was submitted that the above domain name was registered by plaintiff 2 and defendant 1 was the owner of the domain name: www.tatacliqsmart.com which is identical with the plaintiff’s website.

Adding to the above submissions, it was stated that the defendant had added the word ‘smart’ in the domain name which was not permitted. Defendant was selling the products of plaintiff 1 company on its website, which amounted to infringement of the plaintiffs registered trademark and copyrights.

Another contention was that defendant 1 through its website www.tatacliqsmart.com was selling various TATA products at throw away prices and there was a likelihood that by using the word TATA the defendant would be selling the products which were not actual products of TATA but fake products.

Bench tried opening the website www.tatacliqsmart.com and found that the website could not be opened, however, the screenshots produced by the plaintiffs show that the website was being used for online sale of several products including products of plaintiff 1. Hence it was apparent that defendant 1 had shut down the website only because the present suit was filed.

Court opined that the plaintiffs made a case of grant of interim injunction.

Matter to be listed before the Roster Bench on 19-07-2021. [TATA Sons (P) Ltd. v. Electro International, 2021 SCC OnLine Del 3743, decide on 28-06-2021]

Advocates before the Court:

For the Plaintiffs: Mr Pravin Anand, Mr Achuthan Sreekumar and Mr Rohil Bansal, Advocates

For the Defendants: Mr Mrinal Ojha and Mr Debarshi Dutta, Advocates for Defendants Nos.2 and 3.

About Justice Subramonium Prasad:

Justice Subramonium Prasad graduated in B.Com. (Hons.) from Delhi University. He acquired his LLB degree from Campus Law Centre, Delhi University in the year 1990. Justice Prasad cleared the Advocate-On–Record exam in 1996 and started his independent practice. He became the Standing Counsel for the State of Tamil Nadu in the Supreme Court of India in 2003, a post he held till 2006. He was also the standing counsel for the custodian appointed under the Special Court (Trial of Offences Relating to Transactions in Securities) Act, 1992, dealing with cases pertaining to the 1992 stock exchange scam. In October 2012, Justice Prasad was appointed as the Additional Advocate General for the State of Tamil Nadu in the Supreme Court of India. Justice Prasad was designated as a Senior Advocate by the Supreme Court of India in April 2015.

Over his career spanning 28 years, Justice Prasad has worked on several high profile matters, and has been involved in several reported judgements of the Supreme Court on various subjects like Constitutional Law, Tax, Corporate and Commercial Law, Criminal Law, Election Law, Service Law and Inter-State River Water Disputes.

Justice Prasad was appointed as an Additional Judge of the Madras High Court on 4.06.2018. He was transferred to Delhi High Court as an Additional Judge on 13.03.2020 and confirmed as a Permanent Judge of the Madras High Court on 17.03.2020.

Source: Delhi High Court Website

Case BriefsInternational Courts

European Court of Justice (ECJ): In a landmark Copyright case, the Grand Chamber composed of K. Lenaerts, President, R. Silva de Lapuerta, Vice-President, J.‑C. Bonichot, M. Vilaras, E. Regan and M. Ilešič (Rapporteur), Presidents of Chambers, E. Juhász, M. Safjan, D. Šváby,S. Rodin, F. Biltgen, K. Jürimäe and C. Lycourgos, JJ.,  rules in the favour of renowned media giant YouTube. The Bench held that,

YouTube and other such intermediaries cannot be made liable for copyright infringement unless the intermediary/operator had specific knowledge that protected content is available illegally on its platform and refrains from expeditiously deleting it or blocking access to it.

The issue before the Court was regarding several infringements of the intellectual property rights held by Mr Peterson and Elsevier committed by users of the video‑sharing platform operated by YouTube and the file-hosting and -sharing platform operated by Cyando, respectively.

Peterson v. Youtube

Mr Peterson, a music producer and owner of the Nemo Studios had entered into a worldwide exclusive artist contract with the performer Sarah Brightman covering the use of audio and video recordings of her performances; including a licence agreement, covering the exclusive distribution of the recordings and performances.

On 4 November 2008, Sarah Brightman began a tour called the ‘Symphony Tour’ in which she performed the works she had recorded for the album Winter Symphony. Noticing that some private recordings from those concerts could be accessed on the YouTube online platform, Mr Paterson issued cease-and-desist declarations under threat of penalties to the owner of Youtube, Google Germany. Though the access to those videos was blocked initially, some audio recordings from Sarah Brightman’s performances, accompanied by still and moving images once again reappeared on YouTube’s online platform. Consequently, Mr Peterson brought an action against Google and YouTube seeking an injunction, disclosure of information and a declaration that they were liable to pay damages.

Elsevier v. Cyando

Elsevier, an international specialist publisher, held the exclusive rights to use the works at issue namely Gray’s Anatomy for Students, Atlas of Human Anatomy and Campbell-Walsh Urology. On being aware that Cyando, an operator of ‘Uploaded’ file-hosting and -sharing platform, had uploaded three works in respect of which it (Elsevier) held exclusive rights, Elsevier had send a notice to Cyando. Later on, Elsevier brought an action against Cyando for prohibitory injunction, as the party responsible for the copyright infringements in the alternative, as a participant in those infringements and, in the further as an interferer.

Questions Referred

  1. Whether Article 3(1) of the Copyright Directive must be interpreted as meaning that the operator of a video sharing platform or a file-hosting and ‑sharing platform, on which users can illegally make protected content available to the public, itself makes a ‘communication to the public’ of that content, within the meaning of that provision, in conditions such as those at issue in the main proceedings.
  2. Whether Article 14(1)(a) of that directive must be interpreted as meaning that, for that operator to be excluded, under that provision, from the exemption from liability provided for in Article 14(1), it must have knowledge of specific illegal acts committed by its users relating to protected content that was uploaded to its platform.
  3. Whether Article 8(3)of the Copyright Directive must be interpreted as precluding a situation where the right holder is notable to obtain an injunction against an intermediary whose services are used by a third party to infringe the rights of that right holder unless that infringement has previously been notified to that intermediary and that infringement is repeated.

Findings of the Court

‘Communication to the Public’ whether by the operator/intermediary or by users?

Under Article 3(1) of the Copyright Directive, Member States are to provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, the authors thus have a right which is preventive in nature and which enables them to intervene between possible users of their work and the communication to the public which such users might contemplate making, in order to prohibit such communication.

Communication to the Public

The Bench observed that potentially illegal content was uploaded to the platform concerned not by the operator, but by users, who acted autonomously and who were responsible for their own actions. In addition, it was the users of the platform who determine whether the content they had uploaded was made available to other internet users via that platform so that those other internet users could obtain access to it.

Further, YouTube does not intervene in the creation or selection of content uploaded to its platform by platform users, and that it does not view or monitor that content before it is uploaded; that content is uploaded to that platform automatically. It was also apparent that YouTube clearly informs its users, in its terms of service and every time a file is uploaded, that it is forbidden to post protected content on that platform in breach of copyright. Furthermore, where a video is blocked due to a report by the right holder, the user who has uploaded it is warned that his or her account will be blocked in the event of repeated infringements. In addition, YouTube has put in place various technological measures in order to prevent and put an end to copyright infringements on its platform, such as, inter alia, a notification button and a special alert procedure for reporting and arranging for illegal content to be removed, as well as a content verification program for checking content and content recognition software for facilitating the identification and designation of such content. Thus, it is apparent that that operator has adopted technological measures to counter credibly and effectively copyright infringements on its platform.

Regarding the Uploaded file-hosting and -sharing platform, it was common ground that a download link allowing access to uploaded content was communicated only to the user who uploaded the file and that the platform did not make it possible to share that link. Thus, in order to share that content, the user must either send the download link directly to the persons to whom he or she wishes to give access to that content or must publish that link on the internet, for example in blogs, forums or ‘link collections’. Moreover, the operator does not create, select, view or check content uploaded to its platform either. Furthermore, it informs its users, in the conditions of use of its platform, that they are prohibited from infringing copyright via that platform.

Consequently, the Bench held that

Article 3(1) of the Copyright Directive must be interpreted as meaning that the operator of a video-sharing platform or a file-hosting and ‑sharing platform, on which users can illegally make protected content available to the public, does not make a ‘communication to the public’ of that content, within the meaning of that provision, unless it contributes, beyond merely making that platform available, to giving access to such content to the public in breach of copyright.

The Bench clarified, an operator could only be held liable for the infringement made via its platform where it has specific knowledge that protected content is available illegally on its platform and refrains from expeditiously deleting it or blocking access to it, or where that operator, despite the fact that it knows or ought to know, in a general sense, that users of its platform are making protected content available to the public illegally via its platform, refrains from putting in place the appropriate technological measures that can be expected from a reasonably diligent operator.

Whether Operators can claim exemption from liability?

In order to ascertain whether the operator of a video-sharing platform or a file-hosting and -sharing platform may be exempted under Article 14(1) of the Directive on Electronic Commerce from liability for the protected content which users illegally communicate to the public via its platform, it was necessary to examine whether the role played by that operator was neutral, i.e., whether its conduct was merely technical, automatic and passive, which mean that it had no knowledge of or control over the content it stores, or whether, on the contrary, that operator played an active role that gave it knowledge of or control over that content.

Noticing that the service providers concerned could not, in accordance with Article 15(1) of that directive, be subject to a general obligation to monitor the information which they transmit or store or to a general obligation actively to look for facts or circumstances indicating illegal activity; and that the Bench held that the platform operators at issue did not create, select, view or monitor content uploaded to their platforms, and the fact that the operator of a video-sharing platform, the Bench held that,

For such an operator to be excluded from the exemption from liability provided for in Article 14(1), it must have knowledge of or awareness of specific illegal acts committed by its users relating to protected content that was uploaded to its platform and that as soon as the service providers actually obtained knowledge or awareness of illegal information, it acted expeditiously to remove or to disable access to that information/content.

Whether actions can be brought against the intermediary without previously notifying it of infringement?

 Article 8(3) of the Copyright Directive provides that ‘Member States shall ensure that right holder are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe copyright or a related right’. Is that Article 8(3) of the Copyright Directive must be interpreted as not precluding a situation under national law whereby a copyright holder or holder of a related right may not obtain an injunction against an intermediary whose service has been used by a third party to infringe his or her right, that intermediary having had no knowledge or awareness of that infringement, within the meaning of Article 14(1)(a) of the Directive on Electronic Commerce, unless, before court proceedings are commenced, that infringement had first been notified to that intermediary and the latter had failed to intervene expeditiously in order to remove the content in question or to block access to it and to ensure that such infringements do not recur. The Bench opined,

Where the ‘interferer’ is a service provider whose service consists in storing information provided by a user, in principle that service provider can be the subject of a prohibitory injunction only if, after notification of a clear infringement of an intellectual property right had been provided, that right is infringed again or continued to be infringed because that service provider had not intervened expeditiously after that notification to remove the content in question or to block access to it and to ensure that such infringements do not recur.

[Frank Peterson v Google LLC & YouTube Inc., C‑682/18, decided on 22-06-2021]

Kamini Sharma, Editorial Assistant has reported this brief.

Case BriefsForeign Courts

The High Court of Justice: The instant claim was brought by Performing Right Society Ltd. against Qatar Airways for global copyright infringement. The question before Deputy Master Francis was whether there should be an order for extended disclosure and if so then the extent of such an order; the Court observed that for the instant case, it is appropriate to issue Extended Disclosure, but such order should be limited to outward-facing advertising and other promotional materials.

As per the facts, the dispute revolved around the in-flight entertainment system known as Oryx One which Qatar Airways operates on its flights worldwide, together with two complementary apps known as the Oryx One Play App and the Oryx One App, through which Qatar Airways provides its passengers with entertainment services and access to a wide range of entertainment content, including music, films, television shows and games. PRS claimed that the content which Qatar Airways makes available through the Services includes many thousands of musical works to which it is the assignee of the worldwide performing rights (referred to as “Repertoire Works”) and that in making such content available to its passengers without licence from PRS, Qatar Airways has infringed those rights. Thus PRS sought injunctive relief to restrain the infringement and damages.

The claim engaged not only UK and Qatari copyright law, but also the laws of many other territories from where Qatar Airways flights take off and land, and also of those territories over which its flights pass in transit.

Some of the relevant issues for the consideration of the Court were as follows-

  1. Whether Qatar Airways only communicated such work to the public when the Repertoire Work was actually played by one of the Defendant’s passengers?
  2. Whether sections 19 and 20 of the Copyright Designs and Patents Act, 1988 are inapplicable when the relevant aircraft was only in the territorial airspace of the United Kingdom in transit to some other territory?
  3. Whether Articles 7(6) and 7(7) of the Qatari Law No. 7 of 2002 apply whenever the relevant aircraft was in the territorial airspace of a country other than Qatar in transit to Qatar or to some other territory?

The relevant provisions under UK law which were involved in the issue were the public performance right under Section 19 of the Copyright Designs and Patents Act 1988; and the communication to the public right under Section 20 of the CDPA.

The PRS contended that Qatar Airways makes all such content available to its passengers by an on-demand streaming service accessible through its Oryx One Play app which it states can be downloaded by passengers onto and used on both personal electronic devices (phones and tablets) and laptops in advance of their flight. The PRS further put forth that it has identified various issues for disclosure under section 1A of the Disclosure Review Document in relation to the preliminary issues trial, together with the Models for Extended Disclosure which it contends to be appropriate.

Qatar Airways stated that the Oryx One Play app was only made available to passengers on 10 of its aircraft which were not equipped with the Oryx One on board system, none of which are presently in service. It accepts that the Oryx One Play app could be downloaded by passengers before their flight but only onto personal electronic devices and not also laptops, and it asserts that the content made available through the app could only then be accessed by passengers when on board the aircraft using the on board WiFi.

Analysing the aforementioned issues (mainly 3 and 4 which concerned the Oryx Play App), the Court observed that the in-flight entertainment system operated by Qatar Airways enables content to be made available to passengers when on the aircraft by means of individual on-board touch screens located in front of the passenger and headphones connected by a socket in the passenger’s seat. The Court noted that the Performing Right Society might be justified in seeking in seeking disclosure (under Model C of their DRD) of outward-facing advertising and other promotional materials used by Qatar Airways to sell its flights to see the extent to which the in-flight entertainment system is promoted as a selling point. “Whilst it may be reasonable and proportionate for there to be an order for search-based disclosure of documents within the former class, I do not consider it would be reasonable or proportionate for that to be extended to documents of the latter class”.  [Performing Right Society Ltd. v. Qatar Airways Group, [2021] EWHC 869 (Ch), decided on 13.04.21]

Sucheta Sarkar, Editorial Assistant has reported this brief.

Case BriefsHigh Courts

Bombay High Court: G.S. Patel, J., disposed of an interim application with respect to the suit for trade mark and copyright infringement, while holding that ‘Copyright registration is not mandatory under the Copyright Act, 1957.”

Trade Mark in question is a label mark, not  a word or a device mark.

Plaintiff claimed copyright in the artistic work comprised in the label.

It has been stated that Narayani Trading’s Label uses very nearly – or indistinguishably the same – principal background colour.

Counsel Mr Burad for Narayani Trading submitted that the two labels are entirely distinct and no one will mistake one for another. Court rejected the same and elaborated that the key features, integers, or elements that have been described by the Bench in Sanjay Soya’s Label all find place in Narayani’s Trading Label with only minor variations.

Factual Matrix

Sanjay Soya has been manufacturing and selling edible oils of various kinds, including soyabean oil, for many years. Narayani Trading is a sole proprietorship. Sanjay Soya claimed to have the necessary ISO certifications for quality and other certifications. Sanjay Soya stated that it is the successor-in-title of one SK Oil Industries, in May 2003 SK Oil adopted the label, mark and artistic work in relation to edible oil which has distinctive get up, layout and schematic arrangements.

Recital (2) of the Deed of Assignment stated that SK Oil conceived, created, designed and developed a SOYA DROP label and that is the artwork that is the issue of concern in the present matter.

Counsel Mr Khandekar for Sanjay Soya submitted that the label is an original artistic work within the meaning of Section 2(c) of the Copyright Act. Further, it was added that, Sanjay Soya has used the mark, with some variants, openly and continuously since adoption.

In brief, Sanjay Soya’s Argument:

Sanjay Soya claimed that Narayani Trading has entirely lifted and unauthorisedly and illicitly copied Sanjay Soya’s registered label mark and the copyright-protected artistic work in the label. It says that Narayani Trading’s label is a reproduction and an illicit copy of a substantial part of Sanjay Soya’s original and distinctive artwork.

Piggyback on Sanjay Soya’s reputation?

Narayani Trading’s adoption of the label mark is dishonest, not bona fide, with an ulterior motive and intended to trade upon and encash the goodwill, recognition and reputation of Sanjay Soya’s business.

The Court noted that earlier decision of the Court in Dhiraj Dharamdas Dewani v. Sonal Info Systems (P) Ltd., 2012 (3) Mh LJ 888 held that registration under the Copyright Act is mandatory before a plaintiff can claim relief. So also, the decision in Gulfam Exports v. Sayed Hamid, 2000 (20) PTC 496 Bom says that registration is required. Noting the settled law, the present Bench held that these two decisions are per incuriam on the question of compulsory registration under the Copyright Act.

High Court observed that Copyright and Trade Mark operate in different spheres, though in some cases – as in the present one – these may overlap or intersect.

Copyright is a recognition of originality, granting rights of commercialisation and exclusivity in that commercialisation to the author of a work, a person who, by sweat of his brow, has brought into being the original expression or realisation of an idea. The emphasise is on originality, labour and skill in expression and realisation. 

Section 51 of the Copyright Act does not per se, demand prior registration. The said provision is to be read with Section 45(1) which states that the owner of copyright may apply for registration.

Importantly, copyright infringement lies in the unlicensed use of original works, in which the author has a spectrum of exclusive rights.

Essence of Copyright Protection

There is always the slight escape of the fair use doctrine, but the underlying principle is that no author may claim as his or her own the original authorship work of another. That is the essence of copyright protection.

The Supreme Court decision in Engineering Analysis Centre of Excellence (P) Ltd. v. Commissioner of Income Tax, Civil Appeal Nos 8733-8734 of 2018, authored by Rohinton Fali Nariman, J., explained the nature of copyright.

Registered proprietor of a mark or the owner (not registrant) of copyright may have recourse to the jurisdictional venues in Section 134 or Section 62, in addition to those under CPC Section 20.

The owner of a copyright has a panoply of jurisdictional choices, including one that is available only to him (and not to an ordinary plaintiff in a regular civil suit).

Rationale behind allowing a trade mark registrant or a copyright owner additional jurisdictional choice is that the right claimed is in rem, against the world at large. The infringement thus takes place where the proprietor of the trade mark or the owner of copyright resides or works. This is, therefore, no ground to hold that copyright registration is mandatory.

There is no law or precedent that requires that a declaration that a decision is rendered per incuriam be made only by a hierarchically superior court. 

Bench while expressing its observations, stated that it is impossible to believe, given Sanjay Soya’s prima facie established product popularity and reputation, that Narayani Trading was unaware of Sanjay Soya’s market presence, also it Narayani Trading does not show that the artistic work and label was in use before Sanjay Soya or SK Oil began using it.

Sanjay Soya v. Narayani Trading | Label Mark 

Bench held that knowing of Sanjay Soya’ s presence in the market, of its label and of its artistic work, Narayani Trading illicitly and without bona fide intent adopted a label that is confusingly, deceptively and strikingly similar to that of Sanjay Soya; and in doing so, copied substantially, if not wholly, the artistic work comprised in Sanjay Soya’s trade dress and packaging, and of which copyright Sanjay Soya through its predecessor-in-title is indeed the owner.

Cause of Action in ‘Passing Off’ || Classic Trinity

 High Court expressed that in 1978–79, Diplock LJ set out five guidelines for ‘passing off’ actions in Erven Warnink v. Townend & Sons Ltd.  [1979] AC 731, 742 (HL), this is the famous ‘Advocaat’ case. Oliver LJ in Reckitt & Colman Products Ltd v. Borden Inc., [1990] 1 All ER 873 distilled these into the three probanda in the tortious actions in passing off that we now know as the ‘Classic Trinity’:

  • goodwill owned by a claimant;
  • (ii) misrepresentation; and
  • (iii) damage to that goodwill.

Classic Trinity places on a plaintiff the burden of proving goodwill in its goods or services, trade dress, brand mark or even the thing itself.

In view of the above, Bench stated that Sanjay Soya prima facie did prove the above.

Further, the plaintiff needs to show the false representation to the public that leads it to believe that the goods or services of the defendant are those of the plaintiff. Fraud is not necessary.

The above, was also achieved by Sanjay Soya.

“Test of deception or its likelihood is that of the common person.”

A plaintiff need not prove actual or special damage; a reasonably foreseeable probability is sufficient.

“…in the case of beauty, similarity and its extent are matters that lie in the eyes of the beholder, and in all intellectual property matters, the beholder is, perhaps unfortunately, in the first instance always the judge tasked with deciding the dispute.”

Lastly, while concluding the matter, Bench expressed that looking at the two packets of which the images have been rendered at the start, all that the Court can say is “which is whose? I cannot tell.”

Finding the defence of Narayani Trading to be utterly frivolous and possibly moonshine, Court imposed costs on them. [Sanjay Soya (P) Ltd. v. Narayani Trading Company,  2021 SCC OnLine Bom 407, decided on 09-03-2021]

Advocates before the Court:

For the Plaintiff: Mr Rashmin Khandekar, with Ms Janhvi Chadha and Mr Hardik Sampat, i/ b Krishna and Saurasri Associates LLP.

For the Defendant: Mr Pritesh Burad, with Ms Amruta Patil & Mr Mitesh Visaria, i/ b Pritesh Burad Associates.

Case BriefsForeign Courts

The High Court of Justice: It was a significant victory for the Duchess of Sussex and noted actress Meghan Markle when the Court ruled in her favour while deliberating on the question that whether Associated Newspapers misused her private information and committed breach of her data protection rights with regards to the Letter to her father. It was held that the Duchess had a reasonable expectation that the contents of the Letter would remain private and that The Mail Articles interfered with that reasonable expectation.

Background

The British Royals have a complicated relationship with the media especially tabloids and the instant case is one such example.

The claimant Meghan Markle, married HRH Prince Henry of Wales on 19th May, 2018. Being a high profile couple, they were consistently under media lens. It was reported that the relationship between the claimant and her father, Thomas Markle, was difficult and 3 months after the wedding, the claimant sent her father a five-page letter (hereinafter ‘the Letter’). In September 2018, Mr. Markle sent a letter in reply. The existence of the Letter first became public on 6th February, 2019, when it was mentioned in an eight-page article that appeared in the US magazine People under the headline “The Truth About Meghan – Her best friends break their silence”. Mr. Markle then provided the defendant with the Letter, or a copy of it. On 9 February 2019, the defendant published in hard copy and online the five articles of which the claimant complains (“the Mail Articles”). These articles quoted extensively from the Letter, under headlines the gist of which is conveyed by the one across pages 4 and 5 of the Mail on Sunday: “Revealed: the letter showing true tragedy of Meghan’s rift with a father she says has ‘broken her heart into a million pieces’”.

The instant action arose from the later reproduction of large parts of the claimant’s Letter in articles published by the defendant in the Mail on Sunday and on Mail Online (hereinafter ‘the Mail Articles’).

Contentions

The Claimant:

  • The contents of the Letter were private; this was correspondence about her private and family life, not her public profile or her work.
  • The Letter disclosed her intimate thoughts and feelings; these were personal matters, not matters of legitimate public interest; she enjoyed a reasonable expectation that the contents would remain private and not be published to the world at large by a national newspaper.
  • The defendant’s conduct in publishing the contents of the letter was a misuse of her private information.
  • The Letter is an original literary work in which copyright subsists; she is the author of that work, and of a draft she created on her phone (Electronic Draft); and the Mail Articles infringed her copyright by reproducing them in a material form, and issuing and communicating to the public, copies of a substantial part of the Electronic Draft and/or the Letter.

 The Defendant: The defendant while denying the claim made the following submissions-

  • The claimant’s right to privacy is limited given the rightful public interest in the activities of the Royal family and the claimant’s status as a “high-ranking member” of that family.
  • The article that was published in the US Magazine People, gave a misleading account of the father-daughter relationship, ‘the Letter’ and Mr. Markle’s response, such that (in all the circumstances) public disclosure of the contents of the Letter in the Mail Articles was justified to protect the rights and interests of Mr. Markle and the public at large.
  • It was further contended that the claimant intended the Letter to be publicised, and to that end disclosed information about it to the “best friends” quoted in the People Article.
  • Regarding the allegation of copyright infringement, the defendant questioned the claim of originality, subsistence of copyright etc. and relied on the defences of fair dealing and public interest.

The instant application was filed under R. 3.4(2)(a) and R. 24.2 of the Civil Procedure Rules which allows the Court to give summary judgment against a defendant on the whole of a claim, or on a particular issue, if it considers that- the defendant has no real prospect of successfully defending the claim or issue; and there is no other compelling reason why the case or issue should be disposed off at a trial.

Observations and Decision

Mark Warby, J., while considering the merits of the instant case, identified certain essential legal principles –

  • The Human Rights Act, 1998 obliges the Court to interpret, apply and develop English law in conformity with the European Convention on Human Rights (hereinafter, the Convention). Where an individual complains that their privacy has been violated by newspaper reports, the Court must ensure that its decision properly reconciles the competing Convention rights. The Domestic Law gives effect to this framework through the ‘Tort of misuse of Private Information’.
  • In the aforementioned Tort, the liability is to be determined by applying a 2 Stage Test– at Stage 1 the question is whether the claimant enjoyed a reasonable expectation of privacy in respect of the information in question; and, at Stage 2, the question is whether in all the circumstances the privacy rights of the claimant must yield to the imperatives of the freedom of expression enjoyed by publishers and their audiences.

It was observed that the defendant publisher is bound by the Editors’ Code of Conduct enforced by the Independent Press Standards Organisation (IPSO) and the Court is obliged to regard the Code. The Court scrutinized the facts, the Letter in question and the events surrounding the controversial publication of the Letter. The aforementioned 2-Stage Test was applied to the facts-

 Stage 1- Reasonable expectation of privacy: It was noted by Warby, J., that there are tow main issue in this Stage- firstly, whether the Defence sets out any case which, (assuming it to be true) would provide a reasonable basis for finding that there, no reasonable expectation of privacy; secondly, whether the defendant has any realistic prospect of successfully defending this issue at trial. Answering both the questions in negative, the Judge observed that, “Nothing that the defendant has pleaded in answer to this part of the claimant’s case provides any reasonable basis for defending the issue. I also consider that there is no real prospect of the Court concluding after a trial that, at the time the Mail Articles were published, or at any material time between then and now, the contents of the Letter were not private, or that the claimant did not enjoy a reasonable expectation that they would remain private”. The Judge explained that he is aware that the defendant’s case has its own complexities and subtleties, “But in reality, there is much that is plain and obvious”.

It was noted that the detailed contents of the Letter had entered the public domain by the time of the publication complained of, however, the People Article had disclosed the existence of the Letter, and provided a broad description, but not its detailed contents. The Court also noted that the claimant being a member of the British Royal Family is a public figure about whom much had been and continued to be written and published, but the nature of the “activity” in which she had engaged was not an aspect of her public role or functions. It was further noted that the Letter fell within the scope of Article 8 of the Convention as “correspondence” that contains matter relating to the “family life” of the claimant and her father. It was therefore concluded that, “the claimant would be bound to win at trial on this issue. It is fanciful to think otherwise”.

Stage 2- Balance between Privacy and Freedom of Expression: It was observed that in some aspects the defendant’s case is legally flimsy. Given the claimant’s status as a public figure ‘be bound to weigh heavily in the balance’ between privacy and freedom of expression. The Court noted that the defendant’s argument about the claimant having a limited right to privacy, echoes “the crude common law principle, enunciated long-ago, but since discarded, that those who seek favourable publicity somehow waive their rights, and must accept adverse publicity”.

Upon detailed perusal of the defendant’s arguments, the Court concluded that the claimant had a reasonable expectation that the contents of the Letter would remain private. The Mail Articles interfered with that reasonable expectation. The only reasonable justification for any such interference was to correct some inaccuracies about the Letter contained in the People Article. Warby, J., further noted that, “Taken as a whole the disclosures were manifestly excessive and hence unlawful. There is no prospect that a different judgment would be reached after a trial. The interference with freedom of expression which those conclusions represent is a necessary and proportionate means of pursuing the legitimate aim of protecting the claimant’s privacy”.

Issue of Copyright Infringement

The instant case also raised the matter of the claimant’s copyright infringement vis-à-vis reproduction of the ‘electronic draft’ of the Letter in material form. Regarding this matter the Court observed that, the Mail Articles proceeded on the basis that the wording of the Letter was entirely the work of the claimant. The Court stated that ‘originality’ is a key matter of consideration in this issue and to satisfy the requirement of originality; a work need not be novel or ingenious. The defendant denies that the works relied on in this case are original, asserting that the Electronic Draft and Letter are “primarily an admonishment” of Mr Markle by the claimant. Noting that it was not easy to identify the precise nature of the defendant’s argument especially when they ignored that there is of course no copyright in news, but copyright has been recognised as subsisting in the literary form of a news report. Warby, J., states that, “The defendant’s case is not that the works relied on did recite pre-existing facts. The defendant pleads that they “purported” to do so. In its pleading, it adopts an agnostic stance. If the burden of proof lies on the defendant, then its case must fail”. The Court concluded that Electronic Draft is and would inevitably be held to be the product of intellectual creativity sufficient to render it original in the relevant sense. The Court concluded that, the Mail Articles copied a substantial part of the work. It is undeniable that they reproduced a substantial part in qualitative terms and in the sense that they reproduced a substantial part of “that which is the author’s own intellectual creation”. Warby, J., pointed out that, “The defendant’s factual and legal case on this issue both seems to me to occupy the shadowland between improbability and unreality”. He was however persuaded that there should be a trial limited to issues relating to the ownership of copyright.[HRH The Duchess of Sussex v. Associated Newspapers Ltd., [2021] EWHC 273 (Ch), decided on 11-02-2021]

Sucheta Sarkar, Editorial Assistant has put this story together

Case BriefsHigh Courts

Delhi High Court: C. Hari Shankar, J., after a wholesome discussion, rejected the idea of the constitution of a “two-tier” Confidentiality Club proposed by InterDigital Technology Corporation, and instead suggested the terms for constitution of a single-tier Confidentiality Club.

Factual Background

Xiaomi Corporation has been sued by Interdigital Technology Corporation alleging infringement of Indian Patents Nos 262910, 295912, 298719, 313036 and 320182.

Standard Essential Patents (SEPs)

Xiaomi has been using the technology contained in Standard Essential Patents (SEPs) without obtaining the license from Interdigital.

Hence in view of the above, Interdigital has sought a permanent injunction against Xiaomi from manufacturing, selling, assembling, distributing, advertising, exporting, importing or using, in their devices, technology which infringes the SEPs.

In the alternative, a direction has also been sought to XIAOMI, to take a license from Interdigital, for usage of its SEPs, on fair reasonable and non-discriminatory (FRAND) terms to be fixed by this Court.

InterDigital filed IA’s under Oder XXXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 and Chapter VII Rule 17 of the Delhi High Court (Original Side) Rule, 2018.

Chapter VII Rule 17 of the Original Side Rules reads thus:

“17. Confidentiality Club. – When parties to a commercial suit wish to rely on documents/information that are commercially or otherwise confidential in nature, the Court may constitute a Confidentiality Club so as to allow limited access to such documents/information. In doing so, the Court may set up a structure/protocol, for the establishment and functioning of such Club, as it may deem appropriate. An illustrative structure/protocol of the Confidentiality Club is provided in Annexure F. The Court may appropriately mould the structure/protocol of the Club, based upon the facts and circumstances of each case.”

Confidentiality Club Regime is standard protocol, especially while dealing with litigations involving allegation of patent infringement.

Bench in the instant case is concerned whether the Confidentiality Club could be set up in the manner sought by InterDigital.

What kind of Confidentiality Club does Interdigital seeks to be set up?

It seeks setting up of a “two-tier” Confidentiality Club, comprising an “outer tier” and an “inner tier”. The documents which would be open to the members of the “outer tier”, are denoted, in the application of InterDigital, as “Confidential Information”, whereas the documents, to which members of the “inner tier” alone would have access, had been denoted as “Legal Eyes Only (LEO) Confidential Information”.

Parties, as well as their officials and employees, would have no access to the “inner tier” documents.

Mr Parvin Anand has stated that the exclusion of representatives of the parties, from having access to the inner tier documents is non-negotiable.

Bench posed two queries to Mr Parvin Anand, which were as follows:

  • How an advocate could be expected to be appropriately instructed, if he is unable to share, with his clients, the material on which the OP seeks to rely?
  • How the Court could come between the advocate and his client, insofar as the “inner tier” documents were concerned, and injunct the advocate from disclosing the documents to his client?

Wouldn’t the above-stated amount to an unwelcome and unjustified, incursion by the Court into the sacred space that exists between the client and counsel?

Mr Anand submitted that no occasion would arise for the Court to come in between the client and counsel as, if this Court were to accede to the prayer, of InterDigital, for setting up of the “two-tier” Confidentiality Club, it would be for Xiaomi to instruct its Counsel not to disclose, to it, the “inner tier” documents.

Court was befuddled with the above response and expressed that it does not understand how the Court could insist on Xiaomi contracting with its counsel to keep documents shown to its counsel and on which InterDigital relies against Xiaomi, undisclosed to Xiaomi itself.

Hence, the Court held that it cannot by judicial fiat, impose any such contractual dispensation between Xiaomi and its Counsel.

Bench’s opinion on setting up of ‘Confidentiality Club’

Bench in very clear words opined that the mere fact that Courts, overseas, may have acquiesced to the setting up of such Confidentiality Clubs cannot be of any substantial significance, in deciding the present application of InterDigital.

Bench relied on the decision of this Court in M. Sivasamy v. Vestergaard Frandsen A/S, 2009 (113) DRJ 820 (DB), wherein the following was the Court’s observation:

“…with respect to the litigation in India, the Courts in this country would be guided by the provisions of the Laws as applicable in this country and the pleadings in the suit in this court and not by any orders or decisions of the foreign court, unless, the decision of the foreign Court becomes final and so that it can operate as res judicata between the parties and operate in the parameters of Section 13 and Section 44-A of the Code of Civil Procedure, 1908.

No useful purpose will be served in making reference to various orders of the Courts in the different countries as one does not know what are the ingredients/requirements of causes of action of the different laws of those countries and what were the pleadings of the cases in the foreign courts.”

Bench needs to decide on whether “comparable patent licence agreement” could be justifiably included in an ‘inner tier’ of confidential documents, to be kept away from the eyes of the defendant, as well as all its officers and employees?

Court denied the prayer for keeping certain documents, and information, inaccessible to Xiaomi and its personnel, and allow access, thereto, only to the advocates and experts nominated by Xiaomi.

Whether “two tier” Confidentiality Club legally palatable in the mind of the Court or not?

In case the Court finds the request, of InterDigital, for setting up of a “two-tier” Confidentiality Club, to be acceptable, the benefit thereof would, naturally, ensure to Xiaomi as well. The question, therefore, is not whether Xiaomi would also get the benefit of such an arrangement, but of whether such an arrangement is, to the mind of the Court, legally palatable or not.

No civil suit, be it for enforcement of rights relating to intellectual property, or any other right, can claim innocence to the rigour and discipline of the CPC and the Specific Relief Act, 1963.

Further, the Court observed:

Whether either of the parties, to litigation, needs, or does not need, to see a particular document, would be a decision which essentially rests with the party itself.

Can InterDigital, simply put, assert that Xiaomi does not need to see a document on which InterDigital places reliance, to contest the case initiated by it against Xiaomi?

For the above-stated Court’s opinion was in negative and bench relied on the observations in the decision of Transformative Learning Solutions v. Pawajot Kaur Baweja, 2019 SCC OnLine Del 9229, in paras 23 and 24.

Adding to its observations Court also stated that:

Patent infringement, in the case of SEPs, has, however, a unique feature. A holder of a SEP is not entitled, of right, to seek an injunction against infringement of its SEP, merely on making out a case of such infringement. This, essentially, means that every holder of a SEP is required, in law, to agree to the licensing of its SEP to willing licensees.

Court noted that the plaintiff desires to include the license agreements in the ‘inner tier’ to be kept away from the eyes of the defendants as well as all their officers and employees.

Bench found the above suggestion to be completely antithetical to, and destructive of, the most fundamental notions of natural justice and fair play.

Court again stressed upon the fact that while penning this judgment, it is only addressing the prayer of InterDigital, for the constitution of a two-tier Confidentiality Club, consisting of “inner tier” and “outer tier” documents.

In line of the above position, Court remarked:

Permitting the constitution of such a Club would amount to granting blanket permission, to InterDigital, to keep certain documents away from Xiaomi, its officers and its employees.

Adding to the above, Court also stated that in case the parties are able to agree and arrive at a level playing field, then this judgment shall not come in the way of their doing so.

As the Bench is only concerned with the issue of whether such an arrangement as being discussed can, against its wishes be imposed on Xiaomi.

Court further dealt with the Annexure-F to the Original Side Rules which is cited as “an illustrative structure/protocol of the Confidentiality Club” which may be “appropriately moulded” by the Court.

Membership of the Confidentiality Club, constituted in the manner envisaged by Annexure F is, clearly, limited to three advocates and not more than two external experts. Mr Anand submitted, relying on this Annexure, that the parties, and their officials and representatives, may legitimately be excluded from the Confidentiality Club constituted by the Court.

Bench asserted that, if InterDigital can come to terms with Xiaomi, and they agree, ad idem, to the constitution of such a Confidentiality Club, in which “inner tier” documents would remain away from the prying eyes of InterDigital and Xiaomi, as well as their officers and employees, this order shall not stand in their way. As of today, however, Xiaomi is not agreeable to such an arrangement.

Client-Lawyer Relationship 

Further, stating that the client-lawyer relationship in Indian Law, has its own distinct incidents, Bench relied on the Supreme Court decision in Himalayan Coop. Group Housing Society v. Balwan Singh, (2015) 7 SCC 373.

Supreme Court in its’ decision of An Advocate v. B.B. Haradara, 1989 (1) ARC 72 (SC) and Om Prakash v. Suresh Kumar, 2020 SCC OnLine SC 100, iterated that the duty of advocates to act, at all times, under instructions from their clients.

SEP infringement litigation cannot be treated as a category sui generis, to which the principles enunciated in these decisions, as well as the Bar Council of India Rules, would not apply.

Court cannot trust such arrangements discussed above upon Xiaomi, without its consent, in the absence of any clear right having been established by InterDigital, for the imposition, on Xiaomi, of such an arrangement.

During the course of the hearing, the thought came to the Court several times that – What if XIAOMI is unwilling — as it is, in the present case – for the 3rd party license agreements, on which InterDigital relies, to be shown only to its advocates and experts, and not its own officials of personnel?

What if Xiaomi says that it is not willing to contract, with its counsel, to keep undisclosed, from Xiaomi, the documents which have been shown to him?

To the above, Mr Pravin Anand submitted that, having involved Xiaomi in a litigative exercise, by filing the present suit against it, InterDigital can insist on Xiaomi prosecuting the suit, and defending itself against InterDigital, without being shown the documents on which InterDigital proposes to rely.

Bench on hearing the above submission summarily rejected it.

Further, in Court’s view, there can be no question of this Court lending its approval to any arrangement in which the third-party license agreements, constituting the very basis of the case set up by InterDigital against Xiaomi, remain undisclosed to Xiaomi, as well as its officials and personnel and are shown only to advocates (who are not in-house counsel) and experts. Any such arrangement would violate the provisions of the Bar Council Rules as well as the law laid down in various decisions including, inter alia, Himalayan Coop. Group Housing Society v. Balwan Singh, (2015) 7 SCC 373.

No setting up of a “two-tier” Confidentiality Club

While concluding its decision, Court held that there is substance in Mr Pravin Anand’s submission that InterDigital cannot, very well, disclose details, in third-party license agreements which, as agreed between InterDigital and such third parties, are required to remain confidential. At the same time, InterDigital cannot, rely on such material against Xiaomi, holding the material back from the representatives of Xiaomi on the plea of confidentiality. InterDigital is, therefore, at liberty to redact, from the documents being treated as confidential, any such detail which, according to it, cannot be disclosed to any third party, including the representatives of Xiaomi.

Though if, Xiaomi agrees to the constitution of such a Club, then this Order would not stand in its way.

Bench held that instead of a “two-tier” Confidentiality club, a single-tier Confidentiality Club can be constituted in the following terms:

(i) Each party shall nominate four advocates, six representatives and two experts, who would constitute the confidentiality club.

(ii) The members of the confidentiality club alone shall be entitled to inspect the confidential information. In the case of the advocates and experts, such inspection would be to the extent such inspection is required in order to perform their professional duties in relation to the present proceedings on behalf of the party by whom they are engaged.

 (iii) The documents, regarded as “confidential information” would be filed in sealed cover, to be retained with the Registrar General of this Court under seal and in safe custody.

(iv) The members of the confidentiality club shall be entitled to inspect the confidential information before the Registrar General and, after the inspection is over, the documents and information shall be resealed and returned to the Registrar General.

 (v) The members of the confidentiality club shall be bound by confidentiality orders passed by this Court and will not be allowed to make copies, disclose or publish the contents of the confidential information or documents anywhere else or to any individuals who are not privy to the confidential information, including in other legal proceedings or oral and written communications to the press, etc.

(vi) During the recording of evidence and other proceedings of this Court with respect to the confidential information, or when the confidential information is being looked at, only members of the confidentiality club shall be allowed to remain present. Such proceedings will be conducted in camera.

  (vii) Any evidence, by way of affidavit or witness statement, containing confidential information shall also be kept in a sealed cover reflecting the confidential and designation, with the learned Registrar General, and would be accessible only to the members of the confidentiality club.

(viii) Neither party would be permitted to rely on any material which is not disclosed to the nominated representatives (as opposed to advocates and experts) of the opposite party. Should either party feel that any details, contained in any document, cannot be shown to the nominated representatives of the opposite party, it is at liberty to redact such details or particulars from the document(s) in question. Needless to say, the party that redacts any particular is, in any document or evidence, shall not be permitted to rely on such a redacted particulars. It shall, however, be open to the opposite party to plead that disclosure of such redacted material is necessary for its defence. In such a case, the court would decide, on a document-to-document basis, whether redacting of the “confidential” details, in the document, should, or should not, be allowed. This, in Court’s opinion, is the maximum extent to which the plea, of InterDigital, for keeping away, from the representatives of Xiaomi, “confidential” details and documents, can be accommodated.

(ix) The confidential documents/information shall not be available for inspection after disposal of the matter, except to the parties producing the same.

Hence, the application stands disposed of in the above terms. [Interdigital Technology Corpn. v. Xiaomi Corpn., 2020 SCC OnLine Del 1633, decided on 16-12-2020]

Advocates for the parties:

For the plaintiffs: Pravin Anand, Vaishali Mittal, Siddhant Chamola and . Pallavi Bhatnagar, Advocates.

For the Defendants: Saikrishna Rajagopal, Siddharth Chopra, Sneha Jain, Garima Sahney, Anu Paarcha, Dr Victor Vaibhav Tandon, Arjun Gadhoke and Charu Grover, Advocates.

Case BriefsHigh Courts

Delhi High Court: Mukta Gupta, J., grants ad-interim injunction while restraining defendant from posting, publishing, sharing any content which is defamatory, derogatory or deprecatory in nature to the plaintiff, its management or employees.

The instant suit was filed by the plaintiff Whitehat Education Technology (P) Limited impleading Aniruddha Malpani as the defendant, inter alia, seeking permanent injunction restraining the defendant from defamation, infringement of trademark, dilution and tarnishing of trademarks, disparagement, damages, unfair competition etc.

Plaintiff claimed to be a start-up company teaching children the Coding, helping them build Games, Animation Apps. Further, the plaintiff submitted that it has developed a Proprietary Coding Curriculum focused on product creation and imparts lessons through live, interactive online classes.

According to the plaintiff, free classes are given to the students and on satisfaction, the students can then enrol themselves where there is no time-limit for the classes and even after availing few classes, if the students want to opt-out, the balance fee is refunded on the same day.

Plaintiff owns and operates a website under its domain name www. whitehatjr.com registered on 23-05-2018 and claims a strong presence on social media. Plaintiff has registered trademarks ‘WHITE HAT JR’ both as a wordmark and device marks.

Adding to the above, plaintiff submitted that in late September 2020, the plaintiff came across the defendant’s posts on Twitter referring to the registered trademarks of the plaintiff ‘WHITE HAT JR’ and issuing statements/posts amounting to defamation/disparagement/trademarks’ infringements, dilution and tarnishment of its trademarks.

Defendant submitted that the instant suit was not maintainable for want of territorial jurisdiction and added that it has not caused any defamation, derogation or its statements being deprecatory, for which the defendant needs to file his affidavit to present the correct facts.

Bench held that since some of the facts are alleged in the plaint are disputed and the same is required to be adjudicated, therefore at the present stage, a limited ad-interim injunction is required to be passed on plaintiff’s prima facie case resulting in an irreparable loss to the plaintiff as also keeping in view the balance of convenience lying in favour of the plaintiff.

Hence, the defendant is restrained from posting, publishing, sharing any content which is defamatory, derogatory or deprecatory in nature to the plaintiff, its management or employees.Defendant was also directed to take down the tweets.[Whitehat Education Technology (P) Ltd. v. Aniruddha Malpani, 2020 SCC OnLine Del 1616, decided on 24-11-2020]

Hot Off The PressNews

Representations have been received from various stakeholders seeking clarification as to whether a license is required to be obtained for the purpose of utilization of sound recordings in the course of any marriage related function. The representations have been examined.

2. Section 52 of the Copyright Act, 1957 enlists certain acts which do not constitute an infringement of Copyright. Specifically, Sub-section (1) (za) of the aforementioned section, states that: “the performance of a literary, dramatic or musical work or the communication to the public of such work or of a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the Central Government or the State Government or any local authority. Explanation-For the purpose of this clause, religious ceremony including a marriage procession and other social festivities associated with a marriage.”

“the performance of a literary, dramatic or musical work or the communication to the public of such work or of a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the Central Government or the State Government or any local authority.

Explanation-For the purpose of this clause, religious ceremony including a marriage procession and other social festivities associated with a marriage.”

3. In view of the provision contained in Section 52(1) (za) of the Act, read with the explanation thereto, it is evident that the utilization of any sound recording in the course of religious ceremony including a marriage procession and other social festivities associated with a marriage does not amount to infringement of copyrights and hence no license is required to be obtained for the said purpose.

Ministry of Commerce & Industry

No. 10-26/2019-CO

[Public Notice dt. 27-08-2019]

Case BriefsHigh Courts

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.

Facts

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.

Discussion 

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.

Held

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]

Case BriefsHigh Courts

“If a creative person steals your idea, he’s killing his creative ability, if he steals your art, he’s killing his art, if he makes it available to the world, it won’t create the impact you could have created, because it wasn’t from the right source.” – Michael Bassey Johnson

Gujarat High Court: A Single Judge Bench comprising of J.B. Pardiwala, J., while addressing an application in regard to violation of copyright of the applicant’s industrial design drawings being reproduced in three-dimensional material form by the respondent, the Court directed for handing over of the machine to the applicant who is entitled to the possession of the same.

The facts of the case deal with some very pertinent issues in regard to the copyright infringement. The applicant is the owner of the copyright in the artistic work of industrial drawings and he has alleged that his drawings have been stolen by accused 1 by reproduction of the same in three-dimensional material in the form of a machine,  which was set up in the factory premises of Respondent 2 and 3. Further, an FIR was lodged by the applicant in this regard and after intensive investigation by the police officers and on being satisfied of the copyright violation under Section 64 of the Copyright Act, 1957, machine was seized by them. However, the CJM rejected the applicant’s applications and allowed accused’s applications. The applicant being aggrieved from all the orders of the lower courts filed the applications in the High Court.

The contentions placed by the applicant’s counsel were that,

  • Reproduction of the said drawings being clearly and undoubtedly copies of the original work are liable to be seized by the police under Section 64 of the Copyright Act, 1957.
  • Magistrate failed to comply with the procedure under Section 64(2) Copyright Act, 1957.
  • Section 15 of Copyright Act allows the author of a work to opt for a design copyright protection under either the Designs Act, 2000 or Copyright Act, 1957.
  • Courts below have overlooked and misinterpreted the provisions of the Copyright Act, 1957, also have ignored the registration of the applicant’s artistic work.

Further, the matter dealt with clarity and analysis of various aspects of copyright and design. While analysing the same, various decisions of Supreme Court and High Courts were quoted, one such pertinent case in regard to “determining copyrightability is the test of originality” was of Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1. Copyright subsists in the works that can be deemed as original works, originating from the author.

The High Court, while doing an in-depth study of the relevant provisions pertaining to the matter, relied on Midas Hygiene (P) Ltd v. Sudhir Bhatia, (2004) 3 SCC 90 in regard to the artistic work and the reproduction into a three-dimensional medium. Court further noted that on observations made, it is unequivocally clear that the drawings created by the applicant hold legitimate copyright and the machines constitute copies of the work, which are liable to be seized. Coming to the conundrum surrounding Section 15 of the Copyright Act, the Court stated that it only anticipates one type of protection either in the Designs Act, 2000 or Copyright Act, 1957. Therefore, the Magistrate had erroneously construed Section 15 in stating that the applicant should have registered his design in both the stated Acts. Furthermore, the Court on the question of police seizing the machine held it was correct as the material constituted infringing copies.

The Court concluded by directing to hand over the possession of the machine to the applicant by affixing the seals at the earliest and disposed of the criminal case. [Subhashchandra Shavjibhai Padasunbiya v. State of Gujarat,2018 SCC OnLine Guj 1371, decided on 03-08-2018]

Case BriefsForeign Courts

United States Court of Appeals (Ninth Circuit): While deciding the issue that whether a monkey may sue humans, corporations, and companies for damages and injunctive relief arising from claims of copyright infringement, Carlos T. Bea and N. Randy Smith, Circuit Judges, and Eduardo C. Robreno, District Judge, held that the monkey in particular and all the animals in general, by the virtue of the fact that they are not humans, lack the statutory locus standi under the Copyright Act, even though they have a constitutional standing under Article III of the United States Constitution.

The issue revolves around Naruto, a crested macaque living on the island of Sulawesi, Indonesia. In 2011, the monkey picked up the camera of wildlife photographer David Slater, and took several photos of himself; the collection which later became popular as “monkey selfies”. The pictures were later published in Slater’s book, which identified Slater and Wildlife (magazine published by Wildlife Personalities, Ltd.) as the copyright owners of the Monkey Selfies. However a copyright infringement case was filed against Slater and Wildlife, by People for the Ethical Treatment of Animals (PETA) as “Next Friends” on behalf of Naruto. PETA claimed that that the monkey was the author and owner of the photographs and had suffered concrete and particularized economic harms.

Perusing the facts and the argument, the Court deliberated upon the constitutional and statutory locus standi of Naruto; and whether PETA qualifies to be the “Next Friend” of the monkey. It was observed by the Court that PETA has failed to allege any facts to establish the required significant relationship between a next friend and a real party in interest and; an animal cannot be represented, under US laws, by a “next friend.” Thus PETA cannot sue on behalf of the monkey. Resolving the question of constitutional and statutory standing, the Court relied upon their decision in Cetacean Community v. Bush, 386 F.3d 1169 (9th Cir. 2004), and observed that Naruto’s lack of next friend does not deprive him of a constitutional standing under Article III. However vis-à-vis the Copyright Act, it was noted that if an Act of Congress clearly states that animals have statutory standing, then animals will have statutory standing; and if the statute does not state, then animals do not have statutory standing. The Copyright Act does not expressly authorize animals to file copyright infringement suits under the statute; therefore Naruto cannot sue for copyright infringement. [Naruto v. Slater, No. 16-15469, opinion dated 23.04.2018]

Case BriefsSupreme 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.” [Relx India Pvt. Ltd. v. Eastern Book Company, (2017) 1 SCC 1.]

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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