Case BriefsHigh Courts

Delhi High Court: In what may probably go down as the first of its kind decision in India on the subject of anti-piracy and intellectual property law, Manmohan, J. passed a decree of permanent injunction against “rogue websites” from infringing, in any manner, the plaintiff’s copyrighted work. Internet Service Providers (“ISPs”) and the Government departments concerned were also directed to block access to such rogue websites and “hydra headed websites”.

The Court was deciding a bunch of suits brought by UTV Software Communications Ltd., Twentieth Century Fox Film Corpn. and others, all of which are companies engaged in the business of creating content, producing and distributing cinematographic films around the world including in India. They primarily sought injunction restraining infringement of copyright on account of defendants communicating to the public the plaintiffs’ original content/cinematographic works without authorization. The defendants that were impleaded can be categorised in four classes — (i) Certain identifiable websites that were unauthorisedly communicating the plaintiffs’ copyrighted work; (ii) John Doe defendants who were hitherto unknown parties engaged in the unauthorised communication of the plaintiffs’ copyrighted works, including the registrants of the defendant-websites, uploaders, creators of redirect/mirror/alphanumeric websites; (iii) ISPs that provide internet access, enabling users to visit any website online, including the defendant-websites; and (iv) Department of Telecommunication (“DoT”) and Ministry of Electronics and Information Technology (“MEITY“).

This was a rare occasion where in an ex-parte matter, questions of law of general public importance arose for consideration. The Court was of the view that the general industry evidence appears consistent with a hypothesis that digital piracy has hurt the movie industry. In fact, online piracy has had a very real and tangible impact on the film industry and the rights of the owners. The Copyright Act, 1957 confers a bundle of exclusive rights on the owner of a “work” and provides for remedies in case the copyright is infringed. The Court was of the opinion that it had ample powers to mould the relief to ensure that the plaintiff’s rights are adequately protected.

The Court discussed the relevant law on the subject including Sections 2(y),(f) and (ff), 14(d), 51(a)(i) and (ii), 52(1)(c) and 55 of the Copyright Act; and Sections 2(1)(w), 69-A and 79 of the Information Technology Act, 2000; along with relevant case laws, both domestic and foreign. The seminal points and the Court’s conclusion after due consideration is, in seriatim, delineated below:

(a) Infringer of copyright on the internet not to be treated differently from an infringer in the physical world — If the view of the “Internet exceptionalists school of thought” is accepted, then all infringers would shift to the e-world and claim immunity! A world without law is a lawless world. There is no logical reason why crime in the physical world is not a crime in the digital world especially when the Copyright Act does not make any such distinction.

(b) Seeking blocking of a website dedicated to piracy does not make one an opponent of free speech and open internet — Advocating limits on accessing illegal content online does not violate open internet principles. The key issue about Internet freedom is not whether the Internet is and should be completely free or whether Governments should have unlimited censorship authority, but rather where the appropriate lines should be drawn, how they are drawn and how they are implemented.

(c) What is a “rogue website” — Music and film piracy are primarily facilitated on the net by Flagrantly Infringing Online Locations (“FIOLs“) or Rogue Websites. They are those websites which primarily and predominantly share infringing/pirated content or illegal work. The registrant details of these websites are unknown and any or all contact information is masked/blocked. In Para 59 of its judgment, the Court also chalked down some illustrative factors to be considered for determining whether the website complained of is a FIOL/rogue website. It was clarified that such factors do not apply to intermediaries as they are governed by IT Act, having statutory immunity and function in a wholly different manner.

(d) Test for determining a rogue website is qualitative — If the test to declare a website as a rogue website is that it should contain only illicit or infringing material, then each and every rogue website would add a small percentage of legitimate content and pray that it be not declared an infringing website! Consequently, the real test for examining whether a website is a rogue website is a qualitative approach and not a quantitative one.

(e) Defendant-websites were rogue websites — The Court gave a list of reasons to conclude that the defendant-websites satisfied the “qualitative test” and therefore were rogue websites. The reasons include that they do not provide any legitimate contact details and hide behind the veil of secrecy, they encourage users to circumvent detection or blocking orders, etc.

(f) Court is justified to pass directions to block the rogue websites — Website blocking in the case of rogue websites, like the defendant-websites, strikes a balance between preserving the benefits of a free and open Internet and efforts to stop crimes such as digital piracy. The Court was also of the opinion that it has the power to order ISPs and DoT as well as MEITY to take measures to stop current infringements as well as if justified by the circumstances prevent future ones.

(g) Dealing with the “hydra headed” rogue websites — The question that arose for consideration was how should courts deal with hydra headed websites, who on being blocked, actually multiply and resurface as alphanumeric or mirror websites. In the present batch of matters though the Court had injuncted the main website by way of the initial injunction order, yet the mirror/alphanumeric/redirect websites had been created subsequently to circumvent the injunction orders.

Though there is no similar procedure for issuing a “dynamic injunction” as is issued by courts in Singapore and elsewhere, yet in order to meet the ends of justice and to address the menace of piracy, the court in the exercise of its inherent power under Section 151 CPC permitted the plaintiffs to implead the mirror/redirect/alphanumeric websites under Order 1 Rule 10 CPC as these websites merely provide access to the same websites which were the subject of the main injunction. On being satisfied that the impugned website is indeed a mirror/redirect/alphanumeric website of the injuncted rogue website(s) and merely provides new means of accessing the same primary infringing website, the Joint Registrar shall issue directions to ISPs to disable access in India to such mirror/redirect/alphanumeric websites in terms of the orders passed.

Relief

(i) Keeping in view the aforesaid findings, a decree of permanent injunction was passed restraining the defendant-websites, tehir owners, partners, proprietors officers, servants, employees, and all others in capacity of principal or agent acting for and on their behalf, or anyone claiming through, by or under it, from, in any manner hosting, streaming, reproducing, distributing, making available to the public and/or communicating to the public, or facilitating the same, on their websites, through the internet in any manner whatsover, any cinematograph work/content/programme/show in relation to which plaintiffs have copyright.

(ii) A decree was also passed directing the ISPs to block access to the defendant-websites.

(iii) DoT and MEITY were directed to issue a notification calling upon the various internet and telecom service providers registered under it to block access to the defendant-websites.

(iv) The plaintiffs were permitted to implead the mirror/redirect/alphanumeric websites under Order 1 Rule 10 CPC in the event they merely provide new means of accessing the same primary infringing websites that have been injuncted.

(v)Plaintiffs were held entitled to actual cost of litigation.

Suggestion

As a measure for curbing pirated content and the dark-net for promoting legal content and accelerating the pace of Digital India, the court suggested that since website blocking is a cumbersome exercise and majority of the viewers/subscribers who access, view and download infringing content are youngsters who do not have knowledge that the said content is infringing and/or pirated, the MEITY/DOT should explore the possibility of framing a policy under which a warning is issued to the viewers of the infringing content, if technologically feasible in the form of e-mails, or pop-ups or such other modes cautioning the viewers to cease viewing/downloading the infringing material. In the event, the warning is not heeded to and the viewers/subscribers continue to view, access or download the infringing/pirated content, then a fine could be levied on the viewers/subscribers.

Words of appreciation

The court also appreciated the services rendered by Hemant Singh, Amicus Curiae as well as Saikrishna Rajagopal and the team of Advocates assisting them. They not only handed over innumerable notes, charts and articles but explained with great patience certain technologies that the Court was not familiar with. [UTV Software Communication Ltd. v. 1337X.to, 2019 SCC OnLine Del 8002, dated 10-04-2019]

Case BriefsInternational Courts

European Court of Human Rights (The Grand Chamber): The Bench comprising of K. Lenaerts (President), R. Silva de Lapuerta (Vice President), J.-C. Bonichot, A. Arabadjiev, M. Vilaras (Rapporteur), E. Regan, T. Von Danwitz and C. Toader (Presidents of Chamber), A. Rosas, E. Juhasz, M. Ilesic, M. Safjan, C.G. Fernlund, C. Vajda and S. Rodin, JJ., gave is ruling in a case concerning the copyright infringement in the taste of a ‘spreadable dip’ by ‘Levola’ against ‘Smilde’ manufacturers.

The product in the present case is with the name of ‘Heksenkaas’ a spreadable dip whose intellectual property rights were transferred by its creator to ‘Levola’. The other product involved against whom the dispute is raised is with the name ‘Witte Wievenkaas’ manufactured by ‘Smilde’.

Who raised the dispute?

Levola alleged that the production and sale of ‘Witte Wievankas’ infringed its copyright in the ‘taste’ of ‘Heksenkaas’ and brought the proceedings against Smilde before the Rechtbank Gelderland (Gelderland District Court, Netherlands).

Levola’s Prayer:

Levola asked Gelderland District Court, Netherlands to rule that:

  • Taste of Heksenkaas is its manufacturer’s own intellectual creation and is therefore eligible for copyright protections as a work, within Article 1 of the Copyright Law.
  • Taste of the product manufactured by Smilde is a reproduction of that work; also a ‘cease and desist’ order against Smilde is also asked for.

Gelderland District Court, Netherlands held that it was not necessary to rule on whether the taste of Heksenkaas was protectable under copyright law. Since Levola’s claims had not indicated which elements or combination of elements, of the taste of Heksenkaas gave it its unique, original character and personal stamp.

Levola appealed against the above judgment before the referring court. The Gerechtshof Arnhem-Leeuwarden (Regional Court of Appeal, Arnhem-Leeuwarden, Netherlands) decided to stay the proceedings and to refer questions to the Court of Justice for a preliminary ruling.

Smilde claimed that the present request for a preliminary ruling is inadmissible because the action in the main proceedings should, in any event, be dismissed, while arguing that Levola has not identified the elements of Heksenkaas which allegedly make it its author’s own intellectual creation.

Thus in light of the information provided by referring court, it cannot be held that the questions raised bear no relation to the actual facts of the main action or its purpose or concern a hypothetical problem, accordingly, the questions referred are admissible.

In essence to the first question, it has been asked by the referring court whether:

Directive 2001/29 must be interpreted as precluding (i) taste of a food product from being protected by copyright under that directive; (ii) national legislation from being interpreted in such a way that it grants copyright protection to such a taste.

The above question is followed with the view that the taste of a food product can be protected by copyright under Directive 2001/29 only if such a taste can be classified as a “work” within the meaning of the Directive. Further in that regard satisfaction of 2 conditions is required; the first one concerning ‘subject-matter’ to be original that is the one to be author’s own intellectual creation, Second condition something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29.

The point which requires extreme attention is that, for there to be a ‘work’ as mentioned in Directive 2001/29, subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.

Reasoning for the subject matter to be protected by copyright, expressed with three primary elements of identification, sufficient precision and objectivity:

Authorities responsible for ensuring that the exclusive rights inherent in copyright are protected must be able to identify, clearly and precisely, the subject matter protected and secondly, need to ensure that there is no element of subjectivity.

In regard to the above discussion the conclusion to the first question was that, on the basis of all of the foregoing considerations, the taste of a food product cannot be classified as a ‘work’ within the meaning of Directive 2001/29. In light of the answer to the first question, there is no need to reply to the second question.

The Court (Grand Chamber) held that: Directive 2001/29/EC of the European Parliament and of the council of 22-05-2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as precluding (i) taste of a food product from being protected by copyright under that directive and (ii) national legislation from being interpreted in such a way that it grants copyright protection to such a taste. [Levola Hengelo BV v. Smilde Foods BV, C-310/17, decided on 13-11-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Prathiba M. Singh, J. decreed a suit injuncting the defendant from unauthorisedly broadcasting the songs over which the plaintiff had a copyright.

The plaintiff — Super Cassettes Industries — filed a suit against the defendant (cable network) for infringement of its copyright in certain songs. It was alleged that the defendant broadcasted the said songs on its channel without permission or license. When the plaintiff sent notice to the defendant, it replied by stating that it did not own the channel in question. Subsequently, the present suit was filed.

The High Court noted that despite the service of summons and notice, the defendants did not put in appearance before the Court. It was also noted that the defendant made false reply to the notice sent by the plaintiff. In view of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts (Amendment) Act, 2018 as well as the Delhi High Court (Original Side) Rules, 2018, the Court observed it to be a well-settled law that “it is no longer necessary in every matter, even when the defendant is not appearing, that the plaintiff has to lead evidence. The filing of evidence can be exempted if, from the pleadings and documents relied upon, the suit can be decided.”On perusal of the screenshots submitted by the plaintiff, the Court was satisfied that the defendant was infringing the copyright of the plaintiff. In such view of the matter, the Court decreed the suit in favour of the plaintiff and granted an injunction against the defendant as prayed for by the plaintiff. Further, a decree of damages was passed in favour of the plaintiff in light of its false reply to plaintiff’s notice. [Super Cassettes Industries (P) Ltd. v. I-Vision Digital LLP, 2018 SCC OnLine Del 12384, decided on 12-11-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Manmohan, J. decreed a suit for injunction filed by the plaintiff against unauthorized broadcast of its copyright work by the defendant.

The plaintiff, Super Cassettes, is one of the largest music companies in the country which is the owner of a large repertoire of copyrighted works comprising cinematograph films, sound recording, etc. operating under the brand T-Series. The defendant, on the other hand, provided cable television services. It was the case of the plaintiff that in 2015, it came to know about the unauthorized and unlicensed use of its copyrighted works on the defendant’s cable television network. A notice was sent by the plaintiff to the defendant requesting it to obtain the requisite public performance license to make its broadcasts legal. However, no response was received.

The High Court was of the view that on a bare perusal of the screenshot of infringing recordings and the cue sheet showed that the defendant had infringed the sound recordings, cinematograph films and underlying literary and musical works belonging to the plaintiff’s repertoire of songs. As the defendant had broadcast the said work without license, it was held to have infringed plaintiff’s rights under Section 14(a)(iii), 14(a)(iv), 14(d)(iii) and 14(e)(iii) read with Section 51 of the Copyright Act, 1957. Resultantly, the suit was decreed in favour of the plaintiff and against the defendant. [Super Cassettes Industries (P) Ltd. v. Shivam Cable Network, 2018 SCC OnLine Del 11695, decided on 03-10-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Pratibha M. Singh, J., while disposing of a suit challenging the use of a movie title, held that neither there was copyright nor the plaintiff was entitled to the action of passing off.

The plaintiff had registered the title Double Trouble for their punjabi movie. The title was not used as of this day by the plaintiff. Meanwhile, the defendant — Mukta Arts Ltd. — adopted the same title and released a punjabi movie in the said name. The plaintiff had, in July 2013, registered the title with Indian Motion Pictures Producers Association, which is a voluntary organisation working in the film industry permitting the producers, directors, etc. to register movie titles in order to show priority in adoption of the same. The defendant also had registered the same title with another body — Indian Film and T.V. Producers Council — in August 2013. The question before the Court was whether the plaintiff had any copyright in the title or goodwill therein.

The High Court noted that the plaintiff had not, till date, used the title. It merely holds registration with IMPPA. The Court relied on the Supreme Court decision in Krishna Lulla v. Shyam Vithalrao Devkatta, (2016) 2 SCC 521 wherein it was held that there can be no copyright over titles. Thus, the movie titles may be entitled to protection, if substantial reputation and goodwill are established, per se. However, in absence of the same, they would not be protectable. In the present case, it could not be said that the title had acquired distinctiveness qua the plaintiff. For the same reason, the plaintiff was not entitled even for protection under the law of passing off. The Court also noted that the process of making and releasing a film is a lengthy process, and the period required for a title to acquire goodwill is equally long. The sanctity given to registration and adoption of titles, by persons in the industry who are members of the above-mentioned bodies, ought to be decided, lest the process of registration become meaningless. The suit was disposed of with such observations. [Prism Motion Pictures (P) Ltd. v. Mukta Arts Ltd.,2018 SCC OnLine Del 11152, dated 31-08-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Manmohan, J., held Defendant 2 guilty for contempt of court in a suit filed by Louis Vuitton for infringement of trademark, copyright, etc.

On plaintiff’s complaint, Defendant 2 made a statement under oath that he never sold any branded products. However, when inquiry was conducted on the premises of Defendant 2, the stock of more than 500 items of different luxury brands was found. Consequently, the plaintiff filed the present contempt petition.

The High Court observed that it would be a great public disaster if fountain of Justice is allowed to be poisoned by anyone giving false statements or fabricating false documents in a court of law. The Court referred to various judgments of the Supreme Court and High Courts,  for reiterated the law regarding contempt of courts, as follows:

  • In a case of perjury, the Court can invoke its contempt jurisdiction.
  • In a case where the contempt is in the face of the Court, the procedure under Section 14 of the Contempt of Courts Act, 1971 is attracted.
  • In all other cases of criminal contempt, Section 15 is applicable.
  • Contempt proceeding is sui generis, it has peculiar features which are not found in criminal proceedings.
  • The Court is free to evolve its own procedure consistent with principles of natural justice and fair play.

While observing that a false statement made under oath strikes a blow at Rule of Law, the Court held Defendant 2 guilty for contempt of court and sentenced him for 1 month’s simple imprisonment and a fine of Rs 2000. [Louis Vuitton Malletier v. Omi,2018 SCC OnLine Del 10343, dated 07-08-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Pratibha M. Singh,  J. allowed a suit filed by Disney Enterprises Inc. Against the defendants-chocolate maker for permanently restraining infringement of its copyright in the character Lightning McQueen from the movie Cars.

The plaintiff held copyright in the character Lightning McQueen, an animated race car from the movie named above, in the United States. The defendants were manufacturing chocolates by the name of Choco Car, consisting of an artistic work/character which was a complete imitation of Lightning McQueen. The plaintiff, therefore, filed the present writ suit seeking permanent injunction against the defendants and damages for infringement.

The High Court termed the case as a “classic case of character merchandising”. It was noted as well settled that characters can acquire the status of trademarks and can also be protected under copyright law. It was observed that the importance of preventing well-known characters from being misused for commercial products lies in the fact that the creation of fictional characters requires great amount of creativity and innovation. It was further observed that the plaintiff’s copyright was liable to be protected in India in view of the International Copyright Order as also India being a party to Berne Convention for Protection of Literary and Artistic Works and the Universal Copyright Convention. Holding thus, the suit filed by the plaintiff was allowed and a decree of permanent injunction was passed against the defendants. The defendants were further ordered to pay Rs 5 lakhs as damages to the plaintiff. [Disney Enterprises Inc. v. Pankaj Aggarwal,2018 SCC OnLine Del 10166, dated 10-07-2018]

Case BriefsHigh Courts

Calcutta High Court: A Single Judge Bench comprising of Soumen Sen, J., addressed the grievance of the petitioner who has prayed for the passing of “John Doe” order against the respondents who are responsible for the infringement of petitioner’s copyright and trademark.

The brief facts of the case are that the petitioner is involved in the business of  B2B e-commerce portal and since its inception in the year 1996, he had coined and adopted a unique mark known as “INDIAMART” for use in connection with the goods and services falling under various categories. He also claims that he has been using the said mark regularly and also got it registered in various forms as a wordmark, logo mark, label mark, and device mark. The petitioner has furnished all the details for the said registrations.

In regard to the copyright and trademark infringement, petitioner became aware of respondent’s having slavishly imitated the petitioner’s unique mark “INDIAMART” in one form or the other. For the said claim, petitioner’s have successfully disclosed all the copies which show that the petitioner’s mark is being infringed. One of the claims being put forward by the petitioner is that clearly the respondent’s have tried to confuse and deceive the public over the reputation of the plaintiff’s mark. Further, it has been stated by the petitioner that the respondents have infringed the copyright of the petitioner by using the proprietary information/data including such information, etc. which comes under the literary works of the petitioner.

Therefore, the petitioner has demanded the blocking of such websites which clearly are constituting to piracy and violation of the copyright and trademark use of the petitioner and on that note, he has prayed for John Doe orders of injunction.

The Hon’ble High Court, by recording the documents furnished by the petitioner and the fact that respondents have slavishly imitated the trademark of the petitioner which brings the Court to the claim of the petitioner about its goodwill and thereby allowing the relief to the petitioner as prayed for and concluding by giving direction to the petitioner to communicate this order to all the defendants. [Indiamart Intermesh Ltd. v. Ankit; 2018 SCC OnLine Cal 2379; dated 16-05-2018]

Case BriefsHigh Courts

Delhi High Court: Observing that “Copyright, specially in literary works, is thus not an inevitable, divine, or natural right that confers on authors the absolute ownership of their creations. Copyright is intended to increase and not to impede the harvest of knowledge. It is intended to motivate the creative activity of authors and inventors in order to benefit the public”, the Court dismissed the suit instituted by Oxford University Press, Cambridge University Press, United Kingdom (UK),  Cambridge University Press India Pvt. Ltd., Taylor & Francis Group, U.K. and,  Taylor & Francis Books India Pvt. Ltd., being the publishers, including of textbooks,  for the relief of permanent injunction restraining the two defendants, namely, Rameshwari Photocopy Service (carrying on business from Delhi School of Economic (DSE), University of Delhi) and the University of Delhi from infringing the copyright of the plaintiffs in their publications by photocopying, reproduction and distribution of copies of plaintiffs‘ publications on a large scale and circulating the same and by sale of unauthorised compilations of substantial extracts from the plaintiffs‘ publications by compiling them into course packs/anthologies for sale.

The facts are that students of Delhi University have been prescribed course material containing plaintiffs’ publications among other materials. The University in turn issues the books to the defendants for photocopying for wide and easy access of the prescribed course materials. The substantial issue, which arises for consideration, is whether the actions of the defendants qualify the exception of Section 52(1)(i) of the Copyrights Act. Section 52 prescribes certain acts not to be infringement of copyright and clause (i) reads as – “by a teacher or a pupil in the course of instruction”.

Interpreting “By a teacher or a pupil” The Court noted that the scope of Section 52(1)(i) is not restricted to the actions of an individual teacher and a pupil because education today is institutionalized and it would be restrictive to read “by a teacher or a pupil” as individuals and not as a wider group in an institution.

Interpreting “in the course of” – the Court found the words ‘in course of’ in different legislative contexts like (i) trade and commerce – in course of trade and commerce (ii) employment legislations – in the course of employment (iii) taxation legislations – in course of the year. It was found that all such legislations gave wide interpretation the words ‘in course of’. The Court collaborated the way “in the course of” has been treated by the decisions of the Supreme Court to hold that it could be (a) integral part of continuous flow (b) connected relation (c) incidental (d) casual relationship (e) during in the course of time and as time goes by (f) while doing (g) continuous progress from one point to the next in time and space (h) in the path in which anything moves [State of Travancore v. Shanmugha Vilas, 1954 SCR 53 : AIR 1953 SC 333; Md. Serajuddin v. State of Orissa, (1975) 2 SCC 47; Mackinnon Machenzie v. Ibrahim Mahmmed, (1969) 2 SCC 607; Regional Director v. Francis Costa ,(1996) 6 SCC 1; Commissioner of Income Tax v. East West Import and Export, (1989) 1 SCC 760].

Therefore, “in the course of” would mean imparting instruction by the teacher and receiving instruction by the pupil continues i.e. during the entire academic session for which the pupil is under the tutelage of the teacher and imparting and receiving of instruction is not limited to personal interface between teacher and pupil.

Interpreting “instruction” the Court found that instruction must be given a different meaning from lecture as instruction had not been defined under the Act whereas, lecture had a specific definition in the Act. More so, the dictionary meaning given to the ‘instruction’ is wide – something which a teacher tells the student to do in the course of teaching or detailed information which a teacher gives to a student to acquire knowledge. The statutory meaning of ‘instructon’ under the Bombay Municipal Corporation Act, 1888 was relied on to ascertain the width ascribed to the word instruction by courts “to furnish knowledge or information to train in knowledge or learning, to teach, to educate”(Bombay Municipal Corporation v. Ramachandra Laxman, 1959 SCC OnLine Bom 26 : AIR 1960 Bom 58).

After consideration of the above the Court concluded that ‘instruction’ would include the prescription of syllabus the preparation of which both the teacher and the pupil are required to do before the lecture and the studies which the pupils are to do post lecture and so that teachers can reproduce the work as part of the question and the pupils can answer the questions by reproducing the work in examination. The Court draws an analogy that if students were to copy from the publishers book by hand, the act would not constitute an infringement but merely because in this case the process of copying is electronic and less cumbersome (i.e. photocopying) the same cannot become an infringement. Therefore, the Court held that the practice of the defendants falls within the exception of Section 52(1)(i) of the copyright Act.  [The Chancellor, Masters & Scholars of the University of Oxford v. Rameshwari Photocopy Services, 2016 SCC OnLine Del 5128, decided on 16th September, 2016]

Case BriefsSupreme Court

Supreme Court: The Court, while deciding the question as to whether the Event Management Company/Event Organizer is required to seek licence from the lyricist and the musician for subsequently playing the song in public even after it has paid for the broadcasting of the song to the Sound Recording Company, held that though each of the seven sub-clauses of clause (a) of Section 14 of the Copyright Act, 1957 relating to literary, dramatic or musical work, are independent of one another, but reading these sub-clauses independently cannot be interpreted to mean that the right of producer of sound recording, who also comes under definition of author under Section 2(d)(v), and has a right to communicate his work to the public under Section 14(e)(iii) of the Act, is lost.  It was also held that in the assignment, normally, ownership of the copyright of the work is transferred but in the case of licence another person is allowed to use the work by the author.

Argument advanced on behalf of the appellants was that the permission granted to defendant was sans the right to communicate the sound recording to the public, was rejected by P.C. Pant, J and Ranjan Gogoi, JJ, on the ground that there appeared no such term and condition between the parties depriving the defendant from communicating his work of making song to the public. The Court made it clear that with effect from 21.06.2012, in view of sub-section (10) of Section 19 of the Act, the assignment of the copyright in the work to make sound recording which does not form part of any cinematograph film, shall not affect the right of the author of the work to claim an equal share of royalties or/and consideration payable for utilization of such work in any form by the plaintiff/respondent.

Considering the fact that sub-section (10) of Section 19 was inserted with effect from 21.06.2012 vide Act No. 27 of 2012, which did not exist on the day the plaint was filed before trial court in the year 2006, the Court agreed with the decision of the Delhi High Court where it was held that the defendants do not have to secure a license from the appellants, as such rights as exist w.e.f. 21.06.2012 were not the same prior to it.

The High Court had held that in case the defendants wish to perform the sound recording in public, i.e. play them, a license from Phonographic Performing Rights Society (PPRS) is essential; in case the musical works are to be communicated or performed in the public, independently, through an artiste, the license of Indian Performing Rights Society (IPRS) is essential. In case the defendant wishes to hold an event involving performances or communication of works of both kinds to the public, the license or authorization of both IPRS and PPRS are necessary. The High Court, hence, restrained the defendant from communicating any of such works to the public, or performing them, in the public, without such appropriate authorization, or licensing pending adjudication of the suit [International Confederation of Societies of Authors and Composers v. Aditya Pandey, 2016 SCC Online 967, decided on 20.09.2016]

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Delhi High Court: Copyright infringement suits filed by Oxford University Press, Cambridge University Press, the Taylor & Francis Group and its Indian affiliates against Rameshwari Photocopy Service and the Delhi University were dismissed by the Court. Endlaw J. held that the action of Rameshwari in photocopying portions of textbooks and study packs and of Delhi University in creating such packs and allowing Rameshwari to photocopy them and sell them to students was fair use and did not infringe the copyright of the publishing houses. Oxford University Press v. Rameswari Photocopy Services, CS(OS) 2439/2012, decided on 16-09-2016.