REMEDIES AGAINST INFRINGEMENT OF COPYRIGHT AND ENFORCEMENT ACTIONS

REMEDIES AGAINST INFRINGEMENT OF COPYRIGHT AND ENFORCEMENT ACTIONS

Sana Singh Sana Singh


24/07/2020

 

The Act provides the following remedies for copyright infringement:

  • Civil
  • Criminal
  • Administrative

 

However, it is only the first two remedies, civil and criminal, which are of any real practical importance. Under civil remedies, one may file for interlocutory injunction, pecuniary remedies, Anton Piller orders, Mareva injunction and accounts rendition, delivery of infringing copies and damages for conversion. Under criminal remedies, one may file for imprisonment and fine, seizure of infringing copies and delivery of them to the owner. Under administrative remedies, one may file for moving the Registrar to ban the import of infringing copies and delivery of the confiscated infringing copies to the owner.

 

There are specific remedies for online copyright infringement as well. A court can direct that infringing websites be blocked by internet service providers (ISPs) either as part of a John Doe order or a website-blocking order [RK Productions v BSNL (2012) 5 LW 626]. John Doe or Ashok Kumar orders are ex-parte interim injunctions issued against infringers. John Doe orders saw a change when the Bombay High Court passed an order dated July 26, 2016 in relation to the movie ‘Dishoom’ [Eros International and Another Vs BSNL & Others, Notice of Motion (L) No. 2147 Of 2016 in  Suit (L) No. 751 OF 2016]. This order recognises the impact of Ashok Kumar orders on unknown defendants as it challenges to balance the ‘competing rights’. The order lays down a process to minimise the negative impacts of Ashok Kumar orders and tailors down blocking from entire websites. The order sets in place a mechanism that provides for selective blocking of content, verification of the list of URLs as well as safeguards for the unknown defendants.  Such a mechanism helps ensure that freedom of speech online is not trampled in the fight against online piracy.

 

The Act says that any person who circumvents an effective technological measure applied for the purpose of protecting any of the rights conferred by the Act, with the intention of infringing such rights, shall be punishable.

 

The Act prescribes that the intentional infringement or abetment of an infringement of the copyright in a work would be considered as criminal act. Criminal remedies for copyright infringement include:

  • Punishment through imprisonment which may not be less than six months but which may extend to three years
  • Fines which shall not be less than Rs.50,000 and which may extend to Rs.200,000
  • Search and seizure of the infringing goods including plates, which are defined as including blocks, moulds, transfers, negatives, duplicating equipment or any other device used or intended to be used for printing or reproducing copies of the work
  • Delivery up of infringing copies or plates to the owner of the copyright

 

The time limit for bringing a copyright infringement claim is three years from the date of infringement. Where the cause of action for filing a suit for infringement of copyright is a recurring one or continuing in nature, the limitation period of three years would be taken to commence from the date of such last infringement.

 

Under the Act, the plaintiff can seek recovery of all three remedies, namely

  • account of profits
  • compensatory damages
  • conversion damages, which are assessed on the basis of value of the article converted

 

Every suit or civil proceeding in respect of the infringement of copyright can be instituted before a District Court or above. The Copyright Board is a body constituted by the Central Government to discharge certain judicial functions under the Act. The Board is entrusted with the task of adjudication of disputes pertaining to copyright registration, assignment of copyright, grant of licences in respect of works withheld from public, unpublished Indian works, production and publication of translations and works for certain specified purposes. It does not deal with copyright infringement cases or with criminal piracy of copyright works.

 

In India, the Copyright Office is the government body responsible for promoting and enforcing copyright. The Office is under the control of the Registrar of Copyrights who acts under the direction of the Central Government. Specifically, the Copyright Office is under the aegis of the Department of Higher Education, Ministry of Human Resource Development.

 

In India, there are some registered copyright societies which undertake the management and protection of copyright in works of authors and other owners of such works.

 

Some of them are listed below:

  • Musical works: The Indian Performing Right Society Limited (IPRS)
  • Sound recording: Phonographic Performance Limited (PPL)
  • Reprographic (photo copying) works: Indian Reprographic Rights Organization (IRRO)
  • Performers’ (Singers’) Rights: Indian Singers’ Rights Association (ISRA)
REGISTRATION OF COPYRIGHT AND INFRINGEMENT OF COPYRIGHT

REGISTRATION OF COPYRIGHT AND INFRINGEMENT OF COPYRIGHT

Sana Singh Sana Singh


24/07/2020

 

Under Indian Copyright law, registration is not a pre-requisite for acquiring a copyright in a work. A copyright in a work is created when the work is created and given a material form, provided it is original.

 

However, the Act provides a procedure for copyright registration. Such registration does not confer any special rights or privileges with respect to the registered copyrighted work. It is however suggested that the owner of such original works register it as the certificate of registration of copyright and the entries made on the Register serve as prima facie evidence in a court of law when a dispute relating to ownership of copyright arises. Copies of the entries and extracts from the Register that are certified by the Registrar of Copyrights are admissible as evidence in all courts. Thus, registration only raises a presumption that the person in the Register is the actual author, owner or rights holder. In infringement suits and criminal proceedings, when time is of essence to obtain urgent orders, registration is of tremendous help.

 

Rights related to a work can be further assigned, transferred or licensed. An assignment of copyright shall be valid only when it is in writing, signed by the assignor or by his/her duly authorised agent.

 

The moral rights vested with the author or the creator cannot be transferred or assigned.

 

Further, a copyright is infringed if a person without an appropriate permission or licence does anything that the owner of the copyright has an exclusive right to do. There are two classes of infringement: primary infringement and secondary infringement.

 

Primary infringement occurs where a person performs any of the following acts without the consent of the rights holder.

  • Copying
  • Issuing copies of the work to the public
  • Renting or lending the work to the public
  • Performing, showing or playing a copyright work in public
  • Communicating the work to the public
  • Making an adaptation of a copyright work or doing any of the acts listed above in relation to an adaption.

 

Secondary infringement occurs where a person, with knowledge or reasonable grounds for such knowledge, carries out any of the following actions in relation to infringing copies of the work:

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

 

There are certain acts permitted with respect to copyright works which act an exceptions to infringement of copyright. Under the Act there are certain circumstances which constitute fair dealing, which is not considered an infringement.

 

The lists of non-infringing acts are summed up below:

  • Parody – There must be no intention to compete with the copyright holder, and the motive for use of copyrighted matter must not be improper.
  • Private use, including research – Applicable only to literary, dramatic, musical or artistic works.
  • Criticism or review, Reporting of current events, through newspaper, magazine or similar periodical, photographs or film
  • Reproduction of any work for the purpose of judicial proceedings or a report of judicial proceedings, or in any work produced by any house of any Legislature, exclusively for the use of the members of that Legislature.
  • The making of copies or adaptation of a computer program in order to utilise the computer program for the purposes for which it was supplied; or to make back-up copies purely as a temporary protection against loss, destruction or damage.
  • Any act done to achieve operating inter-operability of an independently created computer program with other programs by a lawful possessor of a computer program.
  • The making of copies or adaptation of the computer program from a personally legally obtained copy for non-commercial personal use.
  • The reproduction of any literary, dramatic or musical work in a certified copy made or supplied in accordance with any law for the time being in force.
  • The reading or recitation in public of any reasonable extract from a published literary or dramatic work.
  • The publication in a collection, mainly composed of non-copyright matter, bona fide intended for the use of educational institutions, of short passages from published literary or dramatic works, not themselves published for the use of educational institutions.
  • Reproduction of a literary, dramatic, musical or artistic work by a teacher or a pupil in the course of instruction; or as part of the questions to be answered in an examination; or in answers to such questions.
  • The performance, in the course of the activities of an educational institution, of a literary, dramatic or musical work by the staff and students of the institution, or of a cinematograph film or a sound recording. (The audience must be limited to such staff and students, the parents and guardians of the students and persons directly connected with the activities of the institution or the communication to such an audience of a cinematograph film or sound recording)
  • The making of sound recordings in respect of any literary, dramatic or musical work, if sound recordings of that work have been made by or with the licence or consent of the owner of the right in the work, or the person making the sound recordings has given a notice of his intention to make the sound recordings, has provided copies of all covers or labels with which the sound recordings are to be sold, and has paid in the prescribed manner to the owner of rights in the work royalties in respect of all such sound recordings to be made by him.
  • The causing of a recording to be heard in public by utilising it, in an enclosed room or hall meant for the common use of residents in any residential premises (not being a hotel or similar commercial establishment) as part of the amenities provided exclusively or mainly for residents therein; or as part of the activities of a club or similar organisation which is not established or conducted for profit; or as part of the activities of a club, society or other organisation which is not established or conducted for profit.
  • The performance of a literary, dramatic or musical work by an amateur club or society, if the performance is given to a non-paying audience, or for the benefit of a religious institution.
  • The reproduction in a newspaper, magazine or other periodical of an article on current economic, political, social or religious topics, unless the author of such article has expressly reserved to himself the right of such reproduction.
  • The publication in a newspaper, magazine or other periodical of a report of a lecture delivered in public.
  • The reproduction, for the purpose of research or private study or with a view to publication, of an unpublished literary, dramatic or musical work kept in a library, museum or other institution to which the public has access.
  • The storing of a work in any medium by electronic means by a non-commercial public library for preservation, if the library already possesses a non-digital copy of the work.
  • The making of not more than three copies of a book (including a pamphlet, sheet of music, map, chart or plan) by or under the direction of the person in charge of a non-commercial public library for the use of the library if such book is not available for sale in India.
  • The reproduction or publication of any matter which has been published in any Official Gazette except an Act of a Legislature, or any Act of a Legislature subject to the condition that such Act is reproduced or published together with any commentary thereon or any other original matter, or the report of any committee, commission, council, board or other like body appointed by the Government if such report has been laid on the Table of the Legislature, unless the reproduction or publication of such report is prohibited by the Government, or any judgment or order of a court, tribunal or other judicial authority, unless the reproduction or publication of such judgment or order is prohibited by the court.
  • The production or publication of a translation in any Indian language of an Act of a Legislature and of any rules or orders made thereunder.
  • The making or publishing of a painting, drawing, engraving or photograph of a work of architecture or the display of a work of architecture.
  • The making or publishing of a painting, drawing, engraving or photograph of a sculpture, or other artistic work failing under Section 2(c)(iii) of the Act, if such work is permanently situated in a public place or any premises to which the public has access.
  • The inclusion in a cinematograph film of any artistic work permanently situated in a public place or any premises to which the public has access; or any other artistic work, if such inclusion is only by way of background or is otherwise incidental to the principal matters represented in the film.
  • The use by the author of an artistic work, where the author of such work is not the owner of the copyright therein, of any mould, cast, sketch, plan, model or study made by him for the purpose of the work.
  • The performance of a literary, dramatic or musical work or the communication to the public of such work or of a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the Central Government or the State Government or any local authority.
  • The adaptation, reproduction, issue of copies, or communication to the public of any work in any accessible format by any person to facilitate persons with disabilities to access the works; or any organisation working for the benefit of persons with disabilities in the case that the normal format prevents the enjoyment of such work by such persons.

 

Further, under the Act, hypertext linking does not per se constitute copyright infringement; however, reproducing any copyrighted work, issuing copies of the work to the public or communicating the work to the public could amount to copyright violation. But in the case of hyperlinking, the linking site is not reproducing any work. If the reproduction occurs, it is at the user’s end, who visits the linked page via the link. Technically, the linking site is only informing people about the presence of the work and giving the address of the site where the work is present. It is at the user’s discretion to access the work by clicking the link. But, nevertheless, the linking site is definitely aiding in the distribution of the work.

 

Under the Act, an infringement of copyright is actionable by the copyright owner. When copyright is licensed, the authority to bring an infringement action depends on the type of licence involved. An exclusive licence authorises the licensee to exercise a right which would otherwise be exercisable exclusively by the copyright owner. One such right is the right to bring an infringement action. A non-exclusive license may also authorise the licensee to bring an infringement action but only where the licence is in writing and signed by the copyright owner and expressly grant.

TERM AND OWNERSHIP OF COPYRIGHT

TERM AND OWNERSHIP OF COPYRIGHT

Sana Singh Sana Singh


24/07/2020

The duration of protection for copyright works varies according to the type of work and the date of creation of the work. It is divided as follows:

 

Literary, dramatic, musical or artistic works:

The Copyright expires after 60 years from the end of the calendar year in which the author dies. Where a work has a joint author/co-author, it expires 60 years from the end of the calendar year in which the co-author dies. Where the author’s identity is unknown, copyright expires 60 years from the end of the calendar year in which the work was first published. In a case where there are joint authors/co-authors, and the identity of one author is known and the identity of the other is unknown, the copyright expires 60 years from the end of the calendar year in which the known author dies.

 

Cinematograph films:

The Copyright shall subsist until 60 years from the beginning of the calendar year following the year in which the film is made available to the public.

 

Sound recordings:

The Copyright shall subsist until 60 years from the beginning of the calendar year following the year in which the sound recording is made available to the public.

 

Further, the author’s moral right, which is a right against distortion, is available even after the expiry of the term of copyright.

 

The ownership of copyright is dependent on various factors. The concept of “first owner” is quite important and may be determined as follows:

In the case of a literary, dramatic or artistic work (which includes a photograph, painting or a portrait) created during the course of employment or under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the author of such a publication shall, in the absence of a contract to the contrary, be the first owner of copyright.

 

However, such ownership shall vest with the proprietor of the publication only for the limited purpose of publishing the work or a reproduction of the work in a publication and, for all other purposes, the copyright shall vest with the author of the work.

 

If a photograph, painting or portrait has not been made for the purposes of publication in a periodical but has been made for any other purpose, then in the absence of a contract to the contrary, the copyright in such work shall vest with the person at whose instance the work was created.

 

In the case of a cinematograph film, in the absence of a contract to the contrary, the copyright in the cinematograph film shall vest with the producer of the film (i.e. the person at whose instance the film was made for a valuable consideration).

 

In the case of a work made during the course of employment or under a contract of service or apprenticeship, the employer shall, in the absence of a contract to the contrary, be the first owner of copyright. In the case of a government work, the copyright in the work shall vest with the Government.

 

The copyright can be jointly owned as well. As per the Act, work of joint authorship means a work produced by the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author or authors. Joint authors fully enjoy all of the rights granted by the Act, as mentioned previously. The term of copyright of a work of joint authorship is calculated with respect to the author that dies last.

Basics of Copyright Law

Basics of Copyright Law

Sana Singh Sana Singh


24/07/2020

The Copyright Act 1957 (the Act), supported by the Copyright Rules 1958 (the Rules), is the governing law for copyright protection in India. Substantial amendments were carried out to the Copyright Act in 2012. India follows a common law legal system, so relies on case law to interpret and set precedents in law and so the judicial decisions contribute to the sources of copyright law in India. India is a member of the Berne Conventions and Universal Copyright Convention. The Government of India has also passed the International Copyright Order, 1999. According to this Order, any work first published in any country that is a member of any of the above conventions is granted the same treatment as if it was first published in India.

 

Copyright subsists throughout India in the following classes of works:

  • original literary, dramatic, musical and artistic works;
  • cinematograph films;
  • sound recording

These aforesaid broad categories can be summarised as follows:

 

Literary works

The term literary works” encompasses all works that are in print or writing, irrespective of the quality or style of the work. Literary work refers not only to works of prose and poetry, but anything that would be under the ambit of literature”. However, there will be no copyright if the work is merely a collection of words, the collection of which involved no literary skill. In India, a computer program is treated as a literary work and is protected as such.

 

Dramatic works

A dramatic work includes any piece for recitation, choreographic work or entertainment in dumb show, the scenic arrangement or acting form of which is fixed in writing or otherwise but does not include a cinematograph film.

 

Musical works

Musical work means a work consisting of music and includes any graphical notation of such work but does not include any words or any action intended to be sung, spoken or performed with the music. A musical work need not be written to enjoy copyright protection.

 

Artistic works

Artistic work means a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; a work of architecture; and any other work of artistic craftsmanship. Any colour scheme, layout or arrangement of any alphabets or features qualifies as an artistic work.

 

Cinematograph films

Cinematograph film means any work of visual recording on any medium produced through a process from which a moving image may be produced by any means and includes a sound recording accompanying such visual recording; “cinematograph” shall be construed as including any work produced by any process analogous to cinematography including video films.

 

Sound recordings

Sound recording means a recording of sounds from which sounds may be produced regardless of the medium on which such recording is made or the method by which the sounds are produced. A phonogram and a CD-ROM are sound recordings.

 

Any work which falls under any of the categories mentioned above qualifies for copyright protection. The work sought to be copyrighted must be original; however, it is not necessary that the work should have some original thought or idea. The law is only concerned about the originality of the expression of thought.

 

A copyright grants protection to the creator and his or her representatives (by way of an agreement), for the works and prevents such works from being copied or reproduced without their consent.

 

The creator of a work can prohibit or authorise anyone to:

  • reproduce the work in any form, such as print, sound, video, etc.;
  • use the work for a public performance, such as a play or a musical work;
  • make copies/recordings of the work, such as via compact discs, cassettes, etc.;
  • broadcast it in various forms;
  • translate the same to other languages

 

Further, moral rights which are the rights to be identified as an author of a work or to object to derogatory treatment of a work, are also protected. The Act grants an author special rights which exist independently of the author’s copyright, and subsist even after the assignment (whole or partial) of said copyright. The author has the right to:

  • claim authorship of the work
  • restrain or claim damages with respect to any distortion, mutilation, modification, or other act in relation to the said work if such distortion, mutilation, modification, or other act would be prejudicial to their honour or repute.

 

These special rights can also be exercised by the legal representatives of the author. The moral right against distortion is available to the author even after the expiry of the term of copyright and not only against distortion, mutilation etc. done during the term of copyright of the work.

INFRINGEMENT AND PASSING OFF OF TRADEMARK

INFRINGEMENT AND PASSING OFF OF TRADEMARK

Sana Singh Sana Singh


04/07/2020

 

An infringement action occurs on the invasion of a statutory right of the registered trademark holder. Such action may be instituted when a person uses a mark which is identical or deceptively similar to that of the registered proprietor. There are broadly two types of remedies a person has in such situations:

 

  • Infringement Suit: The registered owner of the mark has the exclusive right to institute a suit before a court having civil jurisdiction. While infringement of a trademark is a continuing offence, a suit may be filed within 3 years’ time from the date of the infringement or within 3 years’ time from the date of knowledge of infringement.

 

  • Passing off: An action for passing off is a common law remedy which allows an unregistered owner of a mark to seek civil action against misrepresentation, whether intentional or unintentional, on part of the infringer. The basis of a passing off action is that the plaintiff is likely to or has already suffered damages/ economic loss due to such misrepresentation.

 

  • Criminal Action: Chapter XII of The Trade Marks Act, 1999 provides for imprisonment for a term not less than six months which may extend up to three years and/or a fine not less than fifty thousand rupees which may extend up to two lakh rupees.

 

The court may grant the following reliefs in a suit for infringement or passing off:

 

  • Damages (nominal or compensatory) on accounts of profits obtained as a result of the unauthorized use.
  • Permanent or temporary injunction against any further unauthorized use of such mark by the defendant.
  • An order for delivery up of the infringing labels and marks for the purpose of destruction or reassure.