Case BriefsHigh Courts

Bombay High Court: In a very important case relating to rights of an owner of the copyright in sound recordings, S.J. Kathawalla, J. issued a permanent injunction against Wynk Music restraining it from infringing the copyright if Tips Industries held by it in over 25,000 songs. The Court was faced with determining the issue of easy/ready access to music /sound recording vis-a-vis the restrictions which can be put on the same by the bonafide owners of copyright in the said music/sound recording.

Facts

Tips Industries — owner of copyright in over 25,000 sound recordings (“Repertoire”) — licensed its Repertoire to Wynk Music, owner and operator of Wynk — an over the top service available on the internet through which, the subscribers, upon payment of a subscription fee, can listen to numerous sound recordings and audio-visual recordings including Tips’ Repertoire. The Repertoire was licensed to Wynk by the copyright society — Phonographic Performance Ltd. (“PPL”). However, the said license expired on 31-8-2016.

The negotiations which ensued thereafter for extending the license failed, and Tips requested Wynk to deactivate its Repertoire from their platform — which request according to Tips, was not complied with by Wynk. Thereafter, Tips issued a cease and desist notice to Wynk on 17-11-2017. In reply, Wynk invoked Section 31-D of the Copyright Act, 1957, claiming that they are a broadcasting organisation entitled to a statutory license under the said section to communicate the work to the public by way of a broadcast of Tips’ musical work and sound recordings, Consequently, on 29-1-2018, Tips filed two suits against Wynk for infringement of copyright, disputing Wynk’s right to avail  statutory license provided for by Section 31-D and claiming permanent injunction, restraining them from — (a) communicating to the public Tips’ Repertoire; and (b) giving on commercial rental/sale, Tips’ Repertoire of songs by way of providing download services/features.

Discussion 

The High Court held a detailed discussion on several issues as framed before it. After considering various provisions of the Copyright Act and several case laws on the subject, the Court answered the issues as follows:

(a) It is evident that Wynk through its purchase feature and download feature, is enabling its customers to store physical files/electronic copies Tips’ Repertoire on their devices in abrogation of the exclusive rights granted to Tips under Section  14(1)(e)[copyright in respect of sound recording] of the Act.

(a-i) The defence provided in Section 52(1)(a)(i) is not available to Wynk at all. The defence of fair use may be available in a given case, to an individual user. The activities of Wynk can never be termed as ‘private’ or ‘personal use’ or ‘research’. Wynk is clearly selling and /or commercially renting sound recordings including, iner alia, Tips’ Repertoire for their own commercial benefit.

(a-ii) The provisions of Section 52(1)(b) are fairly straightforward. It is clear from the nature of Wynk’s activities that the offline storage, either permanent or temporary, of electronic copies of the sound recordings on the customer’s devices, is the primary selling point/unique object of Wynk’s business. The electronic storage of Tips’ sound recording on the platform of Wynk can neither be termed as ‘transient’ nor ‘incidental’. The sound recordings may be stored on the customers’ devices during the tenure of their subscription or as per their discretion, as the case may be. In such circumstances, the storage of the sound recordings cannot be said to be incidental or transient to services of Wynk.

(a-iii) Section 31-D contemplates communication to public by way of broadcast of sound recordings only, and not their commercial rental and/ or sale. Since the services (download/purchase feature) provided by Wynk are in the nature of commercial rental and/or sale of sound recordings, they do not fall within the purview of Section 31-D of the Act and Wynk is prohibited from exercising a statutory license apropos thereto.

(b) Provisions of Section 31-D read with Rules 29 to 31 of the Copyright Rules, 2013 coupled with the legislative history preceding the passage of Copyright Amendment Act, 2012 clearly support the submission that Section 31-D contemplates only television and radio broadcasting and to internet broadcasting. Moreover, prior determination of royalty rates is a necessary precondition for the exercise of rights in respect of a Statutory License under Section 31-D. Therefore, even assuming that ‘internet broadcasting’ was covered within the ambit of Section 31-D. Wynk could not have exercised Statutory License under the said section in the absence of pre-fixation of the rate of royalty by the Appellate Board.

(c) Rule 29 of the Copyright Rules, 2013 and its proviso which state that prior fixation of royalty rates is a necessary precondition to the exercise of Statutory License under Section 31-D was challenged as invalid by Wynk. However, the challenge was dismissed and the rule was held valid.

(d) Wynk relied on Government of India’s Office Memorandum dated 5-9-2016 which clarified: “… in view of the above, the words any broadcasting organization desirous of communicating to the public may not be restrictively interpreted to cover only radio and television broadcasting, as the definition of Broadcast read with communication to the public appears to include all kinds of broadcast including internet broadcasting. Thus, the provisions of Section 31-D of the Copyright Act, 1957 are not restricted to radio and television broadcasting only but cover internet broadcasting also.” It was held that the said Memorandum lacks a ‘statutory flavour’ and cannot prevail over an interpretation which is drawn under the Act and the Rules. The interpretation of Section 31-D in the said Memorandum is inconsistent with the interpretation drawn by this Court and this Court is not bound by the said Memorandum.

(e) High Court has no jurisdiction to grant a Compulsory License which is within the exclusive domain of the Copyright Board. Furthermore, permitting Wynk to deposit money whilst permitting it to use Tips’ Repertoire for its commercial activities would amount to a grant of a Compulsory License, for which the High Court, being a Civil Court doesn’t have the jurisdiction.

(f) Tips’ entire Repertoire is being widely exploited by Wynk without payment of any royalty. The balance of convenience was in favour of Tips. An injunction order restraining Wynk from using the Tips’ Repertoire would preclude them from using 25,000 songs out of 2.6 million songs. An injunction order against Wynk shall not bring its business to a standstill or cause irreparable injury.

Held

Insofar as the download and purchase feature of Wynk’s activities are concerned, the same amount to infringement of Tips’ rights provided under Section 14(1)(e)(ii) of the Copyright Act; insofar as the on-demand streaming services are concerned, the same amount to infringement of Tips’ rights provided in Section 14(1)(e)(iii) of the Copyright Act; and the provisions of Section 31-D of the Act are not applicable to internet broadcasting.

The Court considered its necessary to grant reliefs in favour of Tips industries in terms of the permanent injunction claimed by it as mentioned above. The present notice of motion were therefore allowed.[Tips Industries Ltd. v. Wynk Music Ltd., Notice of Motion (L) No. 197 of 2018 in Commericial Suit IP (L) No. 114 of 2018, decided on 23-04-2019]

Case BriefsHigh Courts

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

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

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

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

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

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

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

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

Case BriefsForeign Courts

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

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

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

Case BriefsSupreme Court

Supreme Court: In an appeal filed by LexisNexis against the injunction granted by the Allahabad High Court on 1.4.2014 in favour of Eastern Book Company, a Bench of Ranjan Gogoi and R.V. Ramana, JJ disposed of the appeal by a short order in the following manner:

The appellants will be at liberty to publish, sell and distribute the raw judgments of the Supreme Court of India and other Courts obtained from whichever source along with their own head-notes, editorial notes, paraphrasing, explanatory notes, etc. as laid down in Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1. [Relx India Pvt. Ltd. v. Eastern Book Company, (2017) 1 SCC 1.]

Pratibha M. Singh, Sr. Adv. and Mr. Vikas Mehta, Adv. appeared for the appellants  and K.V. Viswanathan, Sr. Adv., Anitha Shenoy, Adv., Mr. Harshavardhan Reddy, Adv. Ms. Srishti Agnihotri, Adv. Mr. Dhananjay Bhaskar Roy, Adv. Mr. Rajshekhar Rao, Adv. appeared for the Respondents.

The Supreme Court in Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1 had granted copyright protection to Supreme Court Cases (SCC) in the following manner:

This extract is taken from Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1 at pages 114-15

“61. However, the inputs put in the original text by the appellants in (i) segregating the existing paragraphs in the original text by breaking them into separate paragraphs; (ii) adding internal paragraph numbering within a judgment after providing uniform paragraph numbering to the multiple judgments; and (iii) indicating in the judgment the Judges who have dissented or concurred by introducing the phrases like “concurring”, “partly concurring”, “partly dissenting”, “dissenting”, “supplementing”, “majority expressing no opinion”, etc., have to be viewed in a different light. The task of paragraph numbering and internal referencing requires skill and judgment in great measure. The editor who inserts para numbering must know how legal argumentation and legal discourse is conducted and how a judgment of a court of law must read. Often legal arguments or conclusions are either clubbed into one paragraph in the original judgment or parts of the same argument are given in separate paragraphs. It requires judgment and the capacity for discernment for determining whether to carve out a separate paragraph from an existing paragraph in the original judgment or to club together separate paragraphs in the original judgment of the Court. Setting of paragraphs by the appellants of their own in the judgment entailed the exercise of the brain work, reading and understanding of subject of disputes, different issues involved, statutory provisions applicable and interpretation of the same and then dividing them in different paragraphs so that chain of thoughts and process of statement of facts and the application of law relevant to the topic discussed is not disturbed, would require full understanding of the entire subject of the judgment. Making paragraphs in a judgment could not be called a mechanical process. It requires careful consideration, discernment and choice and thus it can be called as a work of an author. Creation of paragraphs would obviously require extensive reading, careful study of subject and the exercise of judgment to make paragraph which has dealt with particular aspect of the case, and separating intermixing of a different subject. Creation of paragraphs by separating them from the passage would require knowledge, sound judgment and legal skill. In our opinion, this exercise and creation thereof has a flavour of minimum amount of creativity.

62. The said principle would also apply when the editor has put an input whereby different Judges’ opinion has been shown to have been dissenting or partly dissenting or concurring, etc. It also requires reading of the whole judgment and understanding the questions involved and thereafter finding out whether the Judges have disagreed or have the dissenting opinion or they are partially disagreeing and partially agreeing to the view on a particular law point or even on facts. In these inputs put in by the appellants in the judgments reported in SCC, the appellants have a copyright and nobody is permitted to utilise the same.

63. For the reasons stated in the aforesaid discussion, the appeals are partly allowed. The High Court has already granted interim relief to the appellant-plaintiffs by directing that though the respondent-defendants shall be entitled to sell their CD-ROMS with the text of the judgments of the Supreme Court along with their own headnotes, editorial notes, if any, they should not in any way copy the headnotes of the appellant-plaintiffs; and that the respondent-defendants shall also not copy the footnotes and editorial notes appearing in the journal of the appellant-plaintiffs. It is further directed by us that the respondent-defendants shall not use the paragraphs made by the appellants in their copy-edited version for internal references and their editor’s judgment regarding the opinions expressed by the Judges by using phrases like “concurring”, “partly dissenting”, etc. on the basis of reported judgments in SCC. The judgment of the High Court is modified to the extent that in addition to the interim relief already granted by the High Court, we have granted the abovementioned additional relief to the appellants.”

Upon scrutiny of the judgments in the LexisNexis database, copyright protected elements were found in the versions of judgments of the Supreme Court in LexisNexis.

Eastern Book Company sued LexisNexis and the District Judge, Lucknow confirmed the ad-interim injunction in these terms:

98. The application for temporary injunction moved by the plaintiffs is allowed and during the pendency of the Suit, the defendants, their assigns and business franchisees, licensees, distributors, agents etc. are retrained from infringing the copyrights in the literary work of the plaintiffs in their law report “Supreme Court Cases” (SCC) and from selling, distributing or otherwise making available to the public, either as CD ROms or through their websites on the Internet or through any tablet or by any other means, copies of its law reports and databases which infringe the copyrights of the plaintiffs in and to the law reports titled Supreme Court Cases (SCC).” [Eastern Book Company v. Reed Elsevier Pvt. Ltd., RS No. 134/2012 dated January 1, 2014]

This injunction was confirmed by a Division Bench of the Allahabad High Court on 1.4.2014 in these terms:

“In the light of the aforesaid judgment, we arrive at conclusion that the exercise and creation of minimum amount of creativity has to be viewed in the context of journals to journals published by the parties and in order to examine it several facts have to be considered by the trial court in the light of the evidences adduced by the parties during the course of the trial. Therefore, keeping in view the ingredients which are necessary to examine the case for the purpose of temporary injunction, we are of the view that at this stage the respondents/ plaintiffs had prima facie case in their favour to issue temporary injunction against the appellants/defendants so that skill applied by their editor in editing the journals should not be misused by the appellants/ defendants.

Thus, we are of the definite opinion that the learned trial court has correctly appreciated the application for temporary injunction filed by the respondents/ plaintiffs and allowed it which do not require interference by this Court.

However, the appellants are permitted to publish, sell and distribute through their websites and C.D.Rom/ DVD the judgments pronounced by the Hon’ble Supreme Court and other Courts but along with their head notes and editorial notes with all precautions as has been cautioned by the Hon’ble Supreme Court in Modak’s case ( supra).” [Reed Elsevier Pvt. Ltd. v. Eastern Book Company, FAFO 134 of 2014 decided on 1.4.2014]

Significantly, in furtherance of the above directions, the Supreme Court directed the expeditious disposal of the suit and vacated the bar against the contempt proceedings, pending against LexisNexis, before the District Court, Lucknow.

On an earlier date (25.10.2016) the Court had passed this order:

“The prayers made in IA Nos. 5 and 6 (filed by the appellants), in our considered view, ought not to be allowed at this stage inasmuch as the grounds in support of prayer ‘c’ of IA No. 5 on which notice has been issued have been urged before the learned trial Court and the appellate court. Therefore, consideration of the said grounds and any finding thereon to sustain the relief so as to prayer ‘c’ of I.A. No. 5 is concerned, was amount to pre-judging the appeal.

However, to avoid any prejudice and in view of the assurance given by the learned counsel  for both the sides that the matter can be disposed of within a short time frame, we order hearing of civil appeal on 23rd November, 2016. The trial court and the High Court of Allahabad will take into account the present order of this Court before deciding whether it should proceed with the contempt case(s) pending before it.” [Reed Elsevier India Pvt. Ltd. v. Eastern Book Company. 2016 SCC OnLine SC 1380, decided on 25.10.2016]

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