Category Archives: Copyright Infringement

Wanna play Music commercially? Pay the Royalities first!

This may sound difficult given that commercial places in India have taken right to play the music as their inherent one. Situation may change soon after two recent judgements of Hon’ble Delhi HC. First one was delivered by JUSTICE S. MURALIDHAR on August 12, 2016 and second one was delivered by JUSTICE V. KAMESWAR RAO on September 30, 2016. Interestingly in both the cases, Indian Singers’ Rights Association (ISRA) was involved as plaintiff. In both the decisions, applicant court gave decision in favour of plaintiff and asked defendant to pay royalties to the plaintiff.

Basic information on ISRA, laws relating performance rights have been discussed below:

ISRA is the first Copyright Society to be registered by the Central Government after the 2012 amendments to the Copyright Act. According to its official website, M/s. Lata Mangeshkar, Usha Mangeshkar, Suresh Wadkar, Gurdaas Mann, Pankaj Udhas, Alka Yagnik, Kumar Sanu, Abhijeet Bhattacharya, Sonu Nigam & Sanjay Tandon with support from M/s. Asha Bhosle, Shaan, Kunal Ganjawala, Sunidhi Chauhan, Mahalaxmi Iyer and others formed the ISRA (Indian Singers’ Rights Association). ISRA was incorporated as a Company Limited by Guarantee under the Companies Act, 1956 on 3rd May, 2013. Thereafter, ISRA filed for Registration as a Copyright Society as per Section 33 of the Copyright Act and received its Certificate of Registration from the Central Government on 14th June, 2013. ISRA is independent of The Indian Performing Right Society (IPRS) and PPL (Phonographic Performance Ltd.). IPRS looks after the interests & Royalties of Composers/Lyricists. PPL looks after the interests & Royalties of Music Labels. ISRA looks after the interests & Royalties of Singers. The Copyright (amendment) Act, 2012 came into effect from 21st June, 2012. The amendments were historic in a way that they amended the provision regarding “Performers” to protect their interests in line with India’s international commitments. “Performer’s Right” in India after the amendment is in harmony with Article 14 of the TRIPS Agreement as also is compatible with Articles 5 to 10 of the WIPO Performances and Phonograms Treaty (WPPT). The Performers’ Rights subsist for 50 years from the beginning of the calendar year next following the year in which the performance is made. Section 38A and section 38B respectively provide for economic rights and moral rights over the performance.

According to section 38 A, the Performer’s Right are an exclusive right to do or authorize the doing of any of the following acts in respect of the performance or any substantial part thereof:

1) to make a sound recording or a visual recording of the performance;

2) to reproduce the performance in any material form including the storing of it in any medium by electronic or any other means;

3) to issue copies of the performance to the public not being copies already in circulation;

4) to communicate the performance to the public;

5) to sell or give the performance on commercial rental or offer for sale or for commercial rental any copy of the recording and;

6) to broadcast or communicate the performance to the public except where the performance is already a broadcast.

The “Performers Right” runs parallel to Rights of Composers/Songwriters, Producers & Music Companies. It’s interesting to note that Performer can assign his copyright but cannot assign or waive the right to receive royalties for the utilization of such performance in any form other than for the communication to the public of the performance along with the film in a cinema hall. The performer can assign the right to receive royalties to either his Legal Heir or a Copyright Society for collection and distribution. This cannot be even circumvented by contract to the contrary.

ISRA soon after its creation decided the amount of royalty that has to be paid to the performer. Different Tarrif schemes such as applicable to radio broadcasting, broadcasting over satellite/ TV channel can be accessed at http://isracopyright.com/tariff_scheme.php .

After these judgements, rights of singers are clearly established and commercial establishments will have to change long continued practices of playing the music without paying royalties to singers.

Kudos ISRA.

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Interplay of section 51 and 52 of the Copyright Act, 1962: Delhi High Court judgement

This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon’ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962. This case tries to draw the line between the rights of the author, publishers of the work and competing rights of society.

The case was between THE CHANCELLOR, MASTERS & SCHOLARS OF THE UNIVERSITY OF OXFORD & ORS. Vs. RAMESHWARI PHOTOCOPY SERVICES & ANR. In this case, five plaintiffs THE OXFORD UNIVERSITY PRESS, CAMBRIDGE UNIVERSITY PRESS U.K., CAMBRIDGE UNIVERSITY PRESS INDIA PVT LTD., TAYLOR & FRANCIS GROUP U.K., and TAYLOR & FRANCIS BOOKS INDIA PVT. LTD. filed a suit against RAMESHWARI PHOTOCOPY SERVICE and UNIVERSITY OF DELHI for the relief of permanent injunction from infringing the copyright of the plaintiffs in their publications by photocopying, reproduction and distribution of copies of plaintiffs‘ publications on a large scale and circulating the same and by sale of unauthorised compilations of substantial extracts from the plaintiffs‘ publications by compiling them into course packs / anthologies for sale. Amongst other arguments, defendant replied with claiming that their activities fall under section 52 of the Copyright Act, 1962 and hence do not constitute infringement.

The article does not intend to discuss all the arguments on the behalf of the plaintiff, defendant and views of the judges on the same. Instead, this article intends to discuss effect of the judgment on the interplay between section 51 which declares certain acts as infringement of copyright and section 52 of the act which allows certain acts to be done without falling within the purview of infringement. Article also intends to discuss the scope of educational use allowed under copyright act in light of this landmark judgement.

In September, 2012, University of Delhi (DU) was ordered by the court to examine the proposal to obtain a license from Reprographic Rights Organisation such as IRRO for preparing course packs was passed. By the same order, court also ordered defendant No.1 to maintain proper accounts of sales and to file a fortnightly statement before the court. In reply, DU submitted that question of obtaining licenses arises only if their activity causes infringement of the plaintiffs’ right. Court accepted the contention of the DU and decided on whether activities of defendant fall under infringement.

Vide order dated 17th October, 2012, the defendant No.1 was restrained from making, selling course packs / re-producing the plaintiffs‘ publications or substantial portions thereof by compiling the same either in a book form or in a course pack, till the final disposal of the application for interim relief.

Later, in order to decide whether activities of defendant fall under section 51 or not and if so did they fall under section 52 or not, court observed as below:

Did the activities of defendant fall under section 51?

The court concluded that activities of defendant fall under section 51 and observed as below:

The defendant No.2 University thus, though entitled to issue the books, published by the plaintiffs and purchased by it and kept by the defendant No.2 University in its library, to whosoever is entitled to issuance of the said books from the library, per Section 14(a)(i) and Section 51(a)(i) would not be entitled to make photocopies of substantial part of the said book for distribution to the students and if does the same, would be committing infringement of the copyright therein.”.

Did the fall under section 52?

Court had to decide whether reproduction of material fall under section 52 (i) and while doing that court had to decide whether activities allowed so as not to constitute infringement also cover institution and more than one pupil and whether interpretation of term ‘instruction’ should be restricted to lecture or not. Court held that institution providing instructions to more than one pupil fall under activities allowed under section 52. Moreover court also held that instruction cannot be limited to the term lecture in classroom.

Can section 52 be interpreted as independent of the section 51 or it is proviso or exception to section 51?

Once the acts listed in Section 52 are declared as not constituting infringement of copyright and the reproduction of work resulting from such acts as not constituting infringing copy, it follows that the exclusive right to do the acts mentioned in Section 52 has not been included by the legislature in the definition in Section 14; of copyright, once that is so, the doing of such act cannot be infringement under Section 51 and the question of taking the same out by way of proviso or exception does not arise.

Are defendants liable for infringement?

Section 51 prescribes that copyright is infringed inter alia when any person does anything exclusive right to do which has been conferred by the Act on the owner of copyright. It follows, if there is no exclusive right, there is no infringement. Section 52 lists the acts which do not constitute infringement. Thus, even if exclusive right to do something constitutes copyright, if it finds mention in Section 52, doing thereof will still not constitute infringement and the outcome thereof will not be infringing copy within the meaning of Section 2(m).

Ultimately, court held defendants not liable of infringement.

Court observed that if students were not having access to course packs provided by the defendants, it would not have resulted students buying books, rather it would have resulted in students sitting in libraries taking notes by hand. That would have been injustice in the age of modern technologies. Court also held that declaring acts of defendants as infringement would result in such interpretation of law that results in regression of the evolvement of the human being for the better.

However this judgement did not deal with the cover-to-cover copying of the books as that was not a fact in issue. We will have to wait till we get verdict dealing with such issue.

Further, as consequences of this judgement, with free licensing of photocopying the books, publishers are more likely to invest less in Indian markets. However, some IP experts are also of the view that there would not be any such effect. Let time reflect the real effects.           

About the Author: Ms. Divya Choubey and can be reached at: swapnil@khuranaandkhurana.com

Movie Titles and their Protection in India

Ms. Shreya Shrivastava, an intern at Khurana & Khurana, Advocates and IP Attorneys looks into the aspect of protection of Movie titles in India along with the parameters to avail the same.

What’s in a name? That which we call a rose by any other name would smell as sweet.” Turns out this quote by William Shakespeare does not hold true for the Producers of motion pictures. A name is an identity for a person, product, company, books or movies.

When it comes to choosing a title for a movie, film makers are very particular about the uniqueness and suitability. A title that is catchy and distinctive finds a place in the minds of the audience instantly and thus lots of money and efforts are put into achieving the right one.

The conventional practice followed by the film producers is to get the plot or titles registered with the film industry associations like Indian Motion Picture Producers’ Association;Film Writers’ Association; Television Producers’ Guild of India; Association of Motion Pictures and Television Program Producers and Film and Western India Film Producers Association. These associations are working consistently to endorse and encourage the production of motion pictures and to protect the commercial interest of films produced in India. Before registering a title, the association usually verifies the registration of same or deceptively similar title with other associations. However such registration has no effect on any legal proceedings, it only establishes precedence in the adoption title.

Under Indian Copyright Act, protection is conferred on literary works, dramatic works, musical works, artistic works, cinematograph films and sound recording but not to titles alone. Thus copying of a title alone and not the plot of the movie, the characters, songs etc does not fall under the ambit of copyright protection. It is common, rather it is imperative, to give title to literary or entertainment works. The literary work produced by the author or the work of entertainment produced by a producer needs a name. It is only then that such work would be identified. The term ‘literary title’ is used to encompass the titles of books, periodicals, newspapers, plays, motion pictures, television series, songs, phonograph records, cartoon features and the like.[1]

Movie titles in India may be registered under Class 41 of the Trademarks Act 1999. Movie titles can be bifurcated into two heads, that is, titles of series of movies, like for instance ‘Munna bhai MBBS’ and ‘Lage raho munnabhai’ and title of a single movie. In case of a single movie title, it must be established that the title has acquired secondary meaning amongst the public at large. The test of secondary meaning for literary titles is basically to determine whether in the minds of a significant number of consumers, the title in question is allied with a single source of the literary work.

In Kanungo Media (P) Ltd. v. Rgv Film Factory And Ors.[2] Kanungo media had produced a Bengali documentary movie titled Nisshabd, which had won numerous awards in various significant film festivals but was not released commercially. The plaintiff challenged the use of their highly acclaimed film title Nisshabd by the defendant for its upcoming Bollywood movie. The Court held that while the title of a literary work could be protected under the trademark law, in order to prove likelihood of confusion, it would be vital to establish consumer recognition and secondary meaning. The Court denied the relief of injunction based on the fact that the plaintiff’s film has not acquired secondary meaning. Also plaintiff approached the court very late after huge expenses had been made by defendant in advertising, promoting the movie and other marketing strategies and thus there was delay in filing the suit.

In Biswaroop Roy Choudhary v. Karan Johar[3] , Producer Biswaroop Roy filed a suit in the High Court seeking permanent injunction to restrain Karan Johar from using the title “Kabhi Alvida Naa Kehna”. The title had been filed by Karan Johar with the Association of Motion Pictures and TV Program Producers and the Film and Television Producers Guild of India also. The court dismissed the petition on the grounds that where words or phrases in common parlance are sought to be used with exclusivity, the Court should take care to determine which of the parties has ended its journey or traversed appreciably longer way in the use of such words as a trademark or as a title.[4]

In the case of Warner Bros. Entertainment Inc. and Anr v. Harinder Kohli and Ors.[5], the plaintiffs of the registered Trademark ‘HARRY POTTER’ alleged infringement of Trademark and sought a permanent injunction from the use of the title ‘Hari Puttar’, which was registered with Indian Motion Picture Producers’ Association and the Guild and was ready for commercial release. The Court dismissed the case due to the fact that the Harry Potter films meet the entertainment needs of an exclusive audience who can distinguish between films based on a Harry Potter book and a film which is a Punjabi comedy. Confusion of Hari Puttar with the plaintiff’s popular trademark Harry Potter was unlikely and also on grounds of delay.

It is thus clear from the above case decisions of the court that by mere registering a movie title either with any of the independent trade associations or as a trademark with the Registry may not be enough of the protection in title rights. Even though registering it is advisable but in order to establish one’s right over the title it is imperative that consumer recognition and secondary meaning is adduced to it. In order to do that, one has to actually use the trademark. Even if the work has not been released, a sufficient amount of pre-release publicity of the title may cause a title to acquire recognition sufficient for protection. Relevant evidence from which secondary meaning for a literary title may be inferred as a question of fact include: (1) the length and continuity of use; (2) the extent of advertising and promotion and the amount of money spent; (3) the sales figures on purchases or admissions and the number of people who bought or viewed plaintiff’s work; and (4) the closeness of the geographical and product markets of plaintiff and defendant.[6] Also, delayed approach to the court to enforce one’s right in the titles can also be of loss to the plaintiff.

Any cinematographic work is identified by its title for decades. People conceptualize the idea behind the work by associating it with the title and hence it is becoming a perquisite to register it in order to protect and preserve the commercial interest in the film. The registration not only provides exclusive right over the title but also restrains the unauthorized use or adoption by another.

[1] McCarthy on Trademarks and Unfair Competition, Third Edition (1995) Vol. I

[2] 138 (2007) DLT 312

[3] 131 (2006) DLT 458, 2006 (33) PTC 381 Del

[4] Supra

[5] 2008(38)PTC185(Del)

[6] Kanungo Media (P) Ltd. vs Rgv Film Factory And Ors. 138 (2007) DLT 312

Trademark/ Copyright and Patents Suits/ Civil Proceedings: Why Non-uniformity in Jurisdictions Available to Plaintiffs?

Section 62 of the Copyright Act, 1957, Section 134 of the Trademark Act, 1999, Section 104 of the Patents Act, 1970 and section 20 of Code of Civil Procedure (CPC), 1908 govern the applicable jurisdiction to file suits/ civil proceedings in case of Copyright, Trademark and Patent disputes.

These sections have been reproduced below:

For Copyright:

Section 62 of the Copyright Act, 1957:  

Jurisdiction of court over matters arising under this Chapter.—

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

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

P.S. – (Emphasis added)

For Trademark:

Section 134 of the Trademark Act, 1999:

Suit for infringement, etc., to be instituted before District Court.—

(1) No suit—

(a) for the infringement of a registered trade mark; or

(b) relating to any right in a registered trade mark; or

(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

(2) For the purpose of clauses (a) and (b) of sub-section (1), a “District Court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation —For the purposes of sub-section (2), “person” includes the registered proprietor and the registered user.

P.S. – (Emphasis added)

For Patent:

Section 104 of the Patents Act, 1970:

No suit for a declaration under section 105 or for any relief under section 106 or for infringement of a patent shall be instituted in any court inferior to a district court having jurisdiction to try the suit: Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter-claim, shall be transferred to the High Court for decision.

For Copyright, Trademark and Patent:

Section 20 of CPC:

Other suits to be instituted where defendants reside or cause of action arises.- Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction—

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

(b) any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or

(c) the cause of action, wholly or in part, arises.

Explanation: A corporation shall be deemed to carry on business at its sole or principal office in India or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place.

Analysis:

Section 20 of CPC provide for filing of suit at the court within local limits of which cause of action arises wholly or in part or at the court within local limits of which defendant resides, or carries on business, or personally works for gain. In the absence of any other specific section of the law currently in force, plaintiff cannot choose to file suit at the court within local limits of which he resides, or carries on business, or personally works for gain. Fortunately in case of Trademark and Copyright, section 134 of the Trademark Act, 1999 and section 62 of the Copyright Act, 1957 respectively provide for filing of suit also at the court within local limits of which plaintiff resides, or carries on business, or personally works for gain. Unfortunately Section 104 of the Patents Act, 1970 for patents does not provide such convenience. Section 104 of the Patents Act, 1970 only provides that infringement suits can be instituted at any court not inferior to a district court. As section 104 of the Patents Act, 1970 does not provide the details of the territorial jurisdiction of district/ high court where suits for patent disputes are to be filed, jurisdiction is to be decided in accordance with section 20 of CPC.

Reader is advised to read article written by IIPRD on the inclusive nature of section 62 of the Copyright Act, 1957 and section 134 of the Trademark Act, 1999.

Below given table compares the convenience of plaintiffs being a corporation (which includes a company) in case of trademark/copyright and patent suits.

trademark copyright and patent suits

In the times to come when patent infringement suits will be on the rise, plaintiff should not be driven to file suits at the location where infringement took place or location where defendant resides, or carries on business, or personally works for gain. Change in law to bring the section 104 of the Patents Act, 1970 in lines with section 62 of the Copyright Act, 1957 and section 134 of the Trademark Act, 1999 is required to stop the inconvenience being caused to plaintiffs in case of patent suits.

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.

Analyzing the Applicable Jurisdiction for Trademark and Copyright Disputes

Years 2015 and 2016 have been very important in terms of what they have offered to bring clarity on the jurisdiction where suits/ civil proceedings related to Trademark and Copyright can be instituted. IIPRD has written one article discussing some of these cases. Intent of the instant article is not to discuss facts of those cases again but to understand the latest position on the applicable jurisdiction for Trademark and Copyright disputes.

Section 62 of the Copyright Act, 1957 (hereinafter referred to as section 62), Section 134 of the Trademark Act, 1999 (hereinafter referred to as section 134) and section 20 of Code of Civil Procedure (CPC), (hereinafter referred to as section 20) 1908 govern the applicable jurisdiction.

These sections have been discussed below:

For Copyright:

Section 62:

Jurisdiction of court over matters arising under this Chapter. —

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

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

P.S. – (Emphasis added)

For Trademark:

Section 134:

Suit for infringement, etc., to be instituted before District Court. —

(1) No suit—

(a) for the infringement of a registered trade mark; or

(b) relating to any right in a registered trade mark; or

(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

(2) For the purpose of clauses (a) and (b) of sub-section (1), a “District Court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation. —For the purposes of sub-section (2), “person” includes the registered proprietor and the registered user.

P.S. – (Emphasis added)

For both Copyright and Trademark:

Section 20:

Other suits to be instituted where defendants reside or cause of action arises. – Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction—

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

(b) any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or

(c) the cause of action, wholly or in part, arises.

Explanation: A corporation shall be deemed to carry on business at its sole or principal office in India or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place.

Section 62 and Section 134 are pari materia. It is important to note that both of these sections are ‘inclusive’ in nature. They are categorical in nature. The inclusive nature of these sections can be inferred from the word ‘include’.

To better understand the intent and effect of section 62 and section 134, let’s understand what recourse plaintiff would have in absence of these sections and what recourses they have now with these sections.

In absence of Section 62 and Section 134, having resort to section 20, plaintiff may be able to file the suit of infringement against the defendant only at the district court (in case of copyright) or at a court that is not inferior to the district court (in case of trademark) within local limits of which cause of action wholly or in part arises, or where defendant resides, carries on business or personally works for gain. But when we read Section 62 and Section 134 with section 20, plaintiff can also file suit for infringement at a place where he resides or carries on business or personally works for gain. Plaintiff is not barred to file suits at courts having jurisdictions where cause of action has arisen wholly or in part or at court having jurisdiction where defendant resides or carries on business or personally works for gain even if plaintiff is not residing or carrying on business or personally working for gain in any of those jurisdictions.  

Section 62 and section 134 are not in derogation of section 20, instead they just provide an additional forum for the suing to the plaintiff. Such interpretation of section 62 and section 134 has been confirmed by division bench of Hon’ble Madras High Court in M/S. MICRO LABS LIMITED, REP., BY ITS COMPANY SECRETARY V/S M/S. ERIS LIFE SCIENCES PVT. LTD., decided on Tuesday, September 15, 2015.

After INDIAN PERFORMING RIGHTS SOCIETY LTD. Versus. SANJAY DALIA AND ORS: (2015) 10 SCC 161 decided on July 01, 2015 by Hon’ble Supreme Court and ULTRA HOMES CONSTRUCTION PVT. LTD Versus PURUSHOTTAM KUMAR CHAUBEY & ORS FAO (OS) 494/2015 & CM 17816/2015 decided on January 20, 2016 by Hon’ble division bench of Delhi High court, plaintiff being a corporation (which includes a company), can sue at places as discussed below:

Picture2

By drawing analogy from the case laws read with section 134, section 62 and section 20, below is produced a table that discusses the applicable jurisdiction that may arise in different cases.

Picture1

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.

Online Copyright Infringement and Its liability Upon Intermediary

  1. Copyright is a bundle of rights which is meant to encourage creativity. In ancient days creative persons worked for fame and recognition rather than to earn a living, thus, the question of copyright never arose. In the last four decades modern and advanced means of communication like broadcasting, litho-photography. Television, websites contents etc have made the Copyright Act an important act to deal with possible problems of ownership and infringement on such rights
  2. Copyright rights prohibit others from using the copyrighted works. The traditional concept of the copyright has undergone a drastic change due to advent of the new technologies; its scope has extended manifolds. Now, the modern law of copyright encompasses musical works, cinematograph works, computer programs, performer’s rights, broadcasting rights.
  1. The Copyright Act today has also to deal with business models which are growing over the internet wherein the users are participating actively and thereon the companies are earning solely on the basis of the internet services by facilitating users to share their contents which are attractive (which includes pictures, motion pictures, films, songs, graphics, trailors, private communications amongst the eminent personalities, scam disclosures etc) so as to make it common to all and enabling them to view it easily by sitting at home.
  1. Thus it has becomes necessary that the Copyright Act also deals with problems of online copyright infringement and other related aspects. Though no specific reference has been made with this aspect, but the amended provisions of the Copyright Act tries to deal with some practical problems and including the inclusion of fair use policy and other aspect of transient and incidental storage of work or performance or for providing links for such links.
  1. The relevant provision for Copyright Infringement is reproduced herein below:

Section 51. When copyright infringed. -Copyright in a work shall be deemed to be infringed-

(a)    when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act-

(i)     does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or

(ii)     permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or

(b)     When any person –

  • makes for sale on hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
  • Distributes either for the purposes of trade or to such an extent as to affect prejudicially the owner of the copyright, or
  • By way of trade exhibits in public, or
  • Imports [***] into India,

any infringing copies of the work:

[Provided that nothing in Sub-clause (iv) shall apply to the import of one copy of anywork, for the private and domestic use of the importer.]

Explanation – For the purposes of this section, the reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an “infringing copy.

  1. From the bare reading of the Section 51, it becomes apparent that the infringement is, doing of any act by a person who is not authorized by the owner, which the owner is conferred to do under the provisions of the Act or permitting any place for profit for infringement of the copyright is also an infringement under the Act. The said two provisions are disjunctive in as much as that there shall be an infringement even if the acts are done which are of the owner or in the alternative the acts of permitting any place for profit.
  1. In view of the same and also the fact that the provision provides for permitting “any place which itself is loosely worded and is unfettered by any qualification, the said words “any place” have to be construed widely so as to include the place at the webs page or internet in order to give effect to the provision to be operative in cases of newer kind of the infringements being caused at the web space.
  1. Thus the Copyright Infringement includes the online infringement and any one can sue for the infringement of copyright based on the web pages or web contents including websites & mobile Application.
  1. However there is no reference to such business models i.e. network service providers, internet services providers, web-hosting service providers under the Copyright Act. The business model was such that made them susceptible to various liabilities. There was no explicit provision covering their right. They are commonly known as Intermediaries as is specifically defined under The Information and Technology Act, 2000.
  1. Intermediary has been defined under Section 2(w) of the IT Act,2000 “Intermediary” with respect to any particular electronic records, means any person who on behalf of another person, receives, stores or transmits that record or provides any services with respect to that record and includes telecom service providers, network service providers, internet services providers, web-hosting service providers, search engines, online payment sites, online-auction sites, online-market places and cybercafés”.

Status of Intermediary and protection provided under IT Act, 2000

  1. The Information Technology (Amendment) Act, 2008 brought a needed relief to the Intermediaries as Chapter XII of the act, provided for the exemption from liability to the Intermediaries. In exercise of the powers conferred by clause (zg) of subsection (2) of section 87 read with sub-section (2) of section 79 of the Information Technology Act, 2000 (21 of 2000), the Central Government vide gazette Notification dated 11th April,2011  published the Information Technology (Intermediaries guidelines) Rules, 2011.
  1. Section 79 of the Information Technology Act, 2000: Exemption from liability of intermediary in certain cases.—

(1) Notwithstanding anything contained in any law for the time being in force but subject to the provisions of sub-section (2) and (3), an intermediary shall not be liable for any third party information, data, or communication link made available or hosted by him.

(2) The provisions of sub-section (1) shall apply if—

(a) the function of the intermediary is limited to providing access to a communication system over which information made available by third parties is transmitted or temporarily stored or hosted; or

(b) the intermediary does not—

(i) initiate the transmission,

(ii) select the receiver of the transmission, and

(iii) select or modify the information contained in the transmission;

(c) the intermediary observes due diligence while discharging his duties under this Act

and also observes such other guidelines as the Central Government may prescribe in this behalf.

(3) The provisions of sub-section (1) shall not apply if—

(a) the intermediary has conspired or abetted or aided or induced, whether by threats or

promise or otherwise in the commission of the unlawful act;

(b) upon receiving actual knowledge, or on being notified by the appropriate

Government or its agency that any information, data or communication link residing in or connected to a computer resource controlled by the intermediary is being used to commit the unlawful act, the intermediary fails to expeditiously remove or disable access to that material on that resource without vitiating the evidence in any manner.

Explanation.—For the purpose of this section, the expression “third party information” means any information dealt with by an intermediary in his capacity as an intermediary.

  1. The Act clearly provided that to seek protection under section 79 it was mandatory for the intermediaries to observe due diligence as provided by the Information Technology (Intermediaries guidelines) Rules, 2011. Thus it is mandatory for the Intermediaries to follow such due diligence to seek protection/ exemption under the IT ACT, 2000.The exemption provided under Section 79 read with the Information Technology (Intermediaries guidelines) Rules, 2011 clearly is similar to the provision of DMCA’s (Digital Millennium Copyright Act) safe harbours for online service provider.
  1. However the Amendment and the understanding of the said Section received a set back by the Judgement of Hon’ble Delhi High Court in the matter of Super Cassetes Industries Ltd Vs My Space Inc[1], which had led to the confusion over the protection given to the Intermediaries under the IT ACT, 2000. That the Hon’ble Court while giving a Prima Facie view on the Injunction had come to the conclusion that that the provisions of Section 79 of The Information Technology Act, 2000 will have no bearing on the liability of infringement of Copyright because of the proviso provided under Section 81 of the Act. The protection given to the Intermediaries with respect to copyright and patent infringement cases has been taken away by considering the provisions of Section 79 of the Act read with Section 81 of the Act.
  1. Thus intermediary can be sued for online infringement of copyright content despite given an exemption under Section 79 of The Information Technology Act, 2000. The interpretation of Section 79 read with Section 81 of the Act has lead to take away the exemption provided under the Act.
  1. However the proviso provided under Section 52 (c) is again an Act to bring the Indian Copyright Act in accordance with the International Practise. A proviso has been added to this clause to provide a similar provision as safe harbour as per international norms to internet service providers, as they are merely carriers of information provided by others. This is generally referred to as ‘notice and take down procedure’. If the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the work, that the transient or incidental storage is an infringement, such persons responsible for the storage shall refrain from facilitating such access for a period of twenty-one days or till he receives an order from the competent court refraining from facilitating access. In case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access.

Section 52 (c) of the Copyright Act defines- Certain acts not to be infringement of copyright-

(c)     transient or incidental  storage of a work or performance for the purpose of providing electronic links, access or integration, where such links, access or integration has not been expressly prohibited by the right holder, unless the person responsible is aware or has reasonable grounds for believing that such storage is of an infringing copy:

Provided that if the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the  work, complaining that such transient or incidental storage is an infringement, such person responsible for the storage shall refrain from facilitating such access for a period of twenty-one days or till he receives an order from the competent court refraining from facilitating access and in case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access.

  1. It is also important to note that when section 52 (c) is read and construed in accordance to Section 79 of The Information Technology Act, 2000, it is felt that the Amended, Copyright Amendment Act, 2012 has provided some protection specifically by inserting Section 52 (c) of the Act, however there are some restriction to the same and has also incorporated the principle and procedure provided therein. Thus even to seek such exemption as provided under the Act, it is mandatory to follow such principle.

[1] 2011(48)PTC49(Del)

About the Author: Mr. Amarjeet Kumar, Senior Associate (Litigation), Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Amarjeet@khuranaandkhurana.com.

Criminalizing online sharing of Academic Article by a Columbian Student

Background

Diego Gomez is a student perusing post graduation in Conservation and Wildlife Management in Costa Rica. Like students of developing countries, he also used to face lack of availability of literature in the libraries and other sources of reading. To face this scarcity of academic databases, Diego, used the power of internet. It enabled him to read relevant research, share documents, and communicate with others in his field. In recent times, though large amount of database is available on internet yet to find something credible and scholarly, one has to pay a premium price and this served as a barrier for Gomez. So he, along with his fellow students started sharing articles which they find relevant amongst themselves on internet. On being asked about giving due acknowledgement to author, this is what Gomez has to say:

“The important thing is to make a correct citation, attributing researchers’ work by indicating their name and year of publication and, of course, not claiming the work of another researcher, but to recognize it and value it. Therefore, what we usually do is to reference the findings and make them available to those who need them.”

One such paper research paper was shared by Gomez on Scribd. The paper was a taxonomy document that could be used by conservationists like him to identify animals and study ways of preserving them and their ecosystems. It is noticeable that Columbia is world’s second most biodiverse country and access to such prominent piece of work could have served the scientific fraternity in conservation of flora and fauna of the nation.  Yet two years later, Gomez received a legal notice from the author of the impugned article intimating him about initiating criminal investigation against him in this regard. The notice was silent as to the reason and criminal charges for which Gomes was accused. Later on, he discovered that the author of the impugned article filed a lawsuit over the “violation of [his] economic and related rights.” This is what Gomes has to say on it:

“Three years ago, through a Facebook group in which I participated along with many others interested in the amphibian and reptile studies, I came across a master’s thesis that was crucial to identify some amphibians I found… At that time, however, I thought it was something could be of interested [sic] for other groups, so I shared it on the web. 

Although I was not the only one (the document was in several sites already), for sharing knowledge—recognising the authorship—now the author advances a criminal case against me.”

Another relevant fact to the case was, later on, Scribd made the impugned article accessible for an amount of $5 which was initially freely accessible. Thus, it can be inferred that money was never a motive of Diego behind uploading impugned article.

Diego now faces up to 8 years in jail and a monetary fine – for making available such scientifically important document which could have easily served the purpose of conserving biodiversity in the second most biodiverse country of the world.

Fair Use Doctrine

In general, Fair Use is a safety filter incorporated with a view to maintain a balance between rights to have access to information of public at large without hampering right to property of the copyright holder. This doctrine was firstly recognized by Britisher’s as a concept of “test copyright”[1] . It was incorporated into the Copyright Act of 1976[2]. In US, copyright was originated with a view to elevate the “importance of scholarly access”. It was invented to “assist learning” but instant case is an example how this system failed to serve the purpose.[3] In the words of renowned academician, De Vos,

 “Fair use, a doctrine of U.S. law situated within copyright, is an influence within the institutional and political arrangements, the infrastructure that points to “the presence and operations of standards and classifications, which lean heavily on all writing practices”

Not in all cases, acknowledging the source of copyrighted information amounts to “taking permission” from copyright holder. This is because there is no straight jacket framework to stipulate what exactly amounts to be permitted under doctrine of Fair Use. Although, it has been argued in lengths in several point of time, but still it depends on particular facts and circumstances of the case. Some of the examples of activities that are taken under the doctrine by US courts are:

“quotation of excerpts in a review or criticism for purposes of illustration or comment; quotation of short passages in a scholarly or technical work, for illustration or clarification of the author’s observations; use in a parody of some of the content of the work parodied; summary of an address or article, with brief quotations, in a news report; reproduction by a library of a portion of a work to replace part of a damaged copy; reproduction by a teacher or student of a small part of a work to illustrate a lesson; reproduction of a work in legislative or judicial proceedings or reports; incidental and fortuitous reproduction, in a newsreel or broadcast, of a work located in the scene of an event being reported.”[4]

Limitations and Exceptions for the use of Copyright protected work

Under US Copyright laws, this right is subject to certain limitations found in sections 107 through 118 of the copyright law [5]. Section 107 contains a list of the various purposes for which the reproduction of a particular work may be considered fair, such as criticism, comment, news reporting, teaching, scholarship, and most importantly research. Diego can claim the doctrine of Fair Use if he can prove that he had borrowed the content for research purpose. In one of his statement Diego inter-alia said, he wasn’t making a personal profit from sharing the impugned article—he simply intended for other scientists like him to be able to access and cite this scientific research. Section 107 also sets out four factors to be considered in determining whether or not a particular use is fair.

  1. The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes
  2. The nature of the copyrighted work
  3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole
  4. The effect of the use upon the potential market for, or value of, the copyrighted work

The nature and purpose of use was clearly to share data amongst fellow learners and it was never intended to make any profit. The fact that Diego didn’t have any monetary agreement with Scribd further strengthens his argument.

Under Columbian Copyright Laws, the Fair use doctrine is very limited. Instead, it has a list of exception and limitations to the rights of authors. These exceptions are not compatible new era digital situations and needs to be urgently amended. Further under Columbian Criminal Law, the necessary ingredients to held one criminally liable for such copyright infringement are: mens rea and antijurídica. Mens rea is the intention or knowledge of wrongdoing that constitutes part of a crime. Certainly, in the instant case, this ingredient does not find any place as Diego never intended to harm the author. For that matter, the author also not known to him and thus it is almost impossible to possess malice for some unknown person. Secondly antijurídica: which means whether there was actual harm against the economic rights of the author. As mentioned earlier, the impugned article was available free of cost on internet. It was Scribd, who later on started charging money for it. Moreover, the act of Diego added economic value to the impugned article. It is evident from the fact that Scribd made the impugned article paid only after it has been shared by Diego which may be due to increase in viewership of it. Thus, it can be inferred that Diego directly or indirectly, only added value to the article and in no way degraded or diminished its value.

In a landmark ruling, the Supreme Court of Colombia, the highest criminal judicial tribunal and Court of Cassation, ruled that, in order to establish criminal copyright infringement, it is necessary to ask whether the allegedly criminal conduct is profit-making, whether it causes effective injury and whether the intention is to cause harm on the right holder. Judicial interpretation on copyright issues is scarce and uncertain in Colombia. In this context, the Supreme Court’s Cassation ruling 29,188 (released on 30 April 2008) has set guidelines for “the development of national jurisprudence on the nature, scope and meaning of the criminal protection of copyright. [6]

Berne three-step test

As discussed earlier, the doctrine of fair use puts limitations on the exclusive rights of the copyright holders. It set forward certain exceptions and limitations which serves as an exception to Copyright infringement subjected to facts and circumstances of the case. There has been a long discussion on whether the copyright holders have unlimited exclusive rights to their work. On the contrary, a strong set of limitations and exceptions is deemed necessary to safeguard fundamental rights and freedoms of users, to regulate competition and industry practice, to promote the dissemination of information, and to alleviate the symptoms of market failure.[7]  In a nutshell, the test “sets limits to limitations on exclusive rights” [8]and allows limitations

  1. “in certain special cases”

It requires that a limitation or exception in national legislation should be clearly defined and should be “narrow in its scope and reach” in a quantitative as well as a qualitative sense. That does not mean, however, that every situation to which the limitation could apply needs to be explicitly identified, provided that the scope of the limitation is known and particularized.[9]In the instant case these limitation may extend to throwing the impugned article in public domain of learners. It may be taken as a precedent for other scholarly works which are far away from the reach of learners from ‘not so developed’ nation. In this way such highly informative work may explicitly be coined under the head of “special cases” of Berne’s convention.

  1. “that do not conflict with the normal exploitation of the work”

It inter-alia means that the said limitation or exception in the national legislation is way higher than the normal level of exploitation of work and if such extent of exploitation is permitted will deprive the rightful copyright holder of significant or tangible commercial gains.[10]It depends on what status does a country give to its research and development. No doubt, individual’s exclusive copyrights are subjected to protection but not at the cost of nation’s development. In a way, an individual is a part of the state and hence the state’s development must be kept at higher pedestal when it comes to research and development.

  1. “that do not unreasonably prejudice the legitimate interests of the author / right-holder”.

The terminologies in this step require high interpretation as they have not been explicitly defined elsewhere. It contains an important proportionality test in the way that the harm to the right-holders has to be reasonably related to the users’ benefits. In other words, the prejudice has to be proportionate.[11]It takes immense effort to make a scholarly work worth informative and the individual interest cannot be ignored wholly. The possible way out can be that the state fix a moderate price of such works which will serve both the state and the copyright holder.

Conclusion

Instant case epitomizes the darker side of the restrictions placed by the old and non-compatible laws on the exclusive economic rights of the authors. In my opinion there is no justice in such laws if they criminalize sharing of such scholarly research works. Gomez shared the impugned article with a view to foster the protection of biodiversity of his country but helping others with similar ambitions to access the scholarly work. Learners of this kind are vast in number who unintentionally falls in to the complex cobwebs of prohibitive restraints of copyright. Penalizing and criminalizing healthy content sharing will lead to formation of large army of like-minded people aggrieved from such bogus legal system. It is an imminent step to ensure that learners are not made criminals for promoting scientific progress and exercising their creative expression.

It is a well accepted fact that it is highly difficult for students of developing countries to attain such informative scholarly work and hence, such sharing, in my opinion should not be termed as offense as long as the copyright holder retains its moral rights. However, it won’t be totally non-expectable to hope for a law that does not criminalizes such sharing of scholarly works done without malice or intention to draw personal benefits, especially when that work is actually being used for the development and application of scientific progress, which the prime objective of the copyright laws.

[1] Great Britain’s Statute of Anne of 1709

[2] 17 U.S.C. § 107

[3] Logie, John. (2006).”Copyright in increasingly digital academic contexts: What it takes” (WIDE paper #7) retrieved on 28 August 2014 from http://www.wide.msu.edu/widepapers .

[4] Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law, 1961, retrieved on 28 August 2014 from http://www.copyright.gov/reports/annual/archive/ar-1961.pdf

[5] title 17, U. S. Code

[6] “Colombian ruling on copyright: Without profit  there is no criminal offence “ by carobotero · Bogotá (Colombia) · May 15th, 2008 last retrieved on 28 August 2014 from

 http://archive.icommons.org/articles/colombian-ruling-on-copyright-without-profit-there-is-no-criminal-offence

[7] Guibault, L. (2002), Copyright Limitations and Contracts – An Analysis of the Contractual Overridability of Limitations on Copyright, Kluwer Law International, The Hague

[8] Senftleben, M. (2004), Copyright, Limitations and the Three-Step Test – An Analysis of the Three-Step Test in International and EC Copyright Law, Kluwer Law International, The Hague

[9] WTO Copyright Panel decision (2000), case WT/DS160, United States – Section 110 (5) of the US Copyright Act, Page 32.

[10] WTO Copyright Panel decision (2000), case WT/DS160, United States – Section 110 (5) of the US Copyright Act, Page 44.

[11] WTO Copyright Panel decision (2000), case WT/DS160, United States – Section 110 (5) of the US Copyright Act, Page 57.

About the Author: Mr. Ananya Pratap Singh, an Intern at Khurana and Khurana, Advocates and IP Attorneys.

Monkey Selfie-Legal Aspects

Background

Picture1

David J. Slater is a British wild life photographer from Gloucestershire who ventured to an Indonesian jungle in 2011 to take photos of extremely rare crested black macaque monkeys. As he narrated the story to the telegraph, he told “They were quite mischievous, jumping all over my equipment and it looked like they were already posing for the camera when one hit the button.”A curious female grabbed his camera and snapped hundreds of shots. The best one out of the image was a selfie by a female macaque grinning toothily into the camera. Mr. Slater eventually retrieved it.

The images made headlines around the world, and were used on a number of websites, newspapers, magazines and television shows. Some of these pictures were posted on Wikimedia Commons[1], where images and videos are offered to the public for free. It was nominated for the best public domain photo on Wikimedia Commons.

In early 2012, Mr Slater officially asked Wikimedia to take down the image. It was removed, but was later added again by another user and has remained on Wikimedia Commons. Mr. Slater contends that he owns the copyright over the said photographs. He further states that he has suffered considerable expense to get these photographs as he traveled into the deep forests of Indonesia and spent three days following the animals with his camera equipment and even hired the guide who led him deep into the wilds, where the inquisitive monkey could grab his camera and start snapping.

He has also argued that he would hold the copyright to any images taken by an assistant. In effect, the smiling simian was his assistant that day in the jungle, he reasoned.

On the images’ discussion page one of the editors who uploaded the photos wrote that “This image was shot by a monkey who picked up a camera that a photographer had dropped” and was therefore not eligible for copyright.

Wikimedia argues that no one owns the photo — not itself, not Mr. Slater and not even the shutter-happy monkey and the image falls into the public domain. Mr. Tomasz Kozlowski, who is responsible for uploading the image to Wikimedia, told the Telegraph: “There has been some confusion over who owns the copyright. As Wikimedia is based in the US, we are guided by their law, which says that works that originate from a non-human source can’t claim copyright. The work did not originate from Mr Slater as by his own admission he did not take the picture, the monkey did. However monkeys can’t and don’t own copyrights.”

“he who takes the selfie owns the selfie”

This legal pseudo-doctrine encompasses two legal terms “authorship” and “taking/capturing”. Technically, there are three parties in this entire episode: a UK wildlife photographer, a US website and an Indonesian macaque. Thus, we have to look in to the Copyright laws on each of these countries to analyze the legal position of the impugned Copyright.

  • Author

Under US Copyright Law, the term ‘authorship’ implies that, for a work to be copyrightable, it must owe its origin to a human being.[2] Materials produced solely by nature, by plants, or by animals are not copyrightable.[3]

Under the UK’s Copyright, Designs and Patents Act, 1988, the copyright in an artistic work such as a photograph is owned by the person who creates it.[4] And, under English law, “person” means human or corporate entity, but does not include animals.

Under Indonesian Copyright laws, the person deemed to be the Author.[5]

Mr. Slater can file a suit for Copyright infringement at of the countries where the photograph has been used without authorization. But none of the countries among UK, US and Indonesia have given recognition to the work created by animal. And it is an undisputed fact that Mr. Slater himself accepted that monkey clicked the picture. Hence, the claim of Wikimedia, that the impugned photograph falls within the ambit of Public domain, is more apt and suitable. It is worth noticing that Indonesia and Britain are the members of Berne and TRIPs conventions and hence, if the suit is filed in UK (as it is most likely) then the impugned photographs will be treated in the same manner as under UK copyright law.

  • Effect of Ownership of Camera

As the general rule of all Copyright law, it is formulated to protect the creators of artistic works and not the owners. The Copyright protection is given for incorporeal property and camera, being a movable property, is a corporeal property. Under US Copyright laws, mere ownership of a book, manuscript, painting, or any other copy or phonorecord does not give the possessor the copyright. The law provides that transfer of ownership of any material object that embodies a protected work does not of itself convey any rights in the copyright.[6]

Under an earlier copyright law – the UK Copyright Act 1956 – the author of a photograph was defined as the person who at the time the photograph was taken “owned the material on which it was taken but under Copyright, Designs and Patents Act, 1988, author, in relation to a work, means the person who creates it[7] and the author of a work is the first owner of any copyright in it[8].In the instant case Mr. Slater is neither the author and hence he cannot be termed as owner of copyright under UK copyright laws.

Under Indonesian Copyright law, the strict interpretation of Article 7 read with Article 9 of the Indonesian Copyright Act leads to the conclusion that Indonesian government is the rightful owner of the impugned copyright. Article 7 of the Indonesian copyright law inter-alia says that if a work is ‘designed’ by one person and ‘worked out’ by another, then the one who designed the work gets the copyright. Going by the words of Mr. Slater, it was he who has setup the camera and it was the Macaque who clicked the photographs. In another words, the macaque has done the designing part while Mr. Slater just left his camera.

Further Article 9 inter-alia says if any legal entity claims right in a work without mentioning its author then such legal entity is deemed to be its author unless the contrary is proved. The impugned photographs are shot at Indonesian National Park. Thus, if Indonesian government, being a legal entity, claims the copyright under Article 9, then it would be just and proper under Indonesian Copyright laws unless the contrary is proved.

Image taken by an assistant

In the instant case, Mr.Slater also contended that the Macaque should be considered as the ‘assistant’ of him as Mr.Slater took all the pain behind setting up the perfect conditions for the selfie while the macaque only clicked the shutter. This claim of Mr.Slater would have been successful under the Copyright laws of UK and USA, if there would have existed any written employer-employee agreement or “work made for hire” agreement between them. If one go by the general laws of Agency, then employee is a person and thus an animal cannot hold an agency. A person can be owner of an animal like a bull in a bullock cart but the bull can’t be termed as an Agent.

  • Test of Agency

The best explanation for Cost-Benefit Internalization theory is based on the moral andeconomic principle that a person must bear the foreseeable consequences ofher voluntary actions. Thus, the principal must bear the consequences ofhiring an agent to the extent it is foreseeable that harm might result from theagent’s unauthorized acts.[9] A person may include artificial or natural person but in no way it will include animals. Although, sometimes, the owner of an animal may be held responsible for the act of his animal but won’t amount to agency.

Under UK Copyright laws, if an artistic work is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary.[10] No agreement can be signed with or by an animal. Thus, an animal cannot be termed as an employee under sec. 11 of Copyright, Designs and Patents Act 1988 and thus Macaque cannot hold the copyright.

  • “Work made for hire” Agreement

Section 101 of the Copyright Act (title 17 of the U.S. Code) defines a “work made for hire”. A work made for hire[11] is either

  • a work created by an employee as part of his/her regular duties. A person is an employee if the hiring party has the right to control the manner and means by which the work is created; or
  • a specially commissioned work for certain categories of works and only if there is a written agreement between the employer and employee stating that the work is made for hire.

Thus, under US Copyright law also, an employee is a person. Therefore, a macaque cannot hold a work made for hire agreement under US copyright laws making the claim of Mr.Slater invalid.

Joint work

One possible way out for successfully claiming the copyright under laws of UK, USA and Indonesia might be that it is a joint work. According to the US Copyright Laws[12], the copyright of the work is initially held by the author of the work.The authors of a joint work are co-owners of copyright in the work. Further, Section 101 provides that:

“[a] ‘joint work’ is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole”.

Therefore, in the present case, the court could find that the monkey selfies were works of joint authorship between the macaque and Mr.Slater. This would then allow Mr. Slater to exercise economic rights over the works of joint authorship between human and non-human authors.[13]

  • Liability of Wikimedia

As per, Digital Millennium Copyright Act enacted in 1998 stated that the Internet Service Provider (ISP) cannot be held liable for transmission of copyright infringing content except when such ISP remove such content after a proper notice regarding copyright violation has been received from the copyright owner. It is important to note that this notice unlike other notices must: be in writing, be signed by the copyright owner or the owner’s agent, identify the copyrighted work claimed to be infringed (or list of infringements from the same site) and identify the material that is infringing the work.

Under the UK Copyright law,[14] “work of joint authorship” means a work produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors. In the instant case, both the macaque and Mr.Slater have contributed for the said photograph. The setting up of camera and other instruments weighs as equal importance as clicking the shutter by Macaque. Hence, under UK copyright law, the said photograph can be termed as a work of Joint authorship.

Under Indonesian Copyright Laws[15], author include joint authors who have either inspired in creation of work based on several parameters such as intellectual ability, imagination, dexterity, skill or expertise. In the instant case, the dexterity of Mr. Slater cannot be questioned as he is a professional wildlife photographer but the things are not same for Macaque. There is grey area of discussion that whether a macaque possesses intellectual ability, imagination, skill or expertise. Not only that, we all know that macaque may possess skills such as climbing trees but can it be termed as Intellectual ability under Intellectual property laws. Thus, Indonesian law requires interpretation in this area of law.

Conclusion

Though various legal aspects of the case have been brought out and discussed above with reference to laws of respective countries, US copyright regulators have recently interpreted chapter 300 of US Copyright office and issued clarification on the subject matter without specifically mentioning the impugned image that has direct bearing on the case. The clarification in substance means that the subject selfie is not subject to copyright under US Copyright laws. The clarification states that in a classic case of Burrow-Giles Lithograohic Co. vs. Sarony[16], it has been stated that the copyright laws only protects “fruits of intellectual labour” that “are founded in the creative powers of the mind”. Because the copyright law is limited to “original intellectual conceptions of the author”, the office will refuse to register a claim if it determines that a human being did not create the work.[17]In the instantcase,work was neither founded nor originated by either of Mr, Slater or Macaque. It may be termed as natural occurrence or better to say an accident. Thus, according to US copyright office, neither Mr.Slater nor macaque used any intellectual labour or creative power in this accidental episode, and therefore neither has claims to the copyright.

References

[1]Wikimedia Commons (or simply Commons) is an online repository of free-use images, sound, and other media files. It is a project of the Wikimedia Foundation.

[2]Copyright Compendium no.503.03(a)

[3]Copyright Compendium no. 202.02(b)

[4] Section 9, Chapter 48, Copyright, Designs and Patents Act 1988

[5] Article 5 of Law of the Republic of Indonesia

[6]U.S. Copyright Office · Library of Congress Copyright Basics circular 1 reviewed: 05⁄2012

[7] Section 9, Chapter 48, Copyright, Designs and Patents Act 1988

[8] Section 11 of Copyright, Designs and Patents Act 1988

[9] “A Theory of Agency Law” by Paula J. Dalley, Professor of Law, Oklahoma City University. University of Pittsburg Law Review,        [Vol. 72:495]

[10] Section 11(2) of Copyright, Designs and Patents Act 1988

[11] United States Copyright Office, Library of Congress available at http://www.copyright.gov/eco/help-author.html

[12]Copyright Act 17 U.S.C. no. 201(a).

[13] “British Photographer, Indonesian Macaque, American Website: Copyright Ownership Dispute Over Monkey Selfies” by Vnzomo in “Strathmore University’s Centre for Intellectual Property and Information Technology Law” available at https://cipitlawstrath.wordpress.com/2014/08/08/

[14] Section 10 of of Copyright, Designs and Patents Act 1988.

[15] Article 1(2) LAW OF THE REPUBLIC OF INDONESIA

[16] 111 U.S. 53, 58 (1884).

[17] Page 8, Compendium : 300, “Copyrightable Authorship: What cane registered”available at http://copyright.gov/comp3/chap300/ch300-copyrightable-authorship.pdf.

About the Author: Mr. Ananya Pratap Singh, an intern at Khurana and Khurana, Advocates and IP Attorneys.