Case BriefsSupreme Court

Supreme Court: The Division Bench comprising of Dhananjaya Y Chandrachud* and B. V. Nagarathna, JJ., had set aside the impugned interim order of Madras High Court holding it to be an attempt to re-write Rule 29(4) of the Copyright Rules 2013. The Bench remarked,

“The interim order converts the second proviso into a “routine procedure” instead of an exception (as the High Court has described its direction). This exercise by the High Court amounts to re-writing. Such an exercise of judicial redrafting of legislation or delegated legislation cannot be carried out.”

A few broadcasters had approached the Madras High Court to challenge the validity of Rule 29(4) of the Copyright Rules 2013 on the ground that it (i) violates Article 19(1)(a) of the Constitution; and (ii) is ultra vires Section 31D of the Act. The High Court, by its interim order had held that the duty which is cast on broadcasters in the notice to broadcast under Rule 29(1) is “apparently onerous”. Consequently, it directed that the petitioners before it may be permitted to resort to the second proviso to Rule 29(4) as a “routine procedure”, instead of an exception, subject to the duration of the ex post facto reporting being enlarged to fifteen days.

It was in the above backdrop that the instant appeal was initiated in the Supreme Court on the ground that the impugned interim order had the effect of re-writing Rule 29(4) of the Rules framed in pursuance of the provisions of Section 31D and Section 78(2)(cD) of the Copyright Act 1957.

Statutory Mandate

By the Copyright Amendment Act 2012, Parliament incorporated the provisions of Section 31D. Under sub-section (1) of Section 31D, a broadcasting organization which is desirous of communicating to the public by way of a broadcast or performance of a literary or musical work and sound recording which has already been published, may do so subject to compliance with the provisions of Section 31D. Section 31D(2) incorporates five requirements, namely:

  • a prior notice;
  • in the manner prescribed;
  • of the intention to broadcast the work;
  • stating the duration and territorial coverage of the broadcast; and
  • payment to the owner of rights in each work royalties in the manner and at the rate fixed by the Appellate Board.

Rule 29. Notice to owner for communication to the public of literary and musical works and sound recordings.—“(1) Any broadcasting organisation desirous of communicating to the public by way of broadcast or by way of performance of a published literary or musical work and sound recording under sub-section (1) of Section 31-D shall give a notice of its intention to the owner of the copyright and to the Registrar of Copyrights before a period of five days in advance of such communication to the public and shall pay to the owner of the copyright, in the literary or musical work or sound recording or any combination thereof, the amount of royalties due at the rate fixed by the Board in this regard:

Provided further that in case of communication to the public by way of broadcast or by way of performance of any published literary or musical work and sound recording or any combination thereof, in unforeseen circumstances, the notice shall, be given within twenty-four hours of such communication to the public:”

Contentions Raised

The appellants had challenged the interim order on the following grounds:

  1. By the interim order, the High Court re-wrote Rule 29(4), which is impermissible, in any event at the interim stage;
  2. The validity of Rule 29(4) was yet to be adjudicated upon and a presumption would attach to the constitutionality of both – the Rules and the Statute;
  3. There was no challenge to the validity of Section 31D in terms of which Rule 29 had been framed;
  4. The High Court had, in the course of its interim order, extended it only to the petitioners before it and to the broadcasters who had been impleaded as parties, as a result of which the pan-India operation of the Rule was left in the realm of uncertainty.

Observation and Analysis

Observing that the High Court had substituted the provisions of Rule 29(4) with a regime of its own, which was made applicable to the broadcasters and the petitioners before it, the Bench referred to the decision of the Constitution Bench in In Re: Expeditious Trial of Cases Under Section 13 138 of NI Act 188, wherein the Court had emphasized that, “the judiciary cannot transgress into the domain of policy making by re-writing a statute, however strong the temptations maybe.”

Reiterating that the court in the exercise of judicial review cannot supplant the terms of the provision through judicial interpretation by re-writing statutory language, the Bench expressed,

“Draftsmanship is a function entrusted to the legislature. Craftsmanship on the judicial side cannot transgress into the legislative domain by re-writing the words of a statute. For then, the judicial craft enters the forbidden domain of a legislative draft.”

Therefore, the Bench held that the High Court had entered the forbidden domain of legislative draft as it had held the broadcasters down to the requirement of prior notice, it had even modified the operation of Rule 29 by stipulating that the particulars which were to be furnished in the notice may be furnished within a period of fifteen days after the broadcast.

Hence, the Bench was of the view that an exercise of judicial re-drafting of Rule 29(4) was unwarranted, particularly at the interlocutory stage proceedings. The High Court was also of the view that the second proviso may be resorted to as a matter of routine, instead of as an exception and that the ex post facto reporting should be enlarged to a period of fifteen days (instead of a period of twenty four hours). Holding such exercise impermissible, the Bench expressed caution that it would substitute a statutory rule made in exercise of the power of delegated legislation with a new regime and provision which the High Court considers more practicable.

Accordingly, the appeals were allowed and the impugned interim order was set aside.

[Saregama India Ltd. v. Next Radio Ltd., 2021 SCC OnLine SC 817, decided on 27-09-2021]

____________________________________________________________________________________________

Report by: Kamini Sharma, Editorial Assistant, EBC Publishing Pvt. Ltd. 

____________________________________________________________________________________________

Counsels:

For the Appellants: Sr. Advocate Mukul Rohatgi and Sr. Advocate Akhil Sibal,

For the Respondents: Sr. Advocate Navroz Seervai and Sr. Advocate Neeraj Kishan Kaul


*Judgment by: Justice Dr. Dhananjaya Y Chandrachud

Know Thy Judge| Justice Dr. DY Chandrachud

Case BriefsForeign Courts

Federal Court of Ontario (Canada): In an Intellectual Property battle the Bench of Alan S. Diner,  J., had granted major win to India’s giant dairy producer, Kaira District Co-operative Milk Producers’ Union Ltd. (Kaira), i.e. AMUL Dairy and Gujarat Cooperative Milk Marketing Federation Ltd. The Bench held that,

“The Defendants’ conduct had exceeded the usual case of confusion caused by slight alterations of the mark, similar description of copyrighted material, or modification of a design, rather, they were using, without any colour of right, an exact duplicate of the Plaintiffs’ mark, and an exact copy of their copyrighted material.”

Plaintiff alleged that Defendant-AMUL Canada had been advertising, marketing, offering for sale, selling, and providing goods identical to the Plaintiffs’ goods in Canada with the trademarks and trade names AMUL and Amul Canada Ltd. through LinkedIn. Further, it was alleged that the Defendants, namely AMUL Canada, Mr Mohit Rana, Mr Akash Ghosh, Mr Chandu Das, and Mr Patel were not only using the exact marks and designs belonging to the Plaintiffs, but they were claiming to be the Plaintiffs, through copying the information available on the AMUL websites regarding the Plaintiffs’ background and activities. Defendant also purported to have employees in Canada even though the Plaintiffs had never licensed nor provided consent for either Amul Canada or any of the four individual Defendants to use the Plaintiffs’ trademarks and copyrights in any manner.

The Kaira was established in India in 1946, in the business of the manufacture and marketing of milk products. Its trademark AMUL is India’s largest food brand and a “well-known trademark” in India. The Plaintiffs deposed that Gujarat and Kaira had offered for sale, advertised, sold, and distributed certain AMUL trademarked goods in Canada since 2010. Specifically, Kaira was the registered owner of the Canadian Trademark “AMUL” since 2014, which had been used in Canada since 30-06-2020. Plaintiff also owned the Canadian trademark design having the expression “Amul the Taste of India”, which had been used in Canada, in association with the goods “coffee, tea, cocoa, coffee substitutes, sugar, milk etc. Similarly, Kaira also owned the mark and design having the expression “Amul Pasturized Butter utterly butterly delicious”, used in association with the dairy products, edible oils and fats. Finally, the Plaintiffs owned copyright in the designs associated with these trademarks.

Motion for Default Judgment

Noticing the evasive conduct of the Defendants and that the Plaintiffs had exhausted all reasonable attempts to had the Defendants cease and desist their conduct both prior to and through the commencement of these proceedings, the Bench held that the Plaintiffs had every right to bring the Motion for Default Judgment in ex parte manner to stop the blatant abuse of their intellectual property.

Passing Off under section 7(b) of the Trademarks Act

Passing off has been statutorily codified in section 7(b) of the Trademarks Act, RSC 1985, c T-13 [Trademarks Act]. The elements for establishing passing off are:

  • the existence of goodwill;
  • the deception of the public due to misrepresentations; and
  • actual or potential damages to the plaintiff [Ciba-Geigy Canada Ltd v Apotex Inc, 1992 SCC OnLine Can SC 85]

Holding that the Defendants had engaged in deliberate deceitful conduct and had directed public attention to its business in such a way as to cause confusion in Canada between the goods and business of the Defendants, and those of the Plaintiffs, the Bench stated that there was clearly potential damages that could have related, whether through sales, marketing, distribution, and/or recruiting employees, through the unauthorized guise of Amul Canada. Hence, opining that each of the three elements was met in the instant case, the Bench stated,

Not only has the Amul brand existed for well over 50 years and is advertised globally through online and other channels – and thus acquired distinctiveness over time – and the volumes of milk and cheese distribution illustrate that Amul products have a reputation within at least a certain segment of consumers of its dairy products in Canada.”

Trademark Infringements

The act of falsely advertising their desire to increase butter sales in Canada, so that the Defendants may attract further interest in the company, potentially hoping to attract more purported employees, distributors and/or consumers through social media pages was held by the Court to be unauthorized use of the Amul mark sufficient to infringe right to exclusivity contrary to Sections 19 and 20(1)(a) of the Trademarks Act. Similarly, the Defendants had directed public attention to their business in such a way as to cause or be likely to cause confusion in Canada, at the time they commenced so to direct public attention to them, between their business and the goods and business of the Plaintiffs, contrary to Section 7(b) of the Trademarks Act.

Copyright Infringement

In reproducing the copyrighted Amul design and corporate information, the Defendants had copied not only the mark, but also the Plaintiffs’ literature as prominently displayed on their websites (www.amul.com and www.amuldairy.com). The image and wording used was not simply strikingly similar, as had been found to establish copyright infringement in many other cases. Here, the image and wording used was an exact copy of that owned by the Plaintiffs. Hence, it was held that the Defendants had reproduced the Plaintiffs’ copyrighted material without their consent and infringed the Plaintiffs’ rights to exclusive use of its copyright contrary to Section 27 of the Copyright Act.

Verdict

In the backdrop of the above, the Bench reached the following conclusions:

  1. To permanently enjoin from infringing the trademark and copyright of the Plaintiffs, and directing public attention to the Defendants’ goods, or business in such a way as to cause or be likely to cause confusion in Canada.
  2. To transfer to the Plaintiffs within thirty (30) days, ownership and all rights access, administration, and control for and over the LinkedIn pages/accounts used by them, together with any other LinkedIn pages/accounts, domain names and social media pages registered to or controlled by the Defendants displaying the Plaintiffs’ trademark or copyright.
  3. To provide a listing and contact information for all entities that contacted the Defendants about the Defendants’ business through the LinkedIn pages.
  4. The Plaintiffs were awarded damages in the amount of $10,000 for actions contrary to the Trademarks Act, $5,000 for actions contrary to the Copyright Act and the costs in lump sum of $17,733.

[Kaira District Co-Operative Milk Producers’ Union Limited (Amul) v. Amul Canada, 2021 Fc 636, 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

Telangana High Court: Abhinand Kumar Shavili, J., addressed a matter wherein the name and logo of a company were in dispute.

Instant petition was filed to seek a writ of mandamus.

Petitioner’s contention was that it is a registered company under the Companies Act, 1956. Respondent 3 approached the 2nd respondent under Section 22 of the Companies Act (now Section 16 of the new Companies Act, 2013) disputing the name and logo of the petitioner as the same was resembling with the 3rd respondents’ name and logo.

Analysis and Decision 

GSK – Widely Known

Bench stated that 2nd respondent had rightly passed orders directing the petitioner to change the name suitably by deleting the word ‘GSK’ from its existing name as it was similar to that of 3rd respondent and was widely known as GSK even prior to the incorporation of the petitioner-company.

What had 2nd respondent Ordered?

2nd respondent had ordered the name of the petitioner’s company be changed suitably by deleting the word ‘GSK’ from its existing name within a period of 3 months from the date of that order.

Contention of ‘Limitation’ – Rejected

With regard to the contention of limitation raised by the petitioner that the application filed by respondent 3 before 2nd respondent was barred by limitation, Court noted that the said application was filed under the old Act where the period of limitation was 5 years and the petitioner’s company was incorporated in 2008, whereas the 3rd respondent had filed an application before the 2nd respondent in 2012 which would mean that 3rd respondent has filed well within the period of limitation

Contention with respect to –Orders passed by 2nd respondent contrary to Trade Marks Act, 1999

Petitioner failed to show how Section 35 of the Trade Marks Act, 1999 was being violated, more so, petitioner itself was not registered under the Trade Marks Act, 1999. Hence the said contention was also rejected.

Therefore, in view of the above, Court did not find it appropriate to interfere with the case of the petitioner and the petition was dismissed. [G.S.K. Life Sciences (P) Ltd. v. Union of  India, 2021 SCC OnLine TS 634, decided on 20-04-2021]


Also, Read what Section 35 Trademarks Act, 1999 is?

Section 35:

Saving for use of name, address or description of goods or services, – Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in  business, or the use by any person of any bona fide description of the character or quality of his goods or services.”

Op EdsOP. ED.

Infringement of copyright is major drawback in the digital age of internet. With time, it has gradually become easier to infringe intellectual property rights, and at the same time, it has become harder to prevent others from stealing an individual’s original work. A “copyright” is a legal right given to the authors/creators of original works and it bestows upon them to decide how and when those works can or cannot be copied, modified, and distributed by another person. If an individual violates this right of the owner by using, selling or distributing an original work without prior permission of the owner, it leads to infringement and as a result, the copyright-holder is entitled to seek legal action.

The purpose behind copyright is that the creators restrict what is being done with their respective work and a prior permission must be obtained for using it. Copyleft licensing exists within the legal framework of the concept of copyright. Copyleft licences are in a way subsets of copyright licences, and the idea behind this is to re-establish freedom of users.

Copyleft: Meaning and origin

Copyleft has been defined as “licence granting general permission to copy and reproduce intellectual property. Where copyright protects society’s interests in invention and creativity by providing individual incentives through copyright control, copyleft protects social interests in knowledge creation by vesting copyright control in a large general community. The concept of copyleft is central to many programming projects, and the licence is most commonly used for software, digital art, writings, and other creative content”.1

The GNU Project gives this simple definition of copyleft: “the rule that when redistributing the program, you cannot add restrictions to deny other people the central freedoms (of free software)”.2

The term “copyleft” has been derived from the term “copyright” itself. As per this concept, copies of one’s work are open for distribution, access and modification as per the other person’s requirements, on precondition that the edited work shall also be made available for free and the same rights shall be maintained as the work goes forward.

In essence, a copyleft work is open for distribution and amendments on a condition that the work resulting from such copyleft content shall be free and available as well as accessible within the public domain. The term “copyleft”, for the first time, was by used Li-Chen Wang during late 1970’s in his Palo Alto “Tiny BASIC’s distribution notice”. In this, he wrote that “@copyleft all wrongs reserved” as opposed to “copyright: all rights reserved”. However, it was merely a term and no literal or interpretive meaning was accredited. Tiny BASIC was only a free version of a basic computer programming language.3

The concept of copyleft as we know today, was given by Richard Stallman in his GNU manifesto in 1985. GNU was originally an operating system, sponsored by the “Free Software Foundation” founded by Richard Stallman in 1984. He was denied access to an improved software by “Symbolics”, on which Richard worked. This inspired Richard Stallman to generate a licence which is unrestricted to be acquired and work on without changing the original source code of the program. As per Richard Stallman, “this was a win-win situation for everyone because in this manner improvements can be made without changing the original piece”.

Copyright and copyleft: A comparison

Contrary to the symbol of copyright, “copyleft” is represented by a reverted illustration of the copyright symbol. In other words, it is a mirrored image of copyright and hence, in terms of its meaning. Copyright essentially refers to a right bestowed upon the author of an original work to reproduce, distribute, and commercially manipulate the work. It is pertinent to be noted, copyright is a negative right that prevent others from using the “copyrighted work” without prior consent or authorisation of its owner.  Copyright law amply acknowledges an author’s original work and reserves him the privilege to utilise or conceal it at his personal discretion. On the other hand, copyleft gives author the right to use or distribute the work without any constraints and also to pass on the rights to amend the work, on one term that “the copylefted work cannot be copyrighted and the modified work will also be available freely for the public to use and work”.4

Purpose of copyleft

The main purpose behind copyleft is to facilitate future users of works with the same freedom to modify or manipulate an original work. After obtaining a copyleft licence, an individual shall be free to manipulate and amplify work. By employing the way of copyleft, future users are afforded the same rights. For instance, a poem is composed and disclosed within a copyleft licensed community. One of the licensed user then copies the poem. They use the poem as lyrics for a song and add drumbeats and guitar sound. Another user takes up this song and adds different instrument sounds in the background. Under copyleft, all of this would be legal and available for future modification by another person without obtaining any prior permission from the original creator.

This is the way in which copyleft works. People who are a part of the licensed community can without any constrain of legal recourse use and have their works used and modified. This concept is very lucrative in the field of software and technological spheres which majorly involves coding. This is frequently how innovations are discovered. This not only encourages development of a code within a community for enhanced efficacy but also facilitates updates in regard to software programs on time, technological bugs and advancements which are discovered by active users ultimately getting rid of legal boundaries and constraints resulting in more creative discoveries.

Legal validity of copyleft

As per the surveys many non-proprietary software, under their contractual mechanism, rely on copyleft licence. For using a copyleft programme, an individual has to follow the licence agreement, given before allocating software for copyleft. The concept of copyleft is beneficial as it facilitates the public and puts no restrictions on a user to utilise the software on the terms of the creator of the original content. A user may modify it according to his personal use. In the field of software development programmes too, the copyleft licence has a vital role in linking the software developers with common public. Furthermore, there are many different types of licences of copyleft out of which most popular type of licences are General Public Licence and Lesser General Public Licences.

Conclusion

In conclusion, the purpose behind copyleft is not completely alien to the concept of copyright. However, the two drastically differ in the rights and freedom given to the creators and users to alter and refashion the original work without apprehension for legal retribution. The concept of copyleft carries with itself the impact of modernisation in the digital age. Giving out information freely to be used, is a sign of how society is evolving and defying the long existing concept of ownership by private players. However, this concept should only be enforceable if the owner/creator of the work agrees to such terms and conditions. It should not be made obligatory and so, must be harmoniously aligned with other provisions pertaining to intellectual property.


*Fourth year student, Hidayatullah National Law University, Raipur, e-mail: choudharyanushka99@gmail.com

1 <https://www.britannica.com/topic/copyleft>.

2 <https://www.gnu.org/licenses/copyleft.en.html>.

3 <http://www.linfo.org/copyleft.html>.

4 K.G. Kumar, Beyond the Market, Freedom Matters, (2001) Vol. 36, No. 36, Economic and Political Weekly.

Case BriefsForeign Courts

Supreme Court of The United States: In a major decision in the copyright dispute between Google and Oracle over copying certain lines from Oracle’s Java SE API (Application Pro­gramming Interface) code; the SCOTUS while deciding in favour of Google, held that Google’s copying of the Java SE API, which included only those lines of code that were needed to allow programmers to put their ac­crued talents to work in a new and transformative program, was a fair use of that material as a matter of law. The Court decided the issue with a ratio of 6:2, with Justice Stephen Breyer authoring the majority opinion. He was joined by John Roberts, C.J., and Sonia Sotomayor, Elena Kagan, Neil Gorsuch and Brett Kavanaugh, JJ. While Clarence Thomas and Samuel Alito, JJ., dissented. Amy Coney Barret, J., took no part in considering or deciding the matter.

Facts: Oracle America, Inc. owns a copyright in Java SE, a computer platform that uses Java computer programming language (invented by Sun Microsystems). In 2005, Google acquired Android, seeking to build a new software platform for mobile devices. To allow the millions of programmers familiar with the Java programming language to work with its new Android plat­form, Google copied roughly 11,500 lines of code from the Java SE pro­gram. The copied lines are part of a tool called an Application Pro­gramming Interface (API). An API allows programmers to call upon prewritten computing tasks for use in their own programs. Oracle had claimed to be owed as much as $9 billion, while Google claimed that its use of the code was covered under the doctrine of fair use and therefore not subject to copyright liability.

Issues Involved: Over the course of a prolonged litigation, the following points of consideration emerged-

  • Whether Java SE’s owner could copyright the copied lines from the API.
  • Whether Google’s copying constituted a permissible “fair use” of that material freeing Google from copyright liability.

The Federal Circuit had ruled in Oracle’s favour and held that the portion is copyrightable and Google’s copying did not constitute a “fair use”.

Significant Observations: The SCOTUS had to review the Federal Circuit’s determinations vis-à-vis copyrightability and fair use, therefore in order to settle the matter ‘for argument’s sake, the Court assumed that the material was copyrightable. The Court discussed the dispute under the following important heads-

  • Regarding Copyright- The majority observed that the objective of copyrights and patents as per the US Constitution is to “promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writ­ings and discoveries.” It was observed that copyright encourages production of works that others might cheaply reproduce, by granting the author an exclusive right to produce the work for a period of time. However, in order to dilute the negative consequences of such exclusivity, the Congress and the Courts have limited the scope of copyright protection to ensure that a copyright holder’s monopoly does not harm the public interest. The Court also noted that the dispute involves 2 aspects enshrined in Section 107 of US’ Copyright Act, namely- copyright protection cannot extend to “any idea, procedure, process, system, method of operation, concept, princi­ple, or discovery”; a copyright holder may not prevent another person from making a fair use of a copyrighted work.
  • Regarding Fair Use- The majority noted that ‘fair use’ is a flexible doctrine which takes account of changes in technology. “Computer programs differ to some extent from many other copyrightable works because computer programs always serve a functional purpose. Because of these differences, fair use has an im­portant role to play for computer programs by providing a context-based check that keeps the copyright monopoly afforded to computer programs within its lawful bounds”. The Court also observed that fair use question is a mixed question of fact and law, and the re­viewing courts should appropriately defer to the jury’s findings of un­derlying facts, but the ultimate question whether those facts amount to a fair use is a legal question for judges to decide de novo. “The “right of trial by jury” does not include the right to have a jury resolve a fair use defense”. Applying these observations to the current dispute, the Court noted that it needs to scrutinize the issue vis-à-vis the four guiding factors specified in the Copyright Act’s fair use provision-

The purpose and char­acter of the use In order to inquire about the “purpose and character of the use”, it must be examined whether the copying at issue was “trans­formative,” i.e., whether it adds something new, with a further pur­pose or different character. The Court observed that Google’s limited copying of the API is a transformative use. Google copied only what was needed to allow programmers to work in a different compu­ting environment without discarding a portion of a familiar program­ming language. Google’s purpose was to create a different task-related system for a different computing environment (smart phones) and to create the Android platform which would help achieve and popularize that objective. Google’s purpose was therefore consistent with that creative progress that is the basic constitutional objective of copyright itself

The nature of the copyrighted work- The nature of the work at issue favors fair use. The copied lines of code are part of a “user interface” that provides a way for pro­grammers to access prewritten computer code through the use of sim­ple commands. As part of an interface, the copied lines are inherently bound together with non-copyrightable ideas i.e. the overall organization of the API and the creation of new creative expression (the code inde­pendently written by Google). Unlike many other computer programs, the value of the copied lines is in significant part derived from the in­vestment of users (computer programmers in this case) who have learned the API’s system. Given these differences, application of fair use here does not undermine the general copyright protection that Congress provided for computer programs.

 Amount and substantiality of the portion used in relation to the copyrighted work as a whole- Observing that the 11,500 lines of code that Google copied, even though which amounts to virtually all the declaring code needed to call up hundreds of different tasks; however the lines in question form only 0.4 % of the entire API at issue, which consists of 2.86 million total lines. Therefore the 11,500 lines of code should be viewed as one small part of the considerably greater whole. “Google copied these lines not because of their creativity or beauty but because they would allow pro­grammers to bring their skills to a new smartphone computing envi­ronment”.

Effect of the use upon the potential market for or value of the copyrighted work- The Court noted that Google’s new smartphone platform is not a market substitute for Java SE. it was also pointed out that Java SE’s copyright holder would benefit from the reimplementation of its interface into a different market.

 Dissenting Opinion: Disagreeing with the majority, Justices Clarence Thomas and Samuel Alito observed that the nature of the copyrighted work (which in their opinion was the sole factor possibly favoring Google) cannot by itself support a determination of fair use because holding otherwise would improperly override Congress’ determina­tion that declaring code is copyrightable. They also pointed out that, “The majority purports to save for another day the ques­tion whether declaring code is copyrightable. The only ap­parent reason for doing so is because the majority cannot square its fundamentally flawed fair-use analysis with a finding that declaring code is copyrightable. The majority has used fair use to eviscerate Congress’ considered policy judgment”. [Google LLC v. Oracle America Inc., No. 18–956, decided on 05-04-2021]


Sucheta Sarkar, Editorial Assistant has reported this brief.

Case BriefsForeign Courts

United States Court of Appeals (2nd Circuit): While deciding the instant dispute between renowned celebrity photographer Lynn Goldsmith and Andy Warhol Foundation for Visual Arts, involving the Prince Series of photographs, the Circuit Court ruled in favour of Goldsmith and held that 1980s portrait series by Andy Warhol depicting the singer Prince did not constitute “fair use” of the photograph by Lynn Goldsmith that it was based on. Thus Warhol’s Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law. After a detailed discussion, the decision of the Dist. Court was reversed and the matter was remanded for further proceeding consistent with 2nd Circuit Court’s opinion.

Background

The dispute is centers around a series of silkscreen prints and pencil illustrations created by visual artist Andy Warhol based on a 1981 photograph of Prince that was taken Lynn Goldsmith in her studio, and in which she holds copyright. A professional photographer focusing mainly on celebrity photography, Lynn Goldsmith (also the founder of Lynn Goldsmith Ltd. [LGL]), in December 1981 took a series of portrait photographs of musician Prince Rogers Nelson (popularly known as Prince) for the Newsweek Magazine. The lighting and the makeup was arranged in a way so as to highlight and accentuate Prince’s “chiseled bone structure and his sensuality”- “Goldsmith was trying to capture his willingness to bust through what must be his immense fears to make the work that he wanted to make.” Goldsmith took a total number of 23 photographs- 12 black and white and 11 colour photographs and retained copyright in each of the photographs that she took.

In 1984, Goldsmith though her firm LGL, licensed the Goldsmith Photograph to Vanity Fair magazine for use as an “artist reference”, which meant that an artist would create a work of art based on the image reference. The license allowed Vanity Fair to publish an illustration based on the Goldsmith Photograph in its November 1984 issue; it further required that the illustration be accompanied by an attribution to Goldsmith. Goldsmith however was unaware of the license at the time and played no role in selecting the Goldsmith Photograph for submission to Vanity Fair. The magazine then commissioned Andy Warhol to create an image of Prince for its November 1984 issue. Warhol’s illustration, together with an attribution to Goldsmith, was published accompanying an article about Prince by Tristan Vox. Additionally, a separate attribution to Goldsmith was included elsewhere in the issue, crediting her with the “source photograph” for the Warhol illustration. Vanity Fair did not counsel Goldsmith that Warhol was the artist for whom her work would serve as a reference, and she did not see the article when it was initially published. Unbeknownst to Lynn Goldmsith, Andy Warhol created 15 additional works based on the Goldsmith Photograph, known collectively (including the Vanity Fair image) as the “Prince Series”. The Prince Series consisted of fourteen silkscreen prints (twelve on canvas, two on paper) and two pencil illustrations.

After Warhol’s demise, the Andy Warhol Foundation for Visual Arts (AWF) acquired title to and copyright in the Prince Series. Between 1993 and 2004, AWF sold or otherwise transferred custody of 12 of the original Prince Series works to third parties, and, in 1998, transferred custody of the other four works to The Andy Warhol Museum. AWF also retains copyright in the Prince Series images and through The Artist Rights Society (a third-party organization that serves as AWF’s agent), continues to license the images for editorial, commercial, and museum usage.

All the aforementioned developments took place with Lynn Goldsmith being unaware of it. However that changed in 2016 post Prince’s demise. Condé Nast, Vanity Fair’s parent company, contacted AWF with the intent to determine whether AWF still had the 1984 image, which they had hoped to use in connection with a planned magazine commemorating Prince’s life. Condé Nast obtained a commercial license, to be exclusive for three months, for a different Prince Series image for the cover of the planned tribute magazine. Condé Nast published the tribute magazine in May 2016 with a Prince Series image on the cover. Goldsmith was not given any credit or attribution for the image, which was instead attributed solely to AWF.

Legal Trajectory

Goldsmith for the first time became aware of the ‘Prince Series’ and she contacted the AWF to advise it of the perceived infringement of her copyright. In November 2016, Goldsmith registered the Goldsmith Photograph with the U.S. Copyright Office as an unpublished work. In April, 2017, AWF sued Goldsmith and LGL for a declaratory judgment of non-infringement or, in the alternative, fair use. Goldsmith countersued for copyright infringement.

The District Court however granted summary judgment in favour of AWF. The Dist. Court decided that the Prince Series was “transformative” because, while the Goldsmith Photograph portrays Prince as “not a comfortable person” and a “vulnerable human being,” the Prince Series portrays Prince as an “iconic, larger-than-life figure”. It was also held that the Goldsmith’s photograph being creative and unpublished work holds little import in the dispute because the Prince Series works are “transformative works,” and in creating the Prince Series, Warhol “removed nearly all of the Goldsmith Photograph’s protectible elements”. Aggrieved by this decision, Goldsmith filed the instant appeal.

Observations and Conclusions

In order to decide the matter, the Court delved into the core concepts of copyright. The Court reviewed the case under the following important heads-

Copyright, Fair Use and Derivative Works

Transformative Works: The Court observed that the Dist. Court’s decision that the Prince Series is transformative work as they can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure was erroneous. It was observed that it may well have been Goldsmith’s subjective intent to portray Prince as a “vulnerable human being” and Warhol’s to strip Prince of that humanity and instead display him as a popular icon, whether a work is transformative cannot turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic – or for that matter, a judge – draws from the work”. The word ‘transformative’ if given too broad an interpretation can also seem to authorize copying that should fall within the scope of an author’s derivative rights, therefore the district judge should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue. That is because judges are typically unsuited to make aesthetic judgments and because such perceptions are inherently subjective. Instead, the judge must examine whether the secondary work’s use of its source material is in service of a “fundamentally different and new” artistic purpose and character, such that the secondary work stands apart from the “raw material” used to create it. The secondary work’s transformative purpose and character must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work such that the secondary work remains recognizably deriving from, and retaining the essential elements of, its source material.

The Court thus concluded that the Prince Series is not “transformative”- “That is not to deny that the Warhol works display the distinct aesthetic sensibility that many would immediately associate with Warhol’s signature style – the elements of which are absent from the Goldsmith photo. But the same can be said, for example, of the Ken Russell film, from a screenplay by Larry Kramer, derived from D.H. Lawrence’s novel, Women in Love: the film is as recognizable a “Ken Russell” as the Prince Series are recognizably “Warhols.” but the film, for all the ways in which it transforms (that is, in the ordinary meaning of the word, which indeed is used in the very definition of derivative works, its source material, is also plainly an adaptation of the Lawrence novel”.  The Prince Series retains the essential elements of its source material, and Warhol’s modifications serve primarily to magnify some elements of that material and minimize others. While the collective effect of those alterations may change the Goldsmith Photograph in ways that give a different impression of its subject, the Goldsmith Photograph remains the recognizable foundation upon which the Prince Series is built.

The Court also highlighted that “each Prince Series work is immediately recognizable as a ‘Warhol’” is an irrelevant logic to this Court’s analysis- “Entertaining that logic would inevitably create a celebrity-plagiarist privilege; the more established the artist and the more distinct that artist’s style, the greater leeway that artist would have to pilfer the creative labors of others. But the law draws no such distinctions”, thus agreeing with the argument presented by Goldsmith that “Martin Scorsese’s film The Irishman is recognizably “a Scorsese” but “does not absolve him of the obligation to license the original book” on which it is based”.  

 Commercial Use: Even though the 2nd Circuit Court agreed with the Dist. Court’s observations regarding Prince Series being commercial in nature, and that they produce an artistic value that serves the greater public interest; however, the Court refused to conclude that Warhol and AWF are entitled to monetize it without paying Goldsmith the “customary price” for the rights to her work, even if that monetization is used for the benefit of the public. “Just as the commercial nature of a transformative secondary use does not itself preclude a finding that the use is fair, the fact that a commercial non-transformative work may also serve the public interest or that the profits from its commercial use are turned to the promotion of non-commercial ends does not factor significantly in favor of finding fair use under the circumstances present here”.

Nature of Copyrighted Work: The Court again pointed out that Dist. Court correctly held that the Goldsmith Photograph is both unpublished and creative, but in concluding that these factors should favor neither party as LGL had licensed the Goldsmith Photograph to Vanity Fair and the Prince Series was highly transformative, the Dist. Court committed an error. “Having recognized the Goldsmith Photograph as both creative and unpublished, the Dist. Court should have found this factor to favor Goldsmith irrespective of whether it adjudged the Prince Series works transformative within the meaning of the first factor. And, because we disagree that the Prince Series works are transformative, we would accord this factor correspondingly greater weight”.

Amount and Sustainability of Use: The Court observed that two considerations are necessary in order to judge this factor in relation to the original work- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and, the quantity of the materials used’ but also their quality and importance. The Court noted that copyright does not protect ideas, but only “the original or unique way that an author expresses those ideas, concepts, principles, or processes”. The Court observed that it is true that Goldsmith cannot copyright Prince’s face, but the law grants her a broad monopoly on its image as it appears in her photographs of him, including the Goldsmith Photograph. It was concluded that, “the Prince Series borrows significantly from the Goldsmith Photograph, both quantitatively and qualitatively. While Warhol did indeed crop and flatten the Goldsmith Photograph, the end product is not merely a screen print identifiably based on a photograph of Prince. Rather it is a screen print readily identifiable as deriving from a specific photograph of Prince, the Goldsmith Photograph”.

The Effect of the Use on the Market for the Original: The Court stated that it was not persuaded by the Dist. Court’s rationale that the Prince Series poses no threat to Goldsmith’s licensing markets. Fair use is an affirmative defense; as such, the ultimate burden of proving that the secondary use does not compete in the relevant market is appropriately borne by the party asserting the defense: the secondary user. Since Goldsmith has identified a relevant market, AWF’s failure to put forth any evidence that the availability of the Prince Series works poses no threat to Goldsmith’s actual or potential revenue in that market tilts the scales toward Goldsmith. “The Dist. Court entirely overlooked the potential harm to Goldsmith’s derivative market, which is likewise substantial. Most directly, AWF’s licensing of the Prince Series works to Condé Nast without crediting or paying Goldsmith deprived her of royalty payments to which she would have otherwise been entitled”.    

 Substantial Similarity

The Court observed that the Dist. Court did not analyze the issue of substantial similarity when the issue is logically a precursor to that of fair use. In general, two works are substantially similar when “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. The Court concluded that, “This is not to say that every use of an exact reproduction constitutes a work that is substantially similar to the original. But here, given the degree to which Goldsmith’s work remains recognizable within Warhol’s, there can be no reasonable debate that the works are substantially similar. Prince was much photographed. But any reasonable viewer with access to a range of such photographs including the Goldsmith Photograph would have no difficulty identifying the latter as the source material for Warhol’s Prince Series”.  [The Andy Warhol Foundation for the Visual Arts v. Lynn Goldsmith, 2021 SCC OnLine US CA 2C 1, decided on 26-03-2021]


Sucheta Sarkar, Editorial Assistant has reported this brief.


Image credits: The Wall Street Journal

Op EdsOP. ED.

I. Introduction

Copyright and the protection regime thereof is a sub-class of intellectual property rights that seek to safeguard certain rights of authors and owners from infringement or unfair dealing in their works. The copyright regime can be classified into two main divisions, subject-matter copyright, and copyright infringement. While the latter aspect deals with protecting identified copyrights and enforcing the rights of owners and authors, subject-matter of copyright aims to delineate what kinds of works can be afforded copyright protection in the first place. This article shall focus only on the subject-matter of copyright, and therefore, will not address the open versus close-ended approaches in other aspects of the copyright debate.[1]

There are broadly two approaches observed in determining what subject-matter is protectable by different copyright jurisdictions, an open-ended approach, and a closed list approach.[2] Closed list jurisdictions attempt to elaborately outline the contours of different categories of subject-matter that is protectable under its copyright regime e.g. literary works, artistic works, musical works, etc. Examples of these jurisdictions include Australia[3], the United Kingdom[4] and India.[5] In all of these jurisdictions, there are legislations that exhaustively lists categories of works which cumulatively designates what can be afforded copyright protection. The result of such an approach is that non-conventional works such as perfumes, graffiti, computer-generated patterns, etc. will by definition fall outside the scope of copyright protection.[6] Per contra, the open-ended approach does not aim to identify the contours of copyrightable subjects but rather seeks to identify critical common requirements for a work to be afforded copyright protection, such as originality of the work, fixation in a medium, requirement of intellectual creation, etc.[7] Countries that follow this approach usually align their domestic copyright system along the lines of Article 2(1) of the Berne Convention, which recognises copyrightable subject-matter in all forms of artistic and literary works whatever their mode of expression.[8] Examples of these countries include Trinidad and Tobago, France[9], and Canada.

While the open-ended approach to copyright subject-matter is increasingly gaining scholarly attention and is being seen as the adequate improvement upon the closed list approach, the present system adopted by open-ended jurisdictions might have their own problems. This article seeks to critically analyse the discourse on these two approaches to subject-matter copyright and to conclude by recommending a hybrid approach as a possible framework that can form the basis of a reformed system of copyright protection that maximises the best of both these approaches in the Indian context.

II. International perspectives ― Foreign copyright regimes

To appreciate the varying systems of copyright protection throughout different jurisdictions, this section shall briefly touch upon the approach to determining copyrightable subject-matter by different countries.

United Kingdom – The closed list approach

In the United Kingdom, the Copyright, Designs and Patents Act, 1988 (CDPA) is the legislation that codifies the copyright regime. The CDPA follows a strictly closed system whereby 4 kinds of authorial works and 5 kinds of entrepreneurial works are afforded protection.[10] Notwithstanding the existence of these categories, several definitions of works have been vague and have invited courts to more precisely define the extent of a subject-matter.[11]

In Green v. Broadcasting Corpn. of New Zealand, the plaintiff attempted to claim copyright protection for a talent show called “opportunity knocks” as a “dramatic work”.[12] “Dramatic works” is not exhaustively defined under the CDPA, but simply deemed to include a recorded work of mime or dance.[13] The Court dismissed the case claiming that the format of the TV show lacked creativity as well as sufficient unity.

This decision has been criticised for failing to recognise the creativity that is required in the creation of TV shows, and also for being blind to the future direction of the entertainment sector which is increasingly captured in TV show formats similar to the one in Green v. Broadcasting.[14]
Similar criticisms have been made by scholars in decisions of what constitutes an artistic work[15] whereby courts have refused to classify face tattoos as paintings on a very narrow construction, holding that a face could never be the surface of a painting.[16]

Canada–Trinidad and Tobago ― A transition from closed list to open-ended

Canada previously had a similar closed list system of subject-matter copyright, which only afforded protection to four categories of works.[17] After acceding to the Berne Convention, however, Canada amended Article 2 of its Copyright Act to introduce a non-exhaustive subject-matter list.[18]

Trinidad and Tobago has also followed this trajectory and has gone one step further than Canada since it explicitly states that works are subject-matters of protection solely on the basis of their creation rather than any regardless of their form of expression, content, quality and purpose.[19]

Some copyright scholars have argued that these forms of inclusive definitions rather than an exhaustive list of subject-matters strengthen copyright protection by extending it to any authorial work which meets the relevant legal standards of originality.[20]

III. Indian copyright regime

With the advent of independence, the Copyright Act, 1914, was replaced with the Copyright Act, 1957 (“the Act”). With the Act, the Indian legislature sought to achieve two broad goals, firstly, to protect the result of man’s labour, skill and work and secondly, to protect works from annexation by others.[21]

Subject-matter copyright under the Copyright Act, 1957

Under the Act, works eligible for copyright are listed in Section 13. Within this provision, copyright can be claimed for original literary, dramatic, musical and artistic works; cinematography films and sound recordings.[22] Each class of work is further defined under the respective clauses of Section 2.[23] These clauses reveal that, while musical, artistic works and records are defined exhaustively, other works are more broad definition.[24] In addition to this, Indian courts have also identified the rights of a performer over his performance as part of copyright-protected work under Section 38 of the Act.[25] Therefore, subject-matter copyright extends to all works that fall within the ambit of a simultaneous interpretation of Sections 13 and 38 of the Act.

Though the initiation of a statute was premised on the need to widen copyright protection, the Act potentially restricts its reach by limiting copyright protection only to the classes of work enumerated in the legislation. Despite being a signatory to the Berne Convention, India has adopted a closed copyright regime with an arguably narrow scope.[26] This approach is evident in the statute which clarified that copyright protection is derived solely from the statute.[27]

Jurisprudence

In addition to the Act, Indian courts have also restricted the scope of copyrightable works to statutorily enumerated categories. To illustrate, in Time Warner Entertainment Co. v. RPG Netcom Globe, when resolving the question of whether an individual has the right to claim copyright infringement over future work of a cinematographic film, the High Court clarified that protection of the work concerned is not stipulated in the legislation and is, therefore, ineligible for copyright.[28] The Court reasoned that from a plain reading of Sections 13, 14, 16 and the object of the Act, it can be rightly inferred that copyright is restricted to the properties in the statute and does not prevail de hors or beyond the Act.[29] This position has been emphasised by the courts by consistently maintaining that copyright is a creation of the legislature.[30] Consequently, no copyright can be claimed based on customary rights.[31]

This approach has restricted the scope of copyright protection solely to the enumerated works in the Act. For example, the Bombay High Court has denied a claim brought by an actor who pleaded protection for his performance in a cinema film[32], and the Delhi High Court has denied copyright to an artist who printed multicoloured work on a carton.[33] In both instances, the Court has strictly adhered to the categories outlined in the Act to conclude that copyright for the subject-matters concerned is not prescribed in the legislation.[34] However, Indian courts in certain other circumstances, have expanded the definitions of the properties listed in the statute to bring a broader spectrum of works under copyright protection.[35]

Therefore, the copyright laws in the country are a close representation of the British system, however, an expansive interpretation which has sometimes been the approach of the courts can consciously convert the rigid statutory structure of copyright laws to a more open-ended regime. Such a shift would bring the present system in par with the objectives that influenced the enactment of the legislation and induce more authors to create original works by protecting such works from invasion by others.

IV. Open versus close-ended approaches to subject-matter copyright

Having gone through the various approaches which different copyright regimes take in determining what subject-matter should be afforded copyright protection, this section will analyse the merits and demerits of these approaches.

Subject-matter copyright systems can be seen in light of the dialectic of flexibility and rigidity.[36] Since copyright protection can only be effective if it can identify a particular work with accuracy to establish whether it can be protected, and what would count as infringement, the rigidity of categories becomes important.[37] On the other hand, copyright must also be flexible in determining what works may be protected since this flexibility allows for unanticipated future works of creativity to be claim protection.[38] A lack of such flexibility could lead to gaping holes in protectable subjects jeopardising the development of unconventional creative works and industries.[39]

Closed list systems

A closed list system having clearly defined categories of copyright subject-matter has the advantage of legal certainty. This in itself is very beneficial to mainstream subject-matters that have long been recognised in the copyright system. Common law countries with a closed list over time develop an extremely efficient system of determining subject-matter challenges to copyright due to a vast body of subject-matter copyright jurisprudence.

However, this legal certainty comes at the cost of flexibility. The use of a strictly closed list system results in the exclusion of various non-conventional works such as contemporary sculptures despite the works being artistic and the products of intellectual labour.[40] Further, in common law countries with a heavy reliance on the system of precedents, the development of case law on the scope of a particular category will be inversely proportional to the scope of future works that can be afforded protection within that category, leading to further minimisation of the subject-matter of copyright.[41]

Open-ended systems

An open system on the other hand allows for any work to be afforded copyright protection as long as it meets certain qualifying criteria. These systems lack the rigidity of the closed list systems and therefore are more susceptible to affording copyright protection to non-conventional but qualifying works. Example of such a system is Trinidad and Tobago.[42]

However, where the open-ended system makes up for rigidity, by loosening the definition of work, it reduces legal certainty. Legal certainty is lost on both fronts, apropos of what works may be protected intelligibly and what an infringement would entail. For example, in the case of the Dutch system of copyright, jurisprudence has developed to allow for perfume scents to be copyrighted.[43] In such cases of works as perfumes, the lack of a scientifically sound method of distinguishing between one perfume and another, coupled with deciding what would count as a copyright infringement, would result in deeply subjective analysis, often rendering copyright protection unfeasible.[44] When courts extend copyright protection to subject-matters which cannot be objectively ascertained, it does not effectively protect the work, and at the same time, it also deters innovation in the field due to lack of certainty as to future protection and possible unintended infringement.[45]

Another critical demerit of such open systems is the tendency of such broad protection to become a misappropriation law and to overlap with other forms of intellectual property.[46] Computer programs for example are usually given limited protection under copyright law despite often meeting other qualifications of a protectable work. It is only by excluding computer programs as a subject that intellectual property as a system can meaningfully distribute various kinds of protections.

Finally, copyright protection inevitably leads to certain advantages for the owner of the copyright, and this advantage must inevitably be at the cost of the freedom of the public at large.[47] Given the possible ramifications of extending copyright protection to a specific subject-matter on the public at large, the specific categories which should be afforded copyright protection should be decided only through some form of representation i.e. it must be a legislative decision on the basis of public interest, rather than a judicial or administrative decision.[48]

Hybrid systems

In contrast to the black and white approaches of closed list systems, hybrid systems attempt to tackle the issue of subject-matter in a more nuanced manner. Frequently, these jurisdictions allow for the definitions of works to be open-ended and accompany such definitions with inclusive lists and a list of exceptions. Such a system may be observed in the new copyright regime of Canada[49], France[50] and some scholars have argued that such a system was initially envisaged by the United States.[51]
This system retains the benefits of both open and closed list systems inasmuch as it allows for all works to be generally protected, and then specifically enunciates and excludes certain categories depending on various factors.

A caveat ― Dual stages of protection

It is important to note here that there are always two levels at which copyright systems operate and consequently two stages at which the approach of the specific jurisdiction will become important.
The first stage is at the level of legislation i.e. the legislation that defines the specific subject-matter categories. Here, a hard outer limit of what subjects are protectable is set, and this is usually more rigid. The second stage of subject-matter determination happens at the level of administrative copyright protection agencies and courts. At this stage, an outer limit has already been set, however, courts and copyright agencies may nevertheless boost or restrict copyright protection by the use of interpretive techniques.

While the hybrid approach can ensure adequate protection at the legislation level, even this system may breakdown at the second stage due to a narrow interpretation of categories and introduction of artificial requirements by administrative authorities and judicial bodies. A good example of this breakdown is the case of the United States Copyright Act of 1976. Here, despite the Congress employing arguably inclusive and broad language in defining “authorial works” in the Copyright Act of 1976[52], the copyright office and various judicial decisions have consistently refused to afford protection to unenumerated works of authorship.[53]

V. Conclusion

After considering the merits and demerits of the various approaches to subject-matter copyright, hybrid systems of copyright subject-matter determination seem to be a more nuanced take on the issue and could be designed to strike an adequate balance between the interests of copyright owners and the public interest in fostering innovation.

However, there are two important aspects that India must take into account while reforming copyright law on subject-matter. As has been seen from the case of the United States, simply drafting legislation which allows for an open-ended interpretation is not enough. The Insolvency and Bankruptcy Board of India (IBBI) and courts which stand at the second stage of copyright identification and enforcement must also be encouraged through policy documents and explicit legislative intent to follow this open-ended approach.
Secondly, as has been noted, a heavy reliance on either a closed list or an open-ended approach to subject-matter determination has significant cons. Thus, while amending the copyright law, the drafters must ensure that copyright protection is not extended to subjects which cannot be feasibly identified and protected, such as copyrights based on olfactory, tactile, or taste.

Such a system should take the form of a general non-exhaustive definition of works accompanied by an inclusive list of subjects which are broadly worded, and a list of narrowly worded subject-matters which cannot be granted copyright protection. However, since such a system can only work as long as it constantly keeps up with the innovations in the free market, the parliamentary standing committee on human resource development[54] should make suggestions to include and exclude subject-matters in constant intervals.


*4th year BBA LLB (Hons.) students, Jindal Global Law School, O.P. Jindal Global University, Sonipat.

[1]For an analysis of EU Law on open-ended versus rigid interpretations of transformative works, see Julien  Cabay and Maxime Lambrecht, Remix Prohibited: How Rigid EU Copyright Laws Inhibit Creativity (2015) 10 JIPLP 5.

[2] Pamela Samuelson, Evolving Conceptions of Copyright Subject -Matter (2016) 78 U Pitt L Rev 17.

[3] The Copyright Act of Australia, 1968, § 32.

[4] The Copyright, Designs and Patents Act, 1988, § 1 and §§ 3-8.

[5]  The Copyright Act, 1957.

[6] Phillips v. Pembroke Real Estate Inc., 459 F 3d 128, 131(1st Cir 2006).

[7] Pamela (Note 2).

[8] Berne Convention for the Protection of Literary and Artistic Works, S Treaty Doc No. 99-27, 828 UNTS 221, Art. 2(1) (Berne Convention).

[9] French Intellectual Property Code, Art. L. 112-1; T. Aplin, “Subject-Matter” in E. Derclaye (Ed.), Research Handbook on the Future of EU Copyright Law (Edward Elgar, Cheltenham 2009) 70.

[10] The Copyright, Designs and Patents Act, 1988, § 1, §§ 3-8.

[11] Some authors have even tried to assert that the United Kingdom does not have a closed system of subject matter protection, See e.g. Dr Poorna Mysoor, Does UK Really Have a “Closed” List of Works Protected by Copyright?, (2019) 41 Eur. Int. Prop. R 474. (Arguing that the breadth of certain category definitions is broad enough to classify the UK as an open-ended jurisdiction.)

[12] (1989) 2 All ER 1056.

[13] The Copyright, Designs and Patents Act, 1988, § 3(2).

[14] Jason Haynes, Subject-Matter of Copyright Protection in the UK: A Road Map to Effectuating Statutory Reform, (2013) 39 (2) Commonw Law Bull 319.

[15] The Copyright, Designs and Patents Act, 1988, § 4(1).

[16] Merchandising Corpn. of America v. Harpbond Ltd., 1983 FSR 32; Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (3rd Edn.,  London 2004) 226.

[17] The Copyright Act (RSC, 1985, c. C-42), Art. 5(1).

[18] The Copyright Act (RSC, 1985, c. C-42), Art. 2  reads– every original literary, dramatic, musical and artistic work includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations, books, pamphlets and other writings, lectures, dramatic or dramatico-musical works, musical works, translations, illustrations, sketches and plastic works relative to geography, topography, architecture or science.

[19] Trinidad and Tobago, Copyright Act, Ch. 82:80, Section 5(2).

[20] Haynes (n 14).

[21] Sulamangalam R. Jayalakshmi v. Meta Musicals, 2000 SCC OnLine Mad 381.

[22] The Copyright Act, 1957, S. 13. While S. 13(a) protects original works, the two sub-sections extend copyright to derivative works.

[23] The Copyright Act, 1957, S. 2.

[24] V.K. Ahuja, Law Relating to Intellectual Property Rights, (3rd Edn., 2017).

[25] Star India (P) Ltd. v. Piyush Agarwal, 2012 SCC OnLine Del 5691.

[26] Avishek Chakraborty, Non-Conventional Copyright: Do New and Atypical Works Deserve Protection?   (2019) 8(2) CULJ 85-99.

[27] The Copyright Act, 1957, S. 16.

[28] 2007 SCC OnLine Del 759.

[29] Ibid.

[30] University of Oxford v. Rameshwari Photocopy Services, 2016 SCC OnLine Del 5128; Sungro Seeds Ltd. v. S.K. Tripathi, 2020 SCC OnLine Del 591.

[31] Upendra Baxi, Copyright Law and Justice in India, (1986) 28(4) JILI 497, 499.

[32] Fortune Films International v. Dev Anand, 1978 SCC OnLine Bom 156.

[33] Camlin (P) Ltd v. National Pencil Industries, 1985 SCC OnLine Del 378.

[34] Ibid.

[35]Agarwala Publishing House v. Board of High School and Intermediate Education, U.P., 1966 SCC OnLine All 124. (The definition of what constitutes a literary work is an inclusive one, and this category of work includes “all works that is expressed in the form of writing, despite it having literary merit or not”.); Daily Calender Supplying Bureau v. United Concern, 1964 SCC OnLine Mad 29. (The definition of what is included within an artistic work includes all works of artistic craftsmanship and therefore, copyright protection was extended to images of deities printed in calendars as part of artistic work).

[36] Andrew F. Christie, A Proposal for Simplifying United Kingdom Copyright Law, 2001 EIPR 26, 28.

[37] Ibid.

[38] Ibid.

[39] Enrico Bonadio & Nicola Lucchi, Non-Conventional Copyright – Do New and Atypical Works Deserve Protection? (Edward Elgar 2018).

[40] Creation Records Ltd. v. News Group Newspapers Ltd., 1997 EMLR 444 (In this case the Court refused to extend the category of a sculpture to a photograph of an assortment of objects and people. While the thrust of the Court’s opinion hinged on the lack of an intelligible pattern of assortment, several scholars have also argued that the Court’s hesitation also stemmed from the plaintiff’s argument that the humans present in the photograph were themselves part of the “sculpture”, Pamela Samuelson, Evolving Conceptions of Copyright Subject-Matter, (2016) 78 U. Pitt. L. Rev. 17).

[41] Dr Mysoor (n 11).

[42] Trinidad and Tobago, Copyright Act, Ch. 82:80, Section 5(2).

[43] Kecofa BV v. Lancôme Parfums et Beauté et Cie SNC, Supreme Court of the Netherlands (First Chamber), 16-6-2006.

[44] Willem Leppink and Michel Veltman, Netherlands Court Grants Copyright Protection to Perfume Scent, 1 J Intell Prop L & Prac 756 (2006).

[45] Ibid.

[46] National Commission on New Technological Uses of Copyrighted Works, Final Report 26-27 (1978), at 26.

[47] R. Anthony Reese, What Should Copyright Protect? in Rebecca Giblin and Kimberlee Weatherall (Eds; Canberra), What if we could Reimagine Copyright? (Australian National University Press, 2017).

[48] Ibid.

[49] Dr Mysoor (n 11).

[50] Ibid.

[51] R. Anthony Reese, Copyrightable Subject-Matter in the “Next Great Copyright Act,” 29 Berkeley Tech. L.J. 1489 (2014).

[52] 17 U.S.C. § 102(a) (2012), [“Copyright protection subsists … in original works of authorship … Works of authorship include the following categories.” (emphasis supplied)].

[53] Reese (Note 51).

[54] This Committee has previously submitted its suggestions on reform of the Copyright Act in its “Two Hundred Twenty-Seventh Report on the Copyright (Amendment) Bill”, Parliamentary Standing Committee on Human Resource Development, 2010 Rajya Sabha 227, November 1932.

Case BriefsHigh Courts

Bombay High Court: G.S. Patel, J.,  while addressing a matter wherein the offence of defamation has been alleged, expressed:

Simply using another’s image, and most especially a private image, without consent is prima facie impermissible, unlawful and entirely illegal. In a given case, it may also be defamatory, depending on the type of use.

Instant suit was with regard to an action for damages in defamation and for a permanent injunction.

Plaintiff is a model and an actor.

Dispute that needs to be addressed is with regard to the 1st and 2nd defendants utterly illicit use of a still image of the plaintiff in their 2020 Telugu film entitled ‘V’. The said film was is available on Amazon Prime.

Plaintiff, as a part of her professional work, commissioned a photographer to prepare a photo portfolio, 5 years ago. Photographer had shared the images with the plaintiff via a Google link or on Instagram, after which the plaintiff uploaded at least part of this photo portfolio to her Instagram account.

The grievance is that, a photograph from the above mentioned privately commissioned portfolio has been used in that portion of 1st and 2nd Defendants’ film where there is a reference to a female escort or a commercial sex worker. Further, it has been added that, What is depicted in the film is a message on a mobile screen with an image; and the image used is one of those from the Plaintiff’s portfolio, apparently lifted from her Instagram account.

Counsel for the plaintiff has hence submitted that the plaintiff’s image has been used unauthorizedly to depict her in the motion picture as an escort or commercial sex worker.

Hence the plaintiff submitted that all of the above amounts to defamation.

High Court on perusal of the above prima facie believed the above averments of plaintiff’s counsel to be correct, and added that:

“…I do not believe there is any other way of looking at it.” 

Adding to the above, Bench stated that any right-thinking motion picture producer would have insisted on seeing an approval or consent by the model or person who is featured or to be featured.

“…it is not possible to use the image of any person for a commercial purpose without express written consent. If images are to be used without such express consent, they must be covered by some sort of legally enforceable and tenable licensing regime, whether with or without royalty.”

Bench directed defendant 3 to take down the telecast of the film in all versions, irrespective of language and sub-titles, until such time as the 1st and 2nd defendants have completely deleted all images of the Plaintiff from their work.

To merely pixelate or blur the images, won’t be acceptable. The entire sequence which has the plaintiff’s image is to be removed immediately.

Court added, If the 1st and 2nd Defendants wish to replace the deleted segments, they are free to do so but without using any of the Plaintiff’s images in any shape, fashion or form without her express written consent.

Additionally, the Bench added in its list of instructions, the 1st and 2nd Defendants are restrained from releasing their film on any media platform or through any medium or in any version until the deletions that have been indicated above are effected.

Correspondingly, the 3rd Defendant is not to release any re-edited version of the film without a specific order of this Court following the deletion of the offending portion. The 1st and 2nd Defendants will have to show Mr Kirpekar and his client the altered portion before the Court will permit the 3rd Defendant to re-release this film.

Matter to be listed on 08-03-2021. [Sakshi Malik v. Venkateshwara Creations (P) Ltd.,  2021 SCC OnLine Bom 352, decided on 02-03-2021]


Advocates who appeared for the matter:

Mr Alankar Kirpekar, with Saveena T Bedi, i/b Lawhive Associates, for the Plaintiff

Mr Akash Menon, with Bency Ramakrishnan, i/b Akash Menon, for Defendants Nosf 1 and 2f

Mr Thomas George, with Nikhil Sonker, i/b Saikrishna & Associates, for Defendant Nof 3f

Case BriefsSupreme Court

Supreme Court: The 3-judge bench of RF Nariman*, Hemant Gupta and BR Gavai, JJ has held that the amounts paid by resident Indian end-users/distributors to non-resident computer software manufacturers/suppliers, as consideration for the resale/use of the computer software through EULAs/distribution agreements, is not the payment of royalty for the use of copyright in the computer software, and that the same does not give rise to any income taxable in India.

Background

The Court was hearing an appeal arising from the judgment of the High Court of Karnataka dated 15.10.2011 reported as CIT v. Samsung Electronics Co. Ltd., (2012) 345 ITR 494, wherein it was held that the amounts paid by the concerned persons resident in India to non-resident, foreign software suppliers, amounted to royalty and as this was so, the same constituted taxable income deemed to accrue in India under section 9(1)(vi) of the Income Tax Act, 1961, thereby making it incumbent upon all such persons to deduct tax at source and pay such tax deductible at source [TDS] under section 195 of the Income Tax Act.

The Court grouped the appeals before it into four categories:

i) The first category dealt with cases in which computer software is purchased directly by an end-user, resident in India, from a foreign, non-resident supplier or manufacturer

ii) The second category of cases dealt with resident Indian companies that act as distributors or resellers, by purchasing computer software from foreign, non-resident suppliers or manufacturers and then reselling the same to resident Indian end-users.

iii) The third category dealt with cases wherein the distributor happens to be a foreign, non-resident vendor, who, after purchasing software from a foreign, non-resident seller, resells the same to resident Indian distributors or end-users.

iv) The fourth category dealt with cases wherein computer software is affixed onto hardware and is sold as an integrated unit/equipment by foreign, non-resident suppliers to resident Indian distributors or end-users

Scheme of Income Tax Act vis-à-vis applicability of Double Taxation Avoidance Agreements (DTAA)

The scheme of the Income Tax Act, in relation to the questions before the Court, is that for income to be taxed under the Income Tax Act, residence in India, as defined by section 6, is necessary in most cases.

Under section 5(2) of the Income Tax Act, the total income of a person who is a non-resident, includes all income from whatever source derived, which accrues or arises or is deemed to accrue or arise to such person in India during such year. This, however, is subject to the provisions of the Income Tax Act. Certain income is deemed to arise or accrue in India, under section 9 of the Income Tax Act, notwithstanding the fact that such income may accrue or arise to a non-resident outside India. One such income is income by way of royalty, which, under section 9(1)(vi) of the Income Tax Act, means the transfer of all or any rights, including the granting of a licence, in respect of any copyright in a literary work.

That such transaction may be governed by a DTAA is then recognized by section 5(2) read with section 90 of the Income Tax Act, making it clear that the Central Government may enter into any such agreement with the government of another country so as to grant relief in respect of income tax chargeable under the Income Tax Act or under any corresponding law in force in that foreign country, or for the avoidance of double taxation of income under the Income Tax Act and under the corresponding law in force in that country.

“What is of importance is that once a DTAA applies, the provisions of the Income Tax Act can only apply to the extent that they are more beneficial to the assessee and not otherwise.”

Further, by explanation 4 to section 90 of the Income Tax Act, it has been clarified by the Parliament that where any term is defined in a DTAA, the definition contained in the DTAA is to be looked at. It is only where there is no such definition that the definition in the Income Tax Act can then be applied.

The machinery provision contained in section 195 of the Income Tax Act is inextricably linked with the charging provision contained in section 9 read with section 4 of the Income Tax Act, as a result of which, a person resident in India, responsible for paying a sum of money, “chargeable under the provisions of [the] Act”, to a non-resident, shall at the time of credit of such amount to the account of the payee in any mode, deduct tax at source at the rate in force which, under section 2(37A)(iii) of the Income Tax Act, is the rate in force prescribed by the DTAA. Importantly, such deduction is only to be made if the non-resident is liable to pay tax under the charging provision contained in section 9 read with section 4 of the Income Tax Act, read with the DTAA.

When is making of copies or adaptation of a computer programme not copyright infringement?

The making of copies or adaptation of a computer programme in order to utilise the said computer programme for the purpose for which it was supplied, or to make up back-up copies as a temporary protection against loss, destruction or damage so as to be able to utilise the computer programme for the purpose for which it was supplied, does not constitute an act of infringement of copyright 54 under section 52(1)(aa) of the Copyright Act. What is referred to in section 52(1)(aa) of the Copyright Act would not amount to reproduction so as to amount to an infringement of copyright.

Section 52(1)(ad) is independent of section 52(1)(aa) of the Copyright Act, and states that the making of copies of a computer programme from a personally legally obtained copy for non-commercial personal use would not amount to an infringement of copyright. However, it is not possible to deduce from this that if personally legally obtained copies of a computer programme are to be exploited for commercial use, it would necessarily amount to an infringement of copyright.

“Section 52(1)(ad) of the Copyright Act cannot be read to negate the effect of section 52(1)(aa), since it deals with a subject matter that is separate and distinct from that contained in section 52(1)(aa) of the Copyright Act.”

Definition of Royalty in the DTAAs vis-à-vis the Income Tax Act

Under Article 12 of the India-Singapore DTAA, the term “royalties” uses the expression “means”, thereby making it exhaustive and it refers to payments of any kind that are received as a consideration for the use of or the right to use any copyright in a literary work.

As opposed to this, the definition contained in explanation 2 to section 9(1)(vi) of the Income Tax Act, is wider in at least three respects:

i. It speaks of “consideration”, but also includes a lump-sum consideration which would not amount to income of the recipient chargeable under the head “capital gains”;

ii. When it speaks of the transfer of “all or any rights”, it expressly includes the granting of a licence in respect thereof; and

iii. It states that such transfer must be “in respect of” any copyright of any literary work.

However, even where such transfer is “in respect of” copyright, the transfer of all or any rights in relation to copyright is a sine qua non under explanation 2 to section 9(1)(vi) of the Income Tax Act. In short, there must be transfer by way of licence or otherwise, of all or any of the rights mentioned in section 14(b) read with section 14(a) of the Copyright Act.

The transfer of “all or any rights (including the granting of a licence) in respect of any copyright”, in the context of computer software, is referable to sections 14(a), 14(b) and 30 of the Copyright Act. The expression “in respect of” is equivalent to “in” or “attributable to”.

“Thus, explanation 2(v) to section 9(1)(vi) of the Income Tax Act, when it speaks of “all of any rights…in respect of copyright” is certainly more expansive than the DTAA provision, which speaks of the “use of, or the right to use” any copyright.”

However, when it comes to the expression “use of, or the right to use”, the same position would obtain under explanation 2(v) of section 9(1)(vi) of the Income Tax Act, inasmuch as, there must, under the licence granted or sale made, be a transfer of any of the rights contained in sections 14(a) or 14(b) of the Copyright Act, for explanation 2(v) to apply. To this extent, there will be no difference in the position between the definition of “royalties” in the DTAAs and the definition of “royalty” in explanation 2(v) of section 9(1)(vi) of the Income Tax Act.

Conclusion

The Court held that the “person” mentioned in section 195 of the Income Tax Act cannot be expected to do the impossible, namely, to apply the expanded definition of “royalty” inserted by explanation 4 to section 9(1)(vi) of the Income Tax Act, for the assessment years in question, at a time when such explanation was not actually and factually in the statute.

“… persons are not obligated to do the impossible, i.e., to apply a provision of a statute when it was not actually and factually on the statute book.”

Hence, the distribution of copyrighted computer software, would not constitute the grant of an interest in copyright under section 14(b)(ii) of the Copyright Act, thus necessitating the deduction of tax at source under section 195 of the Income Tax Act.

The Court highlighted that the effect of section 90(2) of the Income Tax Act, read with explanation 4 thereof, is to treat the DTAA provisions as the law that must be followed by Indian courts, notwithstanding what may be contained in the Income Tax Act to the contrary, unless more beneficial to the assessee. Hence, it was held that,

“Given the definition of royalties contained in Article 12 of the DTAAs, there is no obligation on the persons mentioned in section 195 of the Income Tax Act to deduct tax at source, as the distribution agreements/EULAs in the facts of these cases do not create any interest or right in such distributors/end-users, which would amount to the use of or right to use any copyright. The provisions contained in the Income Tax Act (section 9(1)(vi), along with explanations 2 and 4 thereof), which deal with royalty, not being more beneficial to the assessees, have no application in the facts of these cases.”

[Engineering Analysis Centre of Excellence Private Limited v. Commissioner of Income Tax, 2021 SCC OnLine SC 159, decided on 02.03.2021]


*Judgment by: Justice RF Nariman

Know Thy Judge| Justice Rohinton F. Nariman

Appearances before the Court by:

For appellants: Senior Advocates Arvind Datar, Percy Pardiwala, S. Ganesh, Ajay Vohra, Preetesh Kapur and Advocates Sachit Jolly, Kunal Verma

For Revenue: Additional Solicitor General Balbir Singh

Case BriefsHigh Courts

Delhi High Court: Rajiv Shakdher, J., issued the summons in the suit filed by Elsevier Ltd. against Alexandra Elbakyan and others alleging infringement of Elsevier’s copyright in several medical journals, articles, etc.

The instant application was filed by the plaintiffs under Section 151 of the Code of Civil Procedure, 1908 seeking exemption not only from filing original and certified copies of certain documents but also from filing legible copies of the dim annexures.

Senior Counsel, Amit Sibal who appeared along with Saikrishna Rajagopal, Advocate said that the plaintiffs who have copyright in several medical journals, articles, etc., have been constrained to approach this Court on account of defendant 1 and defendant 2 infringing their copyright.

Given the stand taken by Mr Sibal appearing for the plaintiff, Mr Jain representing the defendant said the no new articles or publication in which the plaintiff has copyright will be uploaded or made available by Alexandra Elbakyan.

Matter to be listed on 06-01-2021.[Elsevier Ltd. v. Alexandra Elbakyan, 2020 SCC OnLine Del 1677, decided on 24-12-2020]

Case Briefs

Calcutta High Court: A Division Bench of Harish Tandon and Hiranmay Bhattacharyya JJ., while allowing the present appeal, discusses upon the essentials of granting an injunction order in light of the settled precedents.

Background

The defendant in a suit for infringement of copyright has preferred the instant first miscellaneous appeal challenging the order dated 20-08-2020, passed by the District Judge at Alipore in Title Suit No. 6 of 2020. The facts leading to the present appeal are categorically mentioned hereunder;

  1. The author who is the appellant herein entered into a publishing and copyright agreement with the publisher being the respondent on 24-11-2017.
  2. The respondent filed a suit alleging illegal termination of the aforesaid agreement by the appellant through an e-mail dated 01-06-2020. It was further alleged that the appellant herein through her advocate’s letter dated 20-07-2020, threatened to institute legal proceedings against the respondent before the appropriate forum.
  3. The respondent further claims that the appellant herein threatened to publish the books through other publishers which compelled the respondent to pray for an order of injunction restraining the appellant from giving any effect to the e-mail dated 01-06-2020 and the letter dated 20-06-2020 by filing an application under Order 39 Rule 1 and 2 read with Section 151 of the Code of Civil Procedure.
  4. The Trial Judge, by the order impugned, restrained the defendant/appellant from taking any steps pursuant to the letter dated 01-06-2020 as well as the letter dated 20-07-2020 till 25-09-2020.
  5. Being aggrieved against the aforesaid order, the instant appeal has been preferred.

 Contentions

Saptansu Basu, Senior Advocate appearing for the appellant assails the impugned order on the following grounds. Firstly, the principles laid down by Supreme Court in the case of Shiv Kumar Chadha v. Municipal Corporation of Delhi, (1993) 3 SCC 161, has not been followed by the court below while passing the ex-parte order of injunction. Secondly, no order of injunction can be passed restraining a person from instituting a proceeding before a court of law. Lastly, the respondent may, at best, be entitled to damages in the event the court finds that the notice period as mentioned in the termination letter falls short of the required notice period as per the agreement in question. Reliance was further placed on Indian Oil Corporation Ltd. v. Amritsar Gas Service, (1991) 1 SCC 533 in support of such submission.

Aritra Basu, Advocate for the respondent submitted that the agreement dated 24-11- 2017 contains a termination clause which provides that 90 days notice is mandatory before terminating the agreement by the appellant herein. It was further submitted that since the termination letter has been issued by the appellant, in violation of the said agreement, the same cannot be given effect to and the court below was perfectly justified in passing an order of injunction. Furthermore, Section 42 of the Specific Relief Act, 1963, empowers the court to grant an injunction directing the appellant to perform the negative agreement by issuing a 90 clear days notice for termination of the agreement in the instant case even if the court is unable to compel the specific performance of the agreement. Reliance was placed on the judgment of KSL Industries v. National Textiles Corporation Limited, OMP 581 of 2010 decided on 14-08-2012 and Madras High Court judgment in Base International Holdings v. Pallava Hotels Corpn. Ltd., 1998 SCC OnLine Mad 614, so to emphasize that an order of injunction can still be passed in case the notice period mentioned in the termination notice is in violation of the termination clause mentioned in the agreement.

 Observation

The Court, identifying the crux of the matter, said that the agreement shall remain in existence, unless terminated by a specific notice of termination. The bench further remarked that, since the contract is determinable in nature therefore it cannot be specifically enforced in view of Section 14(1) of the Specific Relief Act, 1963.

 “Section 41 of the Specific Relief Act provides that an injunction cannot be granted to prevent the breach of a contract, the performance of which would not be specifically enforced. Since we are of the view that the contract in question is one, the performance of which could not be specifically enforced, the learned judge of the court below erred in law by passing an order of injunction in the instant case which would in effect amount to directing specific performance of the said agreement. Furthermore, no injunction can be passed restraining a party from instituting any proceeding in a court of law. The resultant effect of the order of injunction passed by the learned court below is a restraint upon the appellant from initiating any legal proceedings before a court of law which is not permissible in law.”

Rejecting the submission of the respondent, the Court said, “Section 42 of the Specific Relief Act operates in a totally different field and cannot be applied to the facts of the instant case. In the event the court at the time of trial is of the view that the respondent has suffered any injury due to short notice period, the respondent may be entitled to reliefs in accordance with law but that cannot be a ground for passing an order of injunction.”

With respect to the cases referred by the counsel for the Appellant, the Court agreed that the principles laid down by the Supreme Court in the case of Shiv Kumar Chadha has not been followed as the Trial Court judge did not record reasons for its opinion while passing the order of injunction. Further, it was observed that the ratio of the other two cases, namely, KSL and Base International cannot be applied in the present factual matrix as the circumstances essentially vary.

 Decision

Allowing the present appeal, the Court held that the Trial Judge below erred in law by passing an order of injunction.[Debarati Mukhopadhyay v. Book Farm, FMAT 369 of 2020 with IA No. CAN 1 of 2020 with IA No. CAN 2 of 2020]


Sakshi Shukla, Editorial Assistant ha sput this story together

Case BriefsHigh Courts

Delhi High Court: Mukta Gupta, J., directed “Telegram” to take down the channels that are infringing plaintiff’s rights and granted ad-interim injunction to Jagran Prakashan Limited.

Plaintiffs’ claim in the present suit is that its digital e-paper is available on www.jagran.com. Readers of the newspaper have the option to either subscribe the physical/print newspaper or they can log on to the plaintiff’s website for the purpose of reading the said daily newspaper.

Plaintiff’s counsel, Jeevesh Mehta submitted that taking into consideration the present circumstances of spread of COVID-19 pandemic, plaintiff is not charging any subscription fee from its readers in India. Though fee of 1 dollar is being charged in other countries.

Further, plaintiff claims to be the exclusive owner of the trademark Dainik Jagran.

Grievance as placed by the plaintiff is that, defendant 1 (Telegram) a cloud based instant messaging and voice over IP service, allows its users to create channels while not disclosing the identity of these users and these users have created channels on which plaintiffs e-paper are being uploaded in PDF format on daily basis.

With the creation of these channels, users can now download the previous editions of e-paper too which otherwise would not have been available, if not subscribed.

Plaintiff alleged that defendant 1 was indulging into reproducing, adopting, distributing, transmitting and disseminating the e-newspapers of the plaintiff and thereby not only causing the plaintiff serious financial loss but also violating the plaintiff’s trademark rights as well as copyrights in the e-newspaper. 

Defendant 1 is required to conduct due diligence and in terms of Rule 3 sub-rule 4 of the Information Technology (Intermediaries Guidelines) Rules, 2011 on being informed about the misuse, the defendant No.1 is required to pull down the said channels within 36 hours.

Bench on perusal of the above stated that, balance of convenience lies in favour of the plaintiff.

Consequently, an ad-interim injunction is granted in favour of plaintiff and against defendant’s 1 and 2. Further, defendant 1 is also directed to disclose the basic subscriber information/identity of the users/owners of the channels. 

Thus, defendant 1 is directed to take down/block the telegram channels or any other similar channels infringing rights of plaintiff with 48 hours of receipt of this order. [Jagran Prakashan Limited v. Telegram FZ LLC,  2020 SCC OnLine Del 615 , decided on 29-05-2020]

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]