Copyright and Emerging Technologies
Authored By Poorvi Chothani1 for the Mobile VAS Task Force, CII
Abstract
The increased importance of electronic and digital media requires copyright owners to pay
greater attention to electronic and digital rights issues. Thus, most contemporary
contracts, at least where parties are represented by lawyers, contain some reference to
"electronic rights" or “digital rights” and often contain language encompassing
technologies known and unknown at the time of contracting. One difficulty that exists is
that even though many copyrights owners and creators may be familiar with electronic
and/or digital rights, neither the music, gaming, related industry, legal profession nor the
courts of law have, uniformly defined with specificity the meaning or scope of these rights,
in the Indian context. The courts therefore analyze the language of existing statutes or
case law and individual licensing or distribution contracts to determine who controls the
various rights. This paper will examine certain Indian, UK and US laws that deal with
copyright issues and emerging technologies with special references to content for mobile
phones.
Introduction
“If I buy a downloadable movie I want to be able to play it in a number of places. My
Mobile Phone.2 My Mac. My PC. My Video Pod3 (for lack of a better term).”4 This is a
flavor of what consumers are demanding and will demand in the future – “I bought it so I
own it, so I can use it how I like, when I like and where I like!” Moreover, technology is
making it possible whether use of content on these instruments or media is authorized or
not. Rapidly changing technology enables the same content to be used in different ways on
mobile phones, an iPod; in an online database retrieval systems in whole or in part on a
CD-ROM; on MP3 players; in whole or in part on a DVD on the Internet; on a website on
the World Wide Web; for personal use and/or for podcasting or video casting; on an
electronic bulletin board such as those included with Internet Service Providers; or on a
blog initiated by an individual.
Whatever be the medium, once a work that is entitled to copyright, is placed or used on any
of the media, described above, there will be issues pertaining to copyright ownership,
1
Poorvi Chothani, Esq., Partner, LawQuest, a Law Firm based in Mumbai and New Delhi, India is
admitted to the New York Bar and the Bar Council of Maharashtra and Goa. She is a
member of the International Bar Association, American Bar Association, and the American
Immigration Lawyers Association.
2
My Mobile Phone added by the author
Now known as iVideo
4
“Apple To Launch Video iPod With Music Videos?, By Tera Patricks - Published on Monday, July 18,
2005 at http://www.mac360.com/index.php/mac360/more/apple_to_launch_video_ipod_with_music_videos/
(visited on April 6, 2006)
3
1
royalty, license, infringement and plagiarism, to name a few. This requires an examination
of what can be copyrighted.
What Can Be Copyrighted?
Under Indian Copyright Law5, copyright subsists in original literary works, in original
dramatic work and its adaptation, in original musical work, including, in a software
program, in a painting, in a film, in a sculpture, in a drawing as well as a diagram, map,
chart or plan, in an engraving or a photograph, whether or not any such work possesses
artistic quality; in an architectural work of art; and any other work of artistic craftsmanship.
A copyright gives the right to do an authorize the rights to reproduce, to publish the work,
to perform the work in public, to produce, perform, reproduce or publish any translation of
the work, to make any cinematographic film or record in respect of the work, to
Copyright statutes were originally enacted for literary property, extended to other forms of
creativity and as technologies change, an Intellectual Property Right (IPR) has been
increasingly commodified, rendered easily transferable and in many cases susceptible to
easy infringement. However, the speed with which technology evolves, a clear and timely
definition of the ultimate bundle of rights, which is increasingly divisible into thinner and
often ephemeral slivers, is almost impossible. Since, authors, owners, creators, artists,
innovators cannot foresee all its future uses it is impossible to either expect judges and
legislators to anticipate future protection and enforcement of copyrights or interpret past
contracts to effectively determine what rights were assigned. This is further complicated
by the common perception that what is ‘freely’ available on the Internet is ‘free’ to use,
based on the rationale that if it was not to be used free of cost it would not be ‘freely’
available or ‘free’ further exacerbates the problems.
India has a large, significant, rapidly growing copyright industry with internationally
comparable copyright laws. Unfortunately with the significant growth of the copyright
industry, the piracy rate also continues to grow rapidly. As an indication of the enormity of
the problem, the International Intellectual Property Alliance (IIPA) estimates show US
copyright related trade losses in the past year to be approximately US$ 450 million.6
Content that is “mobile” is very popular in India because of the huge number of mobile
users. Equipment like an iPod is still out of reach for many, but mobiles are more
affordable. Individuals tend to invest in mobiles with multiple functions and good storage
capacity to enjoy converging technology and the variety of entertainment and information
content available on this medium.
Copyright
Copyright is an exclusive right granted to the author of an original work (eg, lyrics, movies,
computer programmes, paintings and even in architectural drawing) for a limited period of
time with the right to exploit that right. This right is subject to certain limitations like
5
6
The Indian
International Intellectual Property Alliance 2006 Special 301 Report, India
2
statutory licensing, fair use exceptions and compulsory licensing. The Indian Copyright
Act, 1957 (the Copyright Act) and the corresponding Copyright Rules, along with periodic
amendments govern copyright in India. India is a signatory to three international
conventions on copyright, i.e. the Berne Convention for the Protection of Literary and
Artistic Works (1883), the Universal Copyright Convention (1952) and the Agreement on
Trade Related Aspects of Intellectual Property Rights, 1994 (TRIPS). As per the
provisions of these conventions, the works of a national of one member country are
protected in another member country also. The protection accorded to works of such
foreign nationals in the other member country is similar to the protection and treatment
given to its own nationals.
Copyright Ownership
Copyright subsists in original literary, dramatic, musical and artistic works. Literary work
basically means any form of written work; Dramatic work is work that can be enacted;
musical work refers to a combination of melody and harmony; Artistic work refers to
visual arts (film, painting, sculpture, drawing, etc); Computer Programmes are granted
protection under an extension of literary works. Copyright for all such material vests with
the author for all literary or dramatic work, with the composer for musical work, the artist
for artistic works, to the photographer for photographs and with the producer for any
cinematograph film or sound recording and with the creator of any literary, dramatic,
musical or artistic work which is computer generated. When individuals create content
they are the owners of the copyright as authors unless specified otherwise. 7 For the
purpose of this paper, reference to any type of owner will include other types if applicable.
Term
Copyright subsists for a period of 60 years, for a literary work, from the beginning of the
year following the year of death of the author; for broadcaster rights for 25 years from the
year following the first broadcast; for photographs and cinematographs, sound recordings,
60 years from the beginning of the calendar year following the year in which each is first
published. Authorized adaptations, derivatives, versions etc. would be entitled to separate
copyright provided the new work qualifies for copyright independently under the Copyright
Act.
Originality
Copyright inherently includes a balance between the protection of authors, on the one hand,
and the interests of the public, on the other. As a result, an important doctrine in copyright
law is the idea-expression dichotomy, wherein copyright does not protect ideas, but
protects the unique expressions of ideas. The reason for this is that the protection of ideas
per se would result in the blocking of ideas for future use by people. The word ‘original’
in copyright law is not concerned with the originality of ideas but with the originality of the
expression of the idea. It is well established international law that copyright protects the
expression of an idea rather than the idea itself, and this was recently reinforced in “The Da
7
Section 17 of the Copyright Act
3
Vinci Code” case before the UK courts.8 The courts in India have also held 9 that there can
be no copyright in ideas, subject matter, themes, plots, or historical or legendary facts.
Similarities are bound to occur when different people develop the same idea in different
ways, since the source is common. The Supreme Court has also held that in order to be
actionable, the copy must be substantial and material. One of the surest and safest tests to
determine whether or not there has been a violation of copyright is to see if the reader,
spectator or the viewer, after having read or seen both the works, is clearly of the same
opinion and gets an unmistakable impression that the subsequent work appears to be a copy
of the original.
Assignment
Copyright in any work may be assigned or licensed, on individually negotiated terms. All
assignments of copyright have to be made in writing and if the period of assignment is not
stated, it shall be deemed to be five years from the date of assignment.10
Plagiarism and Infringement
Unauthorized use of any copyrighted content amounts to plagiarism or infringement.
Whether there has been an infringement depends on whether or not the latter work is a
colorable imitation of the earlier.11 If a copyright is infringed, then everyone who
commercially exploits the infringing work is also liable for infringement. For example, a
record company who publishes an unauthorized song on an album of many songs, even
though it had no knowledge or reason to believe it was an infringing work, is liable. In
order to prove copyright infringement, it is necessary to establish that the defendant
“copied” the work in question. It is mostly impossible to produce direct evidence of the act
of copying, and the courts will, as a rule, conclude that copying has occurred if the plaintiff
can show that the defendant had access to the copyrighted work and both works are
substantially similar.
Fair Dealing
The Copyright Act provides for a type of “fair use,” “fair dealing” or “statutory licensing.”
Section 32-A and section 52 provide for compulsory licensing of certain literary, scientific
or artistic works for instructional and certain other activities subject to reporting and
royalty payment requirements. Section 52 of the Copyright Act contains ‘fair use’
provisions for a statutory license to a person desirous of making a sound recording of an
existing musical work by engaging independent artists to create the same music and use
identical lyrics provided the “version recording” is made after two years of the original
sound recording subject to certain conditions. This section also provides for a fair use of
making copies or adaptations of computer programs, for non-commercial use, from a
personal, legal copy. Fair use of literary or certain other work allows broadcasting in a
8
Baigent and Leigh v Random House
RG Anand v Delux Films and Others (AIR 1978 SC 1614),
10
Section 19 (7) of the Copyright Act
11
Fateh Singh Mehta V. O.P. Singhal (A.I.R. 1990 Raj. 8)
9
4
newspaper, magazine, or periodical, by broadcast, or in a film for reporting current events.
But certain forms of data compilation are exempt from this fair use.
The US laws also provide for an equitable ‘fair use’ of content in certain instances.
Whether or not, under US law an infringement of copyright is committed when a portion of
someone else's copyrighted work is taken without permission depends upon whether the
test of "fair use" is met. The four factors determining if the use is fair include the purpose
and character of the use, the nature of the copyrighted work, the amount and substantiality
of the portion used in relationship to the copyrighted work as a whole, and the effect of the
use on the potential market for or value of the copyrighted work. This test is applied on a
case-by-case basis.
“………[W]here disassembly is the only way to gain access to the ideas and functional
elements embodied in a copyrighted computer program and where there is a legitimate
reason for seeking such access, disassembly is a fair use of the copyrighted work, as a
matter of law.”12
Wallpapers
Textbook definitions of the terms wallpaper and desktop picture describe an image used as
a background on a computer screen. Wallpapers for the mobile phones are an extension of
this term and could qualify as an artistic work for copyright protection13.
In Daily Calendar Supplying Bureau vs. United Concern14 the Court, when examining the
copyright in a picture of a Hindu deity in a human form, found that ideas cannot be
copyrighted but the skill and originality of thought and form of expression can be.
Therefore, a “wallpaper,” where the artistic work shows “skill and originality of thought
and form of expression” could qualify for copyright protection and can be exploited by the
original author or the owner/licensee of the copyright. Further, under existing law a
“wallpaper” may be protected as a derivative work if it consists of a contribution of original
material to a pre-existing work so as to recast, transform or adapt the pre-existing work.
This would include a new version of a work in the public domain and abridgment
adaptation, arrangement, dramatization or translation. “In determining whether a work
based upon a prior work is separately copyrightable as a derivative or collective work, the
courts may not properly consider whether the new work is a qualitative improvement over
the prior work. It should be noted that in order to qualify for a separate copyright as a
derivative work, the additional matter injected in a prior work or the manner of rearranging
or otherwise transforming a prior work, must constitute more than a minimal
contribution.”15
12
Sony Computer Entertainment v. Connectix corp., 203 F.3d 596 (9th Cir. 2000)
Section 13 of Copyright Act
14
AIR 1967 Mad (381)
15
Eastern Book Company and Ors. Vs. Respondent: D.B. Modak and Ors. and Mr. Navin J. Desai and Anr.
101(2002)DLT205
13
5
Under US law16 as in India, it is clear that the right to a copyrighted pictorial, graphic, or
sculptural work in copies includes the right to reproduce the work in or on any kind of
article. Therefore, the right to create a “wallpaper” of a painting, for example, would lie
with the artist that created the original painting or the subsequent owner of such a right.
Some websites that provide downloadable wallpapers bring to the notice of customers that
the sites contain wallpapers that are copyrighted, and cannot be distorted or distributed
without prior permission. When sections of a film or other artistic work are used as
“wallpapers” they would need to be authorized by the original copyrights owner. Any use
in contravention of these provisions would amount to infringement.
iTunes
Downloads from iTunes is a popular source of purchasing legitimate content which will
now be available on certain mobile phones. But control of copyright on content
downloaded from this site or similar sites is difficult. Initial downloads are monitored by
digital rights management systems. However, there is very little control on subsequent
copies. iTunes does place contractual obligations on its users, and its terms of usage
restrictions17 on access and download from the site, which include that their “Products”
may be used only “for personal, noncommercial use”, on “five Apple-authorized devices at
any time.” The user is further entitled to “export, burn (if applicable) or copy Products
solely for personal, noncommercial use” and is explicitly “not entitled to burn Video
Products.” In addition the user is “authorized to burn an audio playlist up to seven times”
and can “store Products from up to five different Accounts on certain devices, such as an
iPod, at a time.” (Quoted from http://www.apple.com/itunes). Similar contractual
restrictions are found on some other sites, but the challenge lies in the enforcement and
monitoring of such restrictions. An Indian court is likely to uphold such restrictions and
grant relief provided the owner could prove infringement.
Other service providers,
including mobile operators could introduce such contractual obligations but are likely to
find it difficult to enforce and monitor.
Submissions on Different Media by Individuals
When individuals create content they are the owners of the copyright as authors unless
specified otherwise. This would extend to SMS messages, blogging content, e-mail
messages etc. When such content is ‘SMSed,’ ‘podcast,’ ‘video cast’ or posted on public
websites or uploaded to a blog, unless the website where it is uploaded has a contrary
policy, copyright for all such material vests with the author, producer, artist etc. as the case
may be. In the absence of such a policy, when an individual posts a copyrightable work on
a website he/she should indicate copyright ownership on the work, by including pertinent
copyright information. This puts other users on notice. For instance an individual might
send an ‘original’ message from his mobile phone, which then is forwarded to several
people. The originator of the message owns copyright to the message but will not get much
16
17
17 USC Section 113 and 106
http://www.apple.com/legal/terms/site.html
6
recourse, if he tries to enforce his rights, unless he can prove he sent the ‘original’ message
first.
Some websites claim copyrights of works created and submitted by individuals. For
example - www.atomentertainment.com - When an individual submits “User Materials in
any form to Atom Entertainment, by virtue of such submission Atom Entertainment and its
users get a royalty-free, world-wide, non-exclusive, sub-licensable, and assignable right
and license to use, copy, reproduce, modify, adapt, publish, edit, translate, create derivative
works from, transmit, distribute, publicly display and publicly perform such User Materials
for the purpose of displaying and promoting the User Materials on any website operated by,
and in any related marketing materials produced by, Atom Entertainment and its affiliates.”
This license subsists till the individual or Atom Entertainment, remove or deletes the User
Material from the Atom sites. The individual also obtains no rights in any form, media, or
technology incorporating the User Materials. (Quoted from the Legal Notice at
www.atomentertainment.com).18 These terms in effect create an assignment of virtually all
the rights of the author.
Copyright in Events and News
Copyright provisions pertaining to news and events, have been clarified by the Bombay
High Court in a 1985 case filed by the Indian Express Newspaper wherein they confirmed19
that there is no copyright for happenings and events, which could be news stories.
However, copyright may be obtained for the form in which these are expressed because of
the skill and labor that goes into the writing of stories or features and in the selection and
arrangement of the material.
Section 52 provides for fair dealing of reporting current events, for reporting purposes, in a
newspaper, magazine or similar periodical, or by broadcast or in a cinematograph film or
by means of photographs. Any dissemination of news or information about events other
than that envisaged under section 52 would be infringing. Section 39 (b) provides that no
broadcast reproduction right or performer’s right shall be deemed to be infringed by the
use, consistent with fair dealing, of excerpts of a performance or of a broadcast in the
reporting of current events or for bona fide review, teaching or research. Dissemination of
information about events or news by a commercial entity for purpose that is not envisaged
in these two sections could be a violation of the Copyright Act. For example, individuals
could send cricket scores via SMSs. However, such dissemination by mobile phone service
providers that usually disseminate such information to its subscribers, often for direct profit
or as a value add to other commercial services might amount to infringement and is the
subject matter of a court proceeding before the Madras High Court.
18
19
http:www.atomentertainment.com/asw_legal_copyright.htm
In the case Indian Express Newspaper (Bombay) Pvt Ltd v Jagmohan ( AIR 1985 Bom 229)
7
Version Recordings
Version recordings are subject to a fair use exception under section 52 of the Copyright
Act. The Delhi High Court in 2003 held20 that under this section and the Copyright Rules
there existed a statutory license to produce a “version recording.” This was subject to the
person producing such recording undertakes not to make any alterations to the work
without the consent of the owner other than those which are reasonably necessary for
adaptation of the work for the purpose of making the sound recording. The rules require
any person, who wishes to avail of this benefit, to indicate clearly the alteration and
omissions, if any, which are proposed to be made for the adaptation. The court further held
that a substantial new arrangement cannot fall within such alterations/omissions which are
necessary for adaptation and such new arrangement cannot be created without the original
owner’s consent. In view of this songs may be rerecorded with new artistes without the
consent of the original performer but subject to royalty payments. Adaptations of
recordings to be used on any media would be subject to these principles.
When deciding whether the newly created versions are entitled to separate copyright
protection the Delhi High Court’s analysis in a 2002 case is helpful. The Delhi High Court
clarified “In determining whether a work based upon a prior work is separately
copyrightable as a derivative or collective work, the courts may not properly consider
whether the new work is a qualitative improvement over the prior work. However, in order
to qualify for a separate copyright as a derivative work, the additional matter injected in a
prior work or the manner of rearranging or otherwise transforming a prior work, must
constitute more than a minimal contribution.”21 Therefore, remixes might qualify for
independent copyright protection and unauthorized use of portions of copyrighted remixes
on mobile phones could amount to infringement.
The US courts have found that an original work may be used in a derivative parody;
however in Campbell v. Acuff-Rose Music, Inc, they state that “……taking the heart of the
original and making it the heart of a new work was to purloin a substantial portion of the
essence of the original.”22 When considering fair use of original works in derivative works
the US courts emphasize the need for a “sensitive balancing of interest,”23
Sampling
At the beginning, we need to establish the difference between “sampling” and “samples.”
Sampling, in copyright context is the use of material, which has independent value, or to
create a derivative work entitled to independent copyright protection. “Samples,”
sometimes incorrectly referred to as “sampling,” is similar to free samples of, say
chocolates, prior to buying them. “Samples” are dealt with under Ring Tones below.
20
Super Cassette Industries Limited Vs. Bathla Cassette Industries Pvt. Ltd. (107 (2003) DLT 91)
Eastern Book Company and Ors. Vs. Respondent: D.B. Modak and Ors. and Mr. Navin J. Desai and Anr.
101(2002)DLT205
22
972 F.2d at 1438
23
Sony Corp. of America v. Universal City Studios, Inc.464 U.S., at 455
21
8
Technological developments that facilitated “sampling” helped the growth of new genres of
music. However, stringing together unauthorized samples of published works without any
changes is at best plagiarism and often piracy. Indian copyright laws do not specifically
provide for “sampling” of copyrighted work. Any “sampling” would require a license or
permission from the owner unless covered by the fair use principles.
The issues pertaining to sampling are effectively described by the US courts in a 6th Circuit
2004 case pertaining to sampling in Hip-Hop music. The court analyzed the act of
sampling in a complex manner but concluded that no sampling can be included in new
compositions without a license or permission. The reason is not because of the copyright to
the music composition in the sample, but because of the copyright to the sound recording.
The US courts interpreted the copyright statute,24 as prohibiting the copying of the whole or
any part of a sound recording.
In Bridgeport Music Inc. Vs. No Limit Films LLC, a US court examined the different
samplings and examined the defendant’s claim that the samplings were “original” and
“insubstantial.” In examining the “substantiality” or de minimum copying in the samplings
the court held that “even when a small part of a sound recording is sampled, the part taken
is something of value.”25 This is significant when we consider small snippets of music for
ringtones or call back tunes for mobile phones. More recently in March 2006, a US
District Judge halted sales of late rapper Notorious B.I.G.'s breakthrough 1994 album
"Ready to Die" after a jury decided the title song used part of an Ohio Players tune, as a
sample, without permission. The jury in this case awarded $4.2 million in punitive and
direct damages to the two owners of the recordings. “Since the exclusive right
encompasses rearranging, remixing, or otherwise altering the actual sounds, the statute by
its own terms precludes the use of a substantial similarity.”26 Bridgeport Music and
Westbound Records, which owned the song rights in the above two instances, have filed
hundreds of lawsuits over sampling in recent years, most of which were settled out of court.
Ring Tones
Many portals and cellular operators offer ring tones and caller tunes, but whether all of
them offer licensed products is questionable. Since many of these ringtones are music
notes of the original songs, the service provider needs to take the permission from the
concerned company or the person under the Copyright Act, and anyone providing them
without the consent of the "rights owner" does so illegally. For using a sound recording of
the original track, one would need a license from the current copyright owner. Sound
recordings to be used as ringtones would require licensing.
The offer of “samples” of sound recordings by cellular operators to customers may require
different treatment. Since this allows a customer to ‘sample’ or ‘try out’ the product before
purchasing it. An analogy in the physical world would be that of a shop that offers several
products and allows its customers to pick up, touch or feel objects before he/she makes a
24
17 USC Section 114
Bridgeport Music Inc.; and ors. Vs. No Limit Films LLC, and anr. 2004 Fed. App. 0297P (6 th. Cir.)
26
Supra foot note 2
25
9
purchase. Whether such “samples” should be subject to licensing or not is the matter of
great concern to mobile phone operators and other service providers. A US court, in Kelly
v. Ariba Soft Corp. 27 was required to examine the use by an Internet "visual search engine"
of others' copyrighted images and whether this could be justified under the "fair use"
doctrine, and the Court found that “Arriba's reproduction of Kelly's images for use as
thumbnails in Arriba's search engine is a fair use.” If we applied the same principle to
“samples,” it might not be found to be infringing activity, and mobile operators could
provide license-exempt “samples” to their customers.
In addition, “samples” created so that they can be only heard on a computer with a sound
card and the full version of the ring tone can be downloaded only after paying for it might
be a most viable solution. This would, of course, limit the market penetration due to the
disproportion between the number of mobile users and the lack of access to computers for
many of them.
Music Videos
The copyright of stand-alone music videos not based on Bollywood movies lies with the
producer of the video as he/she would be the ‘author’ “who takes the initiative and
responsibility for making the work,”28 which is a combination of cinematograph film and
sound recording. This raises the question whether music videos or “sampling” of
Bollywood films infringe the film. The Copyright Act provides that an “infringing copy” is
“in relation to a cinematograph film, a copy of the film made on any medium by any
means;” and “in relation to a sound recording, any other recording embodying the same
sound recording, made by any means.” In view of this, music videos would not be
considered fair dealing as version recordings because the fair use pertains only to sound
recordings.
Mobile Phone Games
Mobile phone games (Games) are computer software games played on a mobile phone, and
are usually downloaded via the mobile operator's network, but sometimes via other
technology. Games are developed using various computer related technologies and
software programming, in conjunction with different hardware and vivid graphics. The
artistic graphics, which add to a Game’s appearance is an important part of its success.
Copyright does not protect the idea or concept behind a Game, nor does it protect the
information as to how the Game is to be played (although it may protect a particular written
expression of such rules). Ideas, information and styles are not protected by copyright.
Therefore, the underlying software and the Graphics of the game would be entitled to
copyright, as literary and artistic work respectively. The US Courts, when examining
whether Games could be copyrighted thought that individual elements of a Game may not
be copyrightable but the courts should consider the “flow of the game as a whole, …”29
27
Kelly v. Ariba Soft Corp. 281 F.3d 934 (9th Cir. 2002)
Section 2 of the Copyright Act, 1957
29
Atari Games Corp. v. Oman, 979 F.2d 242 (D.C. Cir. 1992)
28
10
Under the Copyright Act as amended in 1994, "Literary work" now includes computer
programmes, table and compilations including computer data bases. According to section
14 of this Act, it is illegal to make or distribute copies of copyrighted software without
proper or specific authorization. These rights are only available to the owner of the
copyright. The only exceptions provided by section 52 of the Act, which allows a backup
copy purely as a temporary protection against loss, distribution or damage to the original
copy and certain “non commercial personal use.” UK and US law also permit the creation
of a back up copy for personal use of a computer programme to protect from loss or
damage.30 In view of this any unauthorized uses or downloads of Games would amount to
infringement of the owner’s copyrights as a literary and/or artistic work.
Of course, there are several issues linked to the very ‘mobility’ and transferability’ of the
medium – mobile phones. When Games can be permanently saved on mobile phones, and
the phone is sold to another individual the Game would also be transferred, thereby adding
value to the mobile phone. Will this amount to ‘non-commercial personal use’? Under US
law this might be covered by the ‘first sale doctrine,31’ which allows the purchaser to
transfer (i.e. sell or give away) a particular, legally acquired copy of protected work
without permission once it has been obtained. The first-sale doctrine on whether this
privilege should be extended from physical to digital goods has been actively debated in
the US. This was further analyzed by the US Copyright Office, in a study required as part
of the 1998 Digital Millennium Copyright Act (DMCA).32 The DMCA did not extend the
first-sale doctrine to digital content per se but even the US law regarding sale of devices
with copyrighted content remain ambiguous.33
Game Sampling
Entertainment companies often offer “demo games” as samples before the actual launch of
the game or as a method of sampling the game before a consumer decides to purchase it.
“Demo games” may be used independently, though they form part of the full version of the
game that is to be launched or are provided as a sample of the full game that is already
available. Unauthorized individuals download these “demo games,” without a license and
bundle them into compilations with several “demo games,” often from competing
companies, onto a single disc. This in effect creates a copy of the software of the “demo
games” and the graphics. Making unauthorized copies or sampling of games, lending them
for profit or reselling them could amount to infringement in India.
File Sharing
File sharing on the Internet is rampant in India according to the International Intellectual
Property Association 2005 Special 301 Report.34 With the enhanced availability of
broadband this is likely to grow. The liability of Internet Service Providers (ISPs) for
30
Section 50(A) of the 1988 UK Copyright, Designs and Patents Act
17 USC Section 109 (a)
32
http://www.copyright.gov/reports/studies/dmca/dmca_study.html
33
17 USC Section 109 (part of The Digital Millennium Copyright Act, ("DMCA")
34
http://www.iipa.com/rbc/2005/2005SPEC301INDIA.pdf
31
11
copyright infringement is not expressly covered by the Indian Copyright Act. The Indian
Information Technology Act, 2000 exempts ISPs from liability if they can prove that they
had no knowledge of the occurrence of the alleged act, and that they had taken sufficient
steps to prevent a violation. However, if the ISP fails to take steps within a reasonable time
to remove the infringing material from the network or fails to prevent infringement of
copyright in the above circumstances he may not be entitled to the plea of ignorance of
infringement.
Large entertainment companies in the US sued StreamCast, Grokster Ltd., the company
behind the Grokster file-swapping service, and Sharman Networks Ltd., which distributes
Kazaa, in 2001. In 2003, the courts ruled that the file-sharing service operators were not
liable for any illegal copying of music, movies and other works conducted by the services'
users. The ruling was later upheld by an Appeals Court in California. But in June 2005,
the US Supreme Court exposed the file-sharing companies to potential liability, ruling that
they found to intentionally induce or encourage the theft of copyrighted works and could be
held liable.35 Following this decision, the US entertainment industry sent notices last fall to
seven file-sharing software companies warning them to shut down or prepare to face
lawsuits. Some services shut down while others settled with the entertainment industry
with a view to launching similar licensed services.
Ripping
Generally, an individual that makes a legal purchase of copyrighted material, like a CD can
legitimately use the contents of that CD on any CD player. The very nature of the medium
permits its use on devices like PCs that make many copies of the digital information
carrying the material as an individual listens to music or uses other content. Is this
automatic copying “infringement?” Whether any copies of the material on the CD made on
a laptop, PC, or iPod for his/her personal rule is unlicensed use or not remains
unchallenged at present. It seems that as long as the material is used for the individual’s
benefit it would be licensed. However, when the same individual uses that material for
commercial gain, to a larger audience, it would seem to be unlicensed use. It is not correct
to presume that, when one buys a CD, one has bought a license for the music on the CD, in
absence of express language to that effect. Instead, the buyer has only acquired the
ownership of a tangible copy and everything else he/she does with that recording may fall
under some form of fair dealing, if confined to the individual user.
What about reusing old recordings with technologies that were not contemplated at the time
when the original was recorded on another medium like vinyl? One may wish to copy
analog content, already paid for, onto an iPod or to a mobile phone. Does one need to
purchase it again from iTunes even though one might have paid for it several times
already? Converting it from analog to digital can be quite tedious and to have it done
professionally may be expensive. The convenience of downloading digital content from
iTunes, or similar portals, might encourage the purchase of the content once again even
though one owns an analog copy.
35
Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd. (380 F.3d 1154)
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Time Shifting
A good example of Time Shifting is the recording of television shows to some storage
medium to be viewed at a time more convenient to the consumer. In Sony Corp. of
America v. Universal City Studios, Inc 36 the US Supreme Court recognized a fair use in
Time Shifting. The legality of time-shifting programming in the United States was proven
by a landmark court case of Universal Studios versus Sony Corporation (Sony v.
Universal), when Sony argued successfully that the advent of its Betamax video recorder in
1976 did not violate the copyright of the owners of shows which it recorded.
In cable television broadcasting, time shifting may also refer to the availability of.
affiliates from different time zones, serving a similar function of making television
programmes available at multiple times throughout the day. Video streaming, TiVo, video
on mobile are newer examples of timeshifting. These could be covered under Indian law
pertaining to broadcasting and the fair use exceptions for individual users.
Digital Radio Broadcasts
Certain mobile phones and media players permit direct recording of the FM radio stream.
The high quality sound of digital radio broadcasts over the airwaves encourages individuals
to record the broadcast for later use. Section 39 of the Copyright Act on fair use of
broadcasts provides that sound or visual recordings for private use of the individual, among
other acts would not be an infringement of a broadcast reproduction right or performer’s
right. If the individual then disseminated the digital recording to the public, it would
infringe the broadcaster rights, which are protected under section 37. Therefore, use of
content recorded by an individual from a legal broadcast for personal use would be legal.
Use of such recorded material to be used as a ring tone or as “call back music” by the same
individual would be covered under the provisions of fair use.
Reclamation of Earlier Assigned Rights
The entertainment industry, mostly associated with the film industry, has been an
extremely unorganized sector until very recently. The bargaining advantage generally lay
with the film producer, which lead to many artistes assigning their rights to the producer
with no mention of future rights. The film producer could exploit the artists’ works to the
best of his/her advantage with little or no gain to the artist other than the consideration
he/she obtained at the initial stage. Moreover, when the film rights were licensed or
assigned the inherent artists’ rights were also licensed or assigned along with all other
producer’s rights, again with little or ambiguous provisions for future rights. This has
ramifications in the present times, where film content, including songs and clips are being
transformed to new media, giving rise to new rights which can be exploited by content
providers.
36
464 U.S. 417 (1984)
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Infringement in India
Section 63 of the Copyright Act describes what amounts to infringement and section 64
confers the power on the police to seize infringed copies of copyrighted works. The section
authorizes any Police officer, not below the rank of a sub-inspector, to seize without
warrant, all copies of the work wherever found if he is satisfied that an offence under
section 63 in respect of the infringement of copyright in any work has been, is being, or is
likely to be committed and all copies and plates so seized shall, as soon as practicable, be
produced before a magistrate. As per the sub section (1) of the section 64, the power of
seizing infringing copies has been conferred on the police of a sub-inspector’s rank or
above.
The Copyright Act provides various remedies. First, it is possible to file a suit to obtain an
injunction, which is a court order forbidding the infringers from distributing any more copies
of the infringing work. Second, the copyright owner is entitled to actual damages. Actual
damages are what harm you suffered from the infringement. These damages are usually next
to nothing unless you prove that the value of your song has been diminished by the
infringer's version. Perhaps the most significant remedy is the award of profits. The
copyright owner is entitled to the profits the infringer made off of your song. If the
infringing work made a lot of money, the copyright owner could be entitled to the portion
attributable to his/her original creation. In addition, criminal penalties have substantially
increased and the Copyright Act provides for a minimum jail term of 7 days which can be
extended up to 3 years and fines ranging from Rs. 50,000 to 2,00,000 depending on the
nature and frequency of the offence.
The Government of India’s Copyright Office under the Ministry of Human Resources,
Department of Secondary and Higher Education in its Study on Copyright Piracy in India
reports that though the law authorizes a police officer to seize without warrant ” …many
police officers may refrain from implementing their powers because of the clause ‘if he is
satisfied’. The study also refers to allegations and counter allegations regarding the role of
police personnel and the police admit that infringement of copyright protection does not
merit the same attention as murders, rapes law and order problems, etc. The Study finds
that the police blame rightholders for “not coming forward to either lodge a complaint
formally or failing to produce necessary proof/document before the court.”37
Future
While we still try to grapple with the legalities of digital rights, we can only hope to create
some clarity or introduce digital rights management practices for the future. One of the
Stakeholders, quoted in the Recommendations on Issues Relating to Convergence and
Competition in Broadcasting and Telecommunications, (the Recommendations) released on
March 20, 2006 states “It must be understood that Convergence of minds is necessary before
37
http://www.copyright.gov.in/maincpract6.asp#top#top (as visited on March 14, 2006)
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Convergence of Technologies.”38 However, convergence of technologies has already won the
race and is raging ahead, and “convergence of minds” is scrambling to catch up!!
Many of the comments in the Recommendations say that there should be a “comprehensive
legal framework” and some have correctly opined that it should be flexible “so that
advancement in the technology can be seamlessly integrated into the basic framework.”
Many have also asked for separate regulation of content and carrier, however with
convergence of technology it is difficult to regulate the dissemination of content without
regulating the carrier.
Indian content providers could take practical steps and organize to create an initiative
similar to the Secure Digital Music Initiative, the US industry consortium comprising of all
the major hardware and software companies in the US music industry. The group works on
copyright protection, copyright management and royalty tracking issues using
watermarking technology.39 Digital Rights Management is an effective way to manage
copyright and protect authors, because it is almost impossible to physically monitor or
control digital content.
Organized measures to curtail piracy in India, in collaboration with the Police would
produce more results than individual action. Today large copyright owners can pool their
resources and avail of expensive legal remedies against “piracy” because they have the
financial ability to undertake such initiatives and are dominant entities in the industry.
Suggested Changes in the Law
Copyright is a balancing act where public interest safeguards, the idea-expression
dichotomy and the fair use privilege need to be balanced with the right itself. In view of
this, we need certain changes to help protect these rights and to allow the public to have
access to copyrighted work in an equitable manner.
To help protect rights, India could pass preemptive laws in keeping with the European
Union Copyright Directive (The EU Directive) which provides for the protection of "rights
management information", which is metadata such as identifying "watermarks" which is
combined with a work40 whereby the EU Directive prohibits the removal or modification of
rights management information. Controversial fallout of this is that as the tracking
information monitors illegal users there are issues of infringing user privacy, as it would be
illegal to write or use software to strip out the information in an attempt to preserve the
user's privacy rights. We will have to balance these issues when considering similar
legislation.
38
Lt. col. V.C. Khare in the Recommendations on Issues Relating to Convergence and Competition in
Broadcasting and Telecommunications, released on March 20, 2006
39
Digital Watermarking - Steering The Future Of Security, By A. K. Vanwasi,
http://www.networkmagazineindia.com/200108/security1.htm (visited on April 6, 2006)
40
The EU Copyright Directive, Article 7
15
In addition, we could emulate the Technical Protective Measures under the EU Directive,
which requires member states to provide adequate legal protection against the
circumvention of any effective technological measures that are introduced with the
objective of protecting copyrights.41 A measure is deemed to be "effective" if the use of a
protected work or other subject-matter is controlled by the rightholders through application
of an access control or protection process, such as encryption, scrambling or other
transformation of the work or other subject-matter or a copy control mechanism, which
achieves the protection objective.
It may be an effective deterrent to statutorily increase the penalties considering the high
penalties levied in the US.42 Along with a notice of copyright ownership, required by the
Copyright Act,43 it might be a deterrent to include information about penalties and criminal
punishments applicable to copyright infringement, similar to those that are required by
federal law in the US44.
To protect public interest, Indian law could introduce flexible provisions to govern fair use.
The US courts have used principles of ‘fair use’ in the interest of promoting copyright’s
overall policy goals and is not rigidly applied; instead the four factors are applied in a
balanced fashion on a case-by-case basis to arrive at an equitable result. A flexible
application of ‘fair use’ instead of the present list of rigid provisions pertaining to ‘fair
dealing’ under the Indian Copyright Act, 1957, might lead to a more equitable balance of
copyrights, their use and ownership. For example a ‘fair use’ of “samples” of sound
recordings could be exempted from licensing requirements to enable the public to check
whether they really want access to the product. Free “samples” may be subject to size
restrictions; for example a free “sample” of a sound recording could be restricted to 30
seconds of play time, and mobile operators or other content providers could be precluded
from charging their customers for “samples” because they would not have to pay royalties
for use of such “samples.”
Conclusion
Intellectual property protection is provided to encourage innovation, creativity and
technical development. “The primary rationale for IP protection is ……… to promote
societal development by encouraging technological innovation.”45 The Indian Copyright
Act protects the copyright owners from piracy and infringement of copyrights. However, a
poorly managed legal system, litigation backlogs and a dubious enforcement system are
major hurdles. A multi pronged efforts to create awareness about the enormity of the
problem, among the police, judiciary, regulatory bodies and the general public are
imperative as we strive to strike a balance between an owner’s rights and fair use by the
public.
© Poorvi Chothani of LawQuest, April 2006.
41
The EU Copyright Directive, Article 6
Under US copyright law, defendants could be liable for up to $250,000 for each infraction.
43
Section 52-A of the Copyright Act
44
FBI notice to be included in some works
45
See Statement of the Delegation of India at IIM, available at http:lists.essential.org/pipermail/iphealth/2005 April/007753/html
42
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LawQuest is a boutique law firm rendering legal and advisory services in a focused
manner in a select few and inter-related fields. Located in the prime business district of
downtown Mumbai at Cuffe Parade, this firm offers quality service. LawQuest believes in
specialization and accordingly acts only in its chosen areas of practice. The Firm's clientele
includes business houses, corporates and individuals.
Poorvi Chothani, Esq., the founding partner, is an advocate, licensed to practice law in
India since July 1984 and in the State of New York, USA. Poorvi began her career as a
litigator, a junior associate with Rohit A. Kapadia, at the Bombay High Court. LawQuest
is the correspondent firm in India for certain international law firms. Poorvi, a member of
the Technology Law Forum, Mumbai, is the legal professional on the Mobile VAS Task
Force, Confederation of Indian Industries. Poorvi is a graduate of the University of
Pennsylvania Law School where she acquired an LL.M. degree. Poorvi practices IPR,
Media, Entertainment, Trade Mark and Copyright Law, Immigration Law (US & Indian),
and advices international clients on the legal aspects of Doing Business in India. She has
authored several articles on US laws on issues pertaining to the IT media and BPO
industries.
Reena George, LL.M. (Harvard), LawQuest partner, New Delhi graduated from the Delhi
Law Faculty in June 1986 and began her practice in the Supreme Court of India under late
Justice Poti, former chief Justice Gujarat High Court and Senior Advocate Supreme Court
of India. In 1988, she joined the law chambers of Mr. Shanti Bhushan, Senior Advocate
and former Union Law Minister. She also briefly worked in the High Court in the law
chambers of Mr. Madan Lokur (now Justice Madan Lokur of the Delhi High Court) where
she dealt with trial litigation. Besides specific project work like the Review of Regulatory
Framework of Coal Industry in India and designing a regulatory framework for water
services in the state of Gujarat, Reena has dealt with many policy issues and has presented
papers in leading international and national conferences on Infrastructure Development,
Regulation and Competition.
LawQuest team of lawyers practice in the areas of:
 IPR, Media, Entertainment, Trade Mark and Copyright Law;
 Corporate and Commercial Laws;
 Legalities of Doing Business in India;
 US & Indian Immigration;
 Alternate Dispute Resolution and Litigation; and
 Tech Laws (including for the Business Process, Legal Process and Knowledge
Process Outsourcing industries
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