Category Archives: Copyright Litigation

Jurisdiction of Courts Under Section 62 of the Copyright Act and Section 134 of the Trademarks Act

The Hon’ble Supreme Court of India in INDIAN PERFORMING RIGHTS SOCIETY LTD. Versus. SANJAY DALIA AND ORS”: (2015) 10 SCC 161 and the Hon’ble Division Bench of Delhi High court in ULTRA HOMES CONSTRUCTION PVT. LTD Versus PURUSHOTTAM KUMAR CHAUBEY & ORS FAO (OS) 494/2015 & CM 17816/2015 has interpreted Section 62 of the Copyright right, 1957 and Section 134of the Trademark Act, 1999 read with Section 20 of the CPC with respect to the Jurisdiction of the Court.

Both the above judgment gives an absolute relief to persons who have been accounted to great hardship of Jurisdiction by various multi-national Companies who normally used to file suit at a place where they used to have a sub-ordinate office and not at their principal office. The Defendants had no other option, but to submit to the said jurisdiction of these courts.

The Sanjay Dalia (supra) clearly provides that a suit under Section 62 of Copyright Act, 1957 or under Section 134 of the Trademarks Act, 1999 can be filed only at a place where the Plaintiff is either has a principle place of office and not the sub-ordinate office and further The Hon’ble Division bench in Ultra Homes (Supra) relying on the Sanjay Dalia (supra) contemplates 4 situations based on which the Plaintiff can institute suit.

The Hon’ble Apex court in Sanjay Dalia (supra) has held that the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act never intended to operate in the field where the plaintiff is having its principal place of business at a particular place and the cause of action has also arisen at that place so as to enable it to file a suit at a distant place where its subordinate office is situated though at such place no cause of action has arisen. Such interpretation would cause great harm and would be juxtaposed to the very legislative intendment of the provisions so enacted.

The Hon’ble Apex court in Sanjay Dalia (supra) has further held that “In our opinion, in a case where cause of action has arisen at a place where the plaintiff is residing or where there are more than one such persons, any of them actually or voluntarily resides or carries on business or personally works for gain would oust the jurisdiction of other place where the cause of action has not arisen though at such a place, by virtue of having subordinate office, the plaintiff instituting a suit or other proceedings might be carrying on business or personally works for gain.

The Hon’ble Division Bench of Delhi High Court in Ultra Homes (Supra) relying on the Judgement of Sanjay Dalia (supra) has held that this deeming provision contained in the explanation in section 20 of the Code has been read into section 134(2) of the Trade Marks Act, 1999 and section 62(2) of the Copyright Act, 1957 for the purposes of isolating the place where the plaintiff can be said to carry on business. It will be noted that though the expression “carries on business” is used in all the three provisions (i.e., section 20 of the Code, section 134(2) of the Trade marks Act, 1999 and section 62(2) of the Copyright Act, 1957), the deeming provision contained in the Explanation in section 20 of the Code has not been expressly incorporated in the other two provisions. But, the Supreme Court has, in the said decision, given the expression “carries on business” used in relation to a corporation in the context of a defendant in section 20 of the Code the same meaning when it is used in relation to a plaintiff under the said sections 134(2) and 62(2).

The Hon’ble Division Bench has further contemplated 4 situations in the context of the plaintiff being a corporation (which includes a company).

First of all, is the case where the plaintiff has a sole office. In such a case, even if the cause of action has arisen at a different place, the plaintiff can institute a suit at the place of the sole office.

Next is the case where the plaintiff has a principal office at one place and a subordinate or branch office at another place and the cause of action has arisen at the place of the principal office. In such a case, the plaintiff may sue at the place of the principal office but cannot sue at the place of the subordinate office.

The third case is where the plaintiff has a principal office at one place and the cause of action has arisen at the place where its subordinate office is located. In this eventuality, the plaintiff would be deemed to carry on business at the place of his subordinate office and not at the place of the principal office. Thus, the plaintiff could sue at the place of the subordinate office and cannot sue (under the scheme of the provisions of section 134(2) and 62(2)) at the place of the principal office.

The fourth case is where the cause of action neither arises at the place of the principal office nor at the place of the subordinate office but at some other place. In this case, the plaintiff would be deemed to carry on business at the place of its principal office and not at the place of the subordinate office. And, consequently, it could institute a suit at the place of its principal office but not at the place of its subordinate office

CONCLUSION

The above two Judgment is a clear direction to Litigants including their attorneys for instituting a case in terms of Section 62 of the Copyright Act and Section 134 of the Trademarks act. The judgments clarifies that the suit can only be filed at a place where the plaintiff is having its principal place of business at a particular place and not at a distant place where its subordinate office is situated though at such place no cause of action has arisen. The Contemplation of 4 situations by the Hon’ble High Court has lead to ease the issue of Jurisdiction over matter related to Copyright and Trademarks. It can be of great help to either the Plaintiff who wish to file a case against the Defendants having offices at several location and the Defendants as well who can address the issue of contrary jurisdiction as provided in the said judgement.

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

Advertisements

Music Rights for Use in Films

In recent times, music copyrights and their ownership/rights to producers, artists, among other stakeholders, have been under strong discussion across geographies. We are happy to have a written piece by Gemma Harrison, a freelance writer, on her high-level take on the Copyrights in Music.

This summer, the highest grossing film at the box office was Marvel’s Guardians of the Galaxy, as notable for its music choices as for its place in the growing range of Marvel superhero films sweeping Hollywood at the moment. Guardians of the Galaxy may have grossed upwards of $550 million worldwide, but it cost a cool $170 million to produce – not including Marvel’s expansive marketing campaign – and the music choices can’t have helped with that. Peppered liberally with a range of classic tunes from the 1980s, from David Bowie to 10cc, the familiar soundtrack of Guardians of the Galaxy was extremely visible, provided key plot points, and has spawned mix tapes and tie-in merchandise since the film’s release.

From a filmmaker’s perspective, it’s evidence of Marvel’s central market position, that they were able to negotiate such extensive rights to the tracks – many of which are extremely well-known or iconic. One can only fathom at how much it must have cost them.

Licensing Music for Filmmakers

There are several types of licence that filmmakers need to acquire in order to use a pre-recorded piece of music in films. First of all, the right to use a song differs from the right to use a specific recording of the song. This is particularly key for cover versions, where the rights to the song might not belong to the band who specifically recorded the version. Alternatively, some rights are likely to belong to the record company, with others being retained by the songwriters or performers. The rights to use of the underlying composition, and the specific recording or “master recording”, may very well belong to different people, all of whom have rights which they can enforce.

Once filmmakers have discovered who owns the rights, there are three types of permissions they typically need to obtain: the right to record and distribute copies of the song, to record the music in synchronisation with the moving pictures in the film, and thirdly to perform the song publically as part of the performance of the film. It’s complicated, and convoluted, and for popular songs it can be eye-wateringly expensive. In the case of Guardians of the Galaxy, where the screenwriters deliberately wrote the music into the film as a plot point, it’s a bold and ostentatious move, signifying their vast budgets, and even more vast bargaining power.

Bridgeport Music Inc v Dimension Films, Sampling and Fair Use

In 2004, the case of Bridgeport Music Inc v Dimension Films was heard in the United States, and reached the Court of Appeal. Bridgeport was centred on the digital sampling of a two-second guitar chord from a song, looped five times, without the permission of the rights holder. The federal judge decided that a two second clip was de minimis – that it was too small to cause any real harm to the claimant, and that the claim should be dismissed on that basis.

The Court of Appeal disagreed, deciding that the owner of copyright had an exclusive right to duplicate the work in question, or any part of it, of any length. The Court said, “Get a license or do not sample. We do not see this as stifling creativity in any way.”

The decision is controversial, and has not yet been followed by other Court of Appeal circuits. The reasons for this are several: firstly, it could lead to a single note being copyrightable by a party, which is widely seen as being far too restrictive. The chilling effect of not knowing how small a section of music is covered by copyright rules could be substantial. Others have said that the decision stifles fair use policies. Since the use of the clip in Bridgeport was transformative, for non-commercial purposes, and did not harm the market for the original work or its derivatives, fair use policy should be able to give the defendants some protection.

This could have a knock-on effect for filmmakers, especially those making educational films or films reporting or commentating on the news, which are given a higher status under fair comment rules. It remains the case that filmmakers still have to be careful about using pre-recorded songs in their films, especially since the licences they would need to obtain are extensive. Given that the United States case law has yet to encounter many cases of digital sampling or the use of new technology in copyright claims, we may expect the law to remain unclear or inadequate for a few years to come.

Further reading

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.

Copyrights Enjoyed By Musicians

Sanyukta Biswas, an intern at Khurana and Khurana, Advocates and IP Attorneys, looks at the rights of singer, lyricist and composer that have been incorporated by the 2012 amendment.

Once upon a time in India even the most noted of film artists and musicians could not secure themselves financially despite their brilliance. In an infamous legal battle, in the dark ages, the rights of royalty of the performers were offered to the producers in a platter. In the recent years, the likes of Javed Akhtar, lobbied for securing the rights of people associated with the entertainment industry. The amendment saw light 7th June 2012 when it received the assent of the President on. The amendment did bring the Copyrights Act in confirmation with the WIPO Copyrights Treaty and WIPO Performances and Phonograms Treaty and reach way beyond that. This article specifically deals with the rights of singer, lyricist and composer that have been incorporated by the 2012 amendment. The main objective behind the article is to describe and reflect upon the newly acquired copyrights of people related to the music industry and why is it a reason to rejoice.

Q1. What is a live performance and who is covered under it?

Answer: The definition of a performance in Section 2(q) of the Copyright Act is: ‘performance’, in relation to performer’s right, means any visual or acoustic presentation made live by one or more performers. The terms ‘made live’ are not defined in the statute. Hence the meaning of live performance is completely dependent on the interpretation that is done by the judiciary when it comes to recorded performance of a singer in a film. The definition of a ‘performer’ in Section 2(qq) of the Act as amended by the 2012 Act contains an inclusive definition which stated that a performer ‘includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance’. The 2012 Act added a Proviso to the Section which would disable those performers not mentioned in a film’s credits (including film ‘extras’) from being able to claim all but one of the rights granted to performers by the Act. They are entitled only to the protection accorded under section 38B. The Amendment Act 2012 has also sought to amend the definition of ‘Communication to Public’ (Section 2 (ff)) extending the right to performances. The definition explicitly states that it does not matter whether the communication is simultaneous or at places and times chosen individually. The rights under this head hitherto limited to authors have been extended to performers by the present amendment.

Q2. What are moral rights of performers and how are they protected?

Section 38B is a new provision in the Act which deals with the moral rights of performers. Moral rights of copyrights creator are recognized in civil law jurisdiction and also to some extend in common law jurisdiction. Moral rights of a copyright owner includes incidental rights such as right to attribution, the right to have worked published anonymously or pseudonymously, and the right to the integrity of the work. The preserving of the integrity of the work bars the work from alteration, distortion or mutilation. It must be noted that moral rights associated to copyrights work, is different from the economical rights. Even when assignments are made moral rights of the copyright owner remains. This particular provision — Section 38B(b) of the Act — states that ‘the performer of a performance shall, independently of his right after assignment, either wholly or partially of his rights, have the right to restrain or claim damages in respect of any distortion, mutilation or other modification of his performance that would be prejudicial to his reputation’. The other right which a performer would have — under Section 38B(a) of the Act — is the right to claim to be identified as the performer of his performance except where omission is dictated by the manner of the use of the performance. This right under the proposed Section 38B(a) obviously cannot apply to extras in films as they are not credited by definition.

It is pertinent to note that the provision also contains a safeguard against abuse of moral rights in the form of an Explanation which would state that ‘the mere removal of any portion of a performance for the purpose of editing, or to fit the recording within a limited duration, or any other modification required for purely technical reasons shall not be deemed to be prejudicial to the performer’s reputation’. This too is analogous to the rights granted to authors: the moral right of an author would not be considered to have been violated merely because his or her work has, not been displayed to his or her satisfaction.

Illustration 1: A is the original singer of a certain song “ Gullu ke gubbare” who was appointed by the music company XYZ. He assigned his rights to B. Despite the assignment, A would have the rights to be acknowledged for being the singer and he can also prevent others from distorting it.

Illustration 2: P sang in the film “Cocoa” about addiction of chocolate. Later on it was decided by the production unit of the film that due to the entire length of the movie, some scenes containing songs of P had to be modified. Due to this modification, the moral rights of the singer would not be effected.

Q3. What are the positive rights of the performers now and how can they be enforced and protected?

Answer: Section 38A of the Act enumerates acts similar to those listed in Section 14 which defines copyright, but instead of stating that performing them without consent would cause one to violate the performer’s right, it states that it is the exclusive right of the performer to perform or authorize the performance of these acts or any substantial part thereof. So it can be conclusively stated that earlier the rights were proscriptive in nature and now it is prescriptive. Earlier the performers were not entitled to royalties because they only had a negative right to prohibit ‘fixation’ of their live performances. A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, revproduced. The fixed work does not have to be directly perceivable by a person but can be one that requires some machine or device for its display.

The Act, however, does not completely do away with the performer’s right. Firstly, it contemplates that the consent of a performer for the incorporation of his performance in a cinematograph film would be in writing, and would not merely be oral.

Further, once a performer gives valid consent for the incorporation of his performance in a film, he would not generally be able to object to the enjoyment by the film’s producer of his performer’s right in it. There are two important caveats under the Act though: firstly, the performer may enter into an agreement to the contrary i.e. there would be no statutory prohibition to his entering into an agreement which stated that he could object to the producer enjoying his performer’s right in the film. Secondly, the producer’s enjoyment of the performer’s right in the film may be interpreted to be limited to the film, so that the producer would not be able to enjoy the performer’s right for the purpose of retaining all the revenues generated through the commercial use of a performance (assuming the performance was live).

Further, the prohibition on the producer’s enjoyment of the performer’s right in respect of commercial use is buttressed by a Proviso which states that ‘notwithstanding anything contained in Section 38A(2), the performer shall be entitled for royalties in case of making of the performances for commercial use’. It thus appears that the intention is to accord to performers the benefits analogous to those which the 2012 Act accords to the authors of underlying works incorporated in sound recordings for live performances. This would make available to performers revenue stream which has thus far not been known to have been accorded to them, particularly since applying the provisions of Sections 18 and 19 to the performers right would give performers an ‘equal share of revenues’ for live performances analogous to the ones which the authors of underlying works in films and sound recordings enjoy.

Illustration 1: S, an upcoming singer was performing at a Christmas party. The audience cannot record the song without taking due permission from S.

Illustration 2: A certain producer can generate revenue through the signing performance of a certain singer, only limited to the film or the album. He is prohibited from generating revenue through using the song as ringtone and caller tune.

No Work Person Amount Use
1 Film (and possibly sound recording) Performer Unspecified Commercial use of their perfomance
2 Non film sound recordings LyricistComposer Royalties to be shared on an equal basis with the assignee of the copyright Any utilization on the underlying works in any form

Q4. What are the relevant provisions with regards to assignment?

Answer: Under Section 18(1) a second proviso has been inserted. It provides that no such assignments shall apply to any mode of exploitation that did not exist or was not known in commercial use when the assignment was made. This amendment strengthens the position of the author if new modes of exploitation of the work come to exist and prevents them from being misused. Section 18(1) provides that the owner of a copyright in any work or prospective owner of a future work may assign the copyright, and the proviso to this sub-section clarifies that in the case of future work, assignment will come into force only when the work comes into existence. Another proviso under S. 18(1), provides that the author of a literary or musical work incorporated in a cinematograph film or sound recording shall not assign the right to receive royalties in any form other than as a part of the film or sound recording. Section 19 relates to the mode of assignment. Sub-section (3) has been amended to provide that the assignment shall specify the ‘other considerations’ besides royalty, if any, payable to the Assignor. Therefore, it indicates that only monetary compensation by way of royalty could lead to assignment. A new sub-section(8)has been inserted making the assignment of copyright void if contrary to the terms and conditions of the earlier assignment to a copyright society in which the author of the work is a member. This amendment is an attempt to streamline the business practices.

CONCLUSION

It is pertinent to note that the lobbyists for the amendment were artists associated with Bollywood. As a result of which the amendments, as time would tell, would probably be beneficial for performers of Bollywood. Following the amendment there have various petitions filed challenging its validity by composers and lyricists themselves. A certain association of Bhojpuri singers claimed, that the said amendment would harm their interests. This is because of the provision for mandatory sharing of royalties with the performers. This would actually in practice reduce their single lump sum advance payment.  The reason would be the fact that regional and classical songs do not enjoy the kind of popularity Bollywood songs do. For similar reasons, people associated offbeat Hindi movies and music would also suffer, as they would have to be commercially successful in order to earn any profits. This would result in ruining of a rich and diverse culture of movies and songs in the country. The only way to avoid compulsory sharing of royalty provision seems to sign a contract which would be governed by the copyright laws of another country.  The chances of this condition being of any help to regional composer and lyricist is slim. The term “equal sharing of royalties” is also vague in the sense that it does not provide for any specific method of for computation of the share of royalties of each one involved in the process. Compulsory joining of copyrights societies is also a coercive measure and its ambiguous if the society is Indian or international.

Copyfight or Copyright?- An analysis on the legal scenario of parallel importation

On 19 March, 2013, in a closely divided 6-3 judgment in Kirtsaeng v. John Wiley, the U.S. Supreme Court held that copyright law could not be used to prevent parallel importation into USA for works that are made outside USA.

The facts of the case are as follows:

In 1997, a student named Supap Kirtsaeng, from Thailand arrived at the Cornell University, U.S. to study. He noticed that the textbooks in the U.S. were considerably more expensive than the same textbooks bought abroad. He started his own import business wherein friends and family, from back home, sent him textbooks, which he resold in the U.S. at a profit. On eBay, according to the evidences procured, he made a profit of $ 1.2 million on selling the imported textbooks.

When John Wiley, a well known publisher in U.S. came to know about this venture of Kirtsaeng, he sued him for copyright infringement. His stance was clear- consumers would prefer low-cost books from Thailand over the expensive textbooks he sold. He made sales through the products manufactured abroad but the re-sale of his paid products was not acceptable to him.

Kirtsaeng referred to the first-sales doctrine, mentioned in the U.S. copyright laws which enables residents of the U.S. to resell legally obtained objects without asking for the copyright owner’s permission. This is enshrined in Section 109 of the U.S. Copyright Act which states: “The owner of a particular copy or phone record lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy of phone record.”  This is called as a ‘right of first sale’. In simpler terms, if you are the copyright holder, you get to control only the first sale of your copyrighted article. If there is legitimate re-sale after the first sale, there is no legal recourse that can be taken.

The High Court held that purchasers have the right to re-sell and distribute that copyrighted article without the consent of the copyright holder, and unauthorized parties can import the same into the U.S., regardless to the fact whether the copy was manufactured in U.S. or abroad. This wide interpretation of Section 109 of the U.S. Copyright Act served as a limitation to Section 602(a)(1) of the same Act which mainly deterred gray market importing. Section 602(a)(1) states: “Importation into the United States, without the authority of the owner of copyright of copies of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies [of the work].”

With reference to this, Section 17 of the same Act states that the owner of copies ‘lawfully made under this title’ may sell or distribute their legally acquired copies without the copyright holder’s permission.

The main question raised in this case was whether the phrase ‘lawfully made under this title’ meant lawfully made in the United States’.

Opinion of the Majority

The Majority Bench, with 6-3, reversed the Second Circuit’s decision holding that the first sale doctrine did not apply to foreign-made goods. They emphasized that the first sale does apply to works made abroad if they have been imported by or with the permission of the copyright-holder.

Further, the key phrase which was under fire, did not have any geographical implication but should be interpreted on the provision per se. Further, they stated that copyright infringement under Section 109(a) would essentially refer to libraries circulating books printer abroad without the copyright holder’s consent, book stores to sell such books, for consumers to sell their used foreign-made cars containing automobile software, for consumers or others to re-sell other foreign-made goods that come in copyrighted packaging, for museums to publicly display foreign works without consent.

Coming again to the key phrase ‘lawfully made in accordance with the title’ purely meant ‘made in accordance with the Copyright Act’. So, interpreting Section 109(a)- ‘first sale doctrine’ would apply to copyrighted work as long as their manufacture met the requirements of U.S. copyright law. Again, essentially, focus was on whether the copies were manufactured abroad with the permission of the copyright-holder.

Interestingly, with this decision, copyright law and trademark law both now stand at the same juncture with respect to the goods which are paid for by the original copyright owner. In simpler terms, copyright & trademark law cannot keep a check on the legitimately made copies for which the copyright holder has been paid and keeping a track on the first sale made.

About the Author: Ms. Madhuri Iyer, Trade Mark Attorney at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com

Follow us on Twitter: @KnKIPLaw .

Infringement of comic characters- Comic con?

Graphical characters are commercialized in the form of cartoons, posters, food products or merchandises like toys and clothes, to name a few. The profits garnered would depend on the popularity of the brand that the graphical character represents. Exploitation of the graphical character can take place if it is not legally protected.

Intellectual property and unfair competition law mainly provide protection to graphic characters. Due to the overlapping effect that the provisions intellectual property and unfair competition law stipulate, the two laws may converge to cover the gaping holes in the law. An advantage from commercialization of characters is that these graphic characters can be transformed into new works, depicting new postures in various colours and different mannerisms, than that in which the character was originally depicted.  It is well known that graphic characters act as entertainment products or services when they are depicted on various merchandises through marketing. Hence, they can be said to be merely suggestive of the products or services for which they are used, but cannot be said to indicate the source of origin.

The best protection strategy is to resort to the comic character being protected by copyright, Trade Mark as well as unfair competition laws.

Comic Characters can be differentiated in two categories: Graphic characters and Fictional characters. Both these categories have different tests to determine whether they can attain copyright protection. A graphic character is one which is depicted by a cartoon or other graphic representation. The physical appearance in the form of characterization is visually seen for the readers. When we come to a fictional character, it is a word portrait where the physical appearance is left to the imagination of the reader. Hence, the difference lies in the pictorial and literary representation.

In the case of Detective Comics v Bruns Publication (111 F 2d 432 (2d Cir, 1940), the defendants had created a character called ‘Wonderman’ which had the same physical and emotional characteristics of the well-known character ‘Superman’. The Court held that the defendants had copied more than the general types and ideas from ‘Superman’ and also appropriated pictorial and literary details and embodiments in the complaint’s copyright. The Court declined to grant protection to general ideas about a character. It is only when the character is sufficiently portrayed in details, protection could be granted. The character has to be converted from being just an idea, to become an expression.

Walt Disney v Air Pirates (581 F.2d 751 (9th Cir, 1978) was a landmark case on character protection. The defendants had portrayed Disney’s characters in incongruous settings. The Court held that a two step test should be applied to determine copyright infringement. First, the visual similarities of the characters are to be determined and secondly, the court would analyse the personalities of the cartoon characters. In this particular case, the defendants were held liable for copyright infringement.

Looking at Indian perspective, the case of Malayala Manorama v. V T Thomas (AIR 1989 Ker 49) can be seen where the Court allowed Mr. Thomas to carry on with his work of drawing the characters of Toms Boban and Molly even after leaving employment. The publishing house was restricted from claiming copyright over the character and continuing to draw the same character after terminating Mr. Thomas’s employment. The High Court had opined that since V T Thomas had created the character before entering into employment with the publishing house, he is the one who should be allowed to carry on the exploitation of his work even after leaving employment. The publishing house did not play any role in creation of the character, and hence they would not get copyright over the character. Their right is limited only to the extent of the particular cartoon strips which were created by V T Thomas during the course of employment for being published in the newspaper. The Court impliedly distinguished between the drawings made using the cartoon character and the actual cartoon character. The Court deciphered that the copyright over the drawings made using the character would vest with the publishing house as an artistic work, while the copyright over the actual character remains with Mr. Thomas.

With respect to determining copyrightability of fictional characters, the case of Anderson v. Stallone (11 USP Q 2d 1161) can be referred to wherein the appellant had written the story based on the character of ‘Rocky’, which appeared in the earlier ‘Rocky’ movie series. He then tried selling the same story to Sylvester Stallone for making ‘Rocky IV’. The appellant denied the allegation of infringement and claimed that ‘Rocky’ was not copyrightable. The court ruled in favour of the defendant saying that the physical and emotional characteristics of ‘Rocky’ were set forth in tremendous detail and hence the character was highly delineated.

But in the case, Warner Brothers Pictures v. Columbia Broad-casting Systems (216 F 2d 945), ‘distinctively delineated’ standard was replaced with the ‘story being told’ standard. In the present case, the Court stated that no character is protectable under copyright law unless the character is extremely well-delineated as to constitute ‘the story being told’ rather than merely being a ‘chess man in the game of telling the story’.  This would mean that the story has to be based on the particular character, which is sought to be protected. This was also applied in Universal City Studios v. Kamar Industries (1982 Copyright L Decisions (CCH) 25, 452), where the character ET was held copyrightable because ‘ET’ was the unique and distinctive character about whom the movie was about.

It can be concluded that copyright protection can be granted only when the court is made to believe beyond doubt that the characters are well delineated, and can be conveyed as an expression, and not an idea. It is significant to note that the creator of the comic character should protect his work even before it becomes popular to evade any chances of exploitation of the Trade Mark.

About the Author: Ms. Madhuri Iyer, Trade Mark Attorney at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com

Smile, you are on camera!

Every celebrity would agree when we say that stardom comes at a price. Their right to privacy is always threatened with the constant paparazzi encroaching upon their personal lives. Unauthorized photography often results in tabloid and defamatory reports in the media, which can sometimes scar the celebrity’s life forever.  From sports persons to movie stars to politicians to Princes and Princesses- they are all celebrities.

The Indian Copyright Act, 1957 defines a ‘performer’ in Section 2(qq). It includes ‘an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance’.

A celebrity is licensable for commercial benefits, since his public image is a monetary asset for himself.  But how are his rights protected? The first resort a celebrity would take would be a passing off (in case of an unregistered trademark) or an infringement action (in case of a registered trademark).  With respect to performer’s rights, on June 8, 2012, an amendment was passed in the Indian Copyright Act. Section 38 provides rights of the performers.  A performer who appears in any performance has a right over such a performance until fifty years from the beginning of the calendar year next following the year in which the performance is made. Further, a person would be deemed to have infringed the performer’s rights if he makes a sound/visual recording with his consent or broadcasts it without permission. Hence, the performer has a right to restrain or claim damages in respect of any distortion, mutilation or other modification of his performance that would be prejudicial to his reputation. Sadly, the rights of the extras in films cannot be protected since they are not covered under the definition of a performer.

Once a performer gives valid consent for the incorporation of his performance in a film, he cannot be able to object to the enjoyment by the film’s Producer of his performer’s right in it. But there are two important limitations here though. One is that there is no statue that prohibits a performer from entering into an agreement which states that he could object to the producer enjoying his performer’s rights in the film. Next, the Producer’s enjoyment of the performer’s right in the film is limited to the film, so the Producer would not be able to have the benefit of the performer’s right for the purpose of out-film use such as in ring tones or public performances, which is used for the promotion of his film. Section 13 (4) provides that separate creative components within a film are copyrightable.

In Milder v Ford Motor Co & Others (1988) 849 F.2d 460 (9th Cir), the advertising company wanted to use a song by Bette Milder in a commercial for Ford cars. The license for the song itself was accepted but Milder turned down the request for permission to use the song in her version. The Agency then contacted Ula Hedwig, a singer who had been a back-up vocalist for Milder and asked her to sing the song under the instructions ‘to sound as much as possible like the Bette Milder record’. Milder sued when the commercial was aired on television.  The defendants argued that this was in accordance with Section 3344 of the Civil Code since they had not used the ‘name, voice, signature, photograph or likeness’ of Milder rather they had used the voice of Ula Hedwig. The court held that the defendants were liable since by using a sound alike, they had clearly sought a commercial association with an attribute of Milder’s identity. This was held as the right of publicity,that grants entertainers or public figures exclusive control over the commercial exploitation of their names and other aspects relating to them.

In India, there is a need for such legislation in order to protect rights of a performer and his different shades. With the advent of technology, now any film star’s image can be created by animation and be reproduced in unauthorized usage in film footages. Another burning question left unanswered in India is whether the author has copyright protection over digitally made graphics or cartoons. If the digital image is of a well-known personality, is there a conflict between the author’s right in his creation and the actor’s right in his image.

In India, it is only through litigation that the celebrity’s rights are protected. Heavy amount of damages have been awarded to the celebrities who have won such suits. But there is an urgent need for the legislature to recognize the astounding gaps in the Copyright Act and recognize the commercial and moral rights needed to protect the image of the celebrities.

About the Author: Ms. Madhuri Iyer, Trade Mark Attorney at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com

Viacom vs. YouTube

Technology seems to have found its place in the courtrooms also, these days. Viacom, an American global mass media company, sued YouTube, a video-sharing site owned by Google on the basis that YouTube had indulged in rampant intentional copyright infringement of videos which were originally owned by Viacom. This suit was for a mind boggling $1 billion.

YouTube, being popular among the masses, gets 800 million users a month and roughly 60 hours of new videos are uploaded to the site every minute. Viacom filed a complaint against YouTube on March 13, 2007, alleging that the later had uploaded the copyrighted material owned by Viacom. Over 150,000 clips of Viacom were viewed more than 1.5 billion times on YouTube including popular shows like South Park, without the permission of Viacom. The allegation included that YouTube did this to earn more revenue through their advertisements and traffic incurred on their website.  The English Premier League, The Rodgers and Hammerstein Organization and the Scottish Premier League later on, were merged in the suit as the other complainants.

In July 2008, during the pre-trial phase, a U.S. District Court for the Southern District of New York ruling came in favour of Viacom, stating that details of all the users of YouTube had to be tracked by them. There was an uproar over this ruling that the users were now exposed and their privacy was infringed upon. However, Judge Louis Stanton was of the opinion that YouTube is not a ‘video tape service provider’ as provided in the Video Privacy Protection Act 1988 so the data of the users is not protected under this Act. However, later, Google agreed to hand over the data of the users to Viacom and the other complainants, but only after making it anonymous. Although, the setback was that the data of the employees of both the parties, were handed over, without any anonymity.

Viacom argued that both YouTube and its owner Google knew about the infringement but they did not do anything about it. Google and YouTube retaliated back saying that they were entitled to ‘safe harbour’ protection under Digital Millenium Copyright Act (DMCA) since they had insufficient notice of the alleged offences. This defense will not be available to someone who derived a financial benefit from copyrighted material if he had the right and ability to control it.

Under the Act, Web hosting companies are not required to keep a track on every file downloaded by their users.  The DMCA is flawed since it does not cover YouTube. YouTube claimed that they did not know about the infringement and that they do not keep a check on the videos uploaded. This is a completely flawed argument since YouTube removes videos which are reported as spam, if they have pornographic content or if the original owner restricted permission for the public at large.

On June 23rd 2010, Judge Stanton decided that , “When YouTube was given notices, it removed the material. It is thus protected from liability” under a provision in the Digital Millenium Copyright Act (DMCA). He further stated that while there was an occasion in 2007 when Viacom sent YouTube a single takedown notice for 100,000 videos and the later took them down by the next day.

While YouTube clearly emerged victorious in this case, this decision followed established judicial precedents that online services like YouTube are protected when they work cooperatively with copyright holders to help them manage their rights online.

Viacom has said that it plans to appeal against this decision.  Maybe then the DMCA will be interpreted in a more liberal manner. You can be sure, that all the online service providers would be watching this case, whenever the appeal happens.

 

About the Author: Ms. Madhuri Iyer, Trade Mark Attorney at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com