Enforcement of Copyright: Infringement, Exceptions And Remedies

    The domain of copyright as an intellectual property involves the protection of literary and artistic works and other related rights and includes writings, paintings, musical compositions as well as technological works like computer programs and software.

    Section 13, Copyright Act, 1957 lays down the realm of copyright, which includes literary works, dramatic, musical and artistic works, cinematographic films, and sound recordings.  Intellectual properties such as copyright may also be described as ‘knowledge goods’.[1] The essence of copyright in a world that is fast evolving into a knowledge economy is obvious. The protection of copyrights helps in the promotion of various arts, literature, and other creative works as well as in the progress of science and technology. The greater or stricter the copyright provision, the greater is the motivation and incentive to create and develop. Within the growing digital environment, copyright laws aim at striking a balance between the interests of the holders of copyrights and those of the public.

    The Berne Convention for the Protection of Literary and Artistic Works (1886) and the World Intellectual Property Organization Copyright Treaty (WCT) (1996), both contain provisions for the enforcement of copyrights. Further, the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) (1994) provides detailed provisions with regards to the enforcement of copyrights. In general, enforcement provisions under the copyright regime may be classified as provisional measures, civil remedies, criminal remedies, border measures, and measures against abuse of technological means.

    INFRINGEMENT OF COPYRIGHT

    In general parlance, copyright is said to be infringed when any person, without the permission or authorization of the copyright owner or of the registrar, does any act over which the owner of the copyright has an exclusive right. Such rights include the right to reproduce, translate, adapt, communicate to the public or publish, etc. Section 14, Copyright Act, 1957 confers certain exclusive rights on the authors or owners. 

    Who can sue for infringement? 

    The author of the work, i.e. the writer or the artist, is known to be the first owner of the copyright for that work[2]. It additionally lays that in cases of contracts of service or authorship claims during employment, the employer, under whose instruction or authority the author is creating the said work, is the first owner. The copyright holder, his agent, or an authorized licensee or assignee may bring an action for copyright infringement. Essentially, such a person, in whom the copyright vests, is empowered to defend his title by bringing a suit, which may be civil or criminal, depending upon the particular case. Further, even copyright societies can sue in cases when their member’s rights are being infringed[3].

    Where can a suit for infringement be filed? 

    Section 62, Copyright Act, 1957 provides that for seeking civil remedy in a case of infringement of copyright or any other right, a suit is to be instituted in a district court having local jurisdiction as per Section 20 of the code of Civil Procedure.

    When is copyright said to be infringed? 

    Section 51, Copyright Act, 1957 provides for two degrees of copyright infringement:

    I. PRIMARY ACTS OF INFRINGEMENT:- When any person, who is not licensed either by the owner of the copyright or the Registrar of Copyrights or who contravenes the conditions of the license agreement or the conditions imposed by any competent authority –

    (i) does any act which the owner has the exclusive right to do, or

    (ii) permits, for-profit, any place to be used for communication of the work to the public, where such communication constitutes infringement unless such person was not aware or had no reasonable grounds to believe that said communication would constitute infringement, or

    II. SECONDARY ACTS OF INFRINGEMENT:- When any person-

    (i) makes for sale or hire; or sells or lets for hire; or during trade, displays or offers for sale or hire; or

    (ii) distributes, for the purpose of sale; or

    (iii) exhibits in public, by way of trade 

    any infringing copies of the copyrighted work.

    It is impossible to lay down any rule, which could serve as a test of what constitutes a copy or colorable imitation. For constituting infringement, there should be direct or indirect use of those features of the plaintiff’s works in which copyright subsists.[4] Copying of a protected work may be direct, indirect, or subconscious. 

    In R. G. Anand v. Delus Films [5], the following propositions were laid by the Supreme Court regarding copyright infringement:

    1. Copyright does not exist in ideas, subject matters, themes, plots, or historical or legendary facts. Violation of the copyright in such cases is, confined to the form, manner and arrangement and expression of the idea (Idea- Expression Dichotomy);
    2. Where the same idea is being developed differently, it is manifest that similarities are bound to occur. In such cases, courts should determine whether or not the similarities are found on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. If the defendant’s work is nothing but a literal imitation of copyrighted work with some variations, it would amount to a violation of the copyright. 
    3. 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 seen or read both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original. 
    4. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a new work, no question of violation of copyright arises.
    5. Where, however, apart from the similarity appearing in the two works there are also material and broad dissimilarities which negate the intention to copy the original and the coincidences appearing in the two works are incidental, no infringement of copyright comes into existence.
    6. Since the violation of copyright amounts to piracy, it must be proved by clear and cogent evidence after applying the various tests laid down in each case.

    In any case of infringement, the plaintiff must prove the following:

    1. That the said work is original [6], i.e., copyright subsists in the said work.
    2. That the alleged act of infringement falls within the scope of the exclusive rights that are owned by the copyright owner [7].
    3. The alleged act that is complained of must amount to infringement, i.e. the plaintiff’s work must be copied and improperly appropriated by the defendant. 

    Courts generally apply the following three tests to determine as to whether or not a work has been copied:

    1. Whether the person who allegedly infringed the copyright of the owner had access to the said copyrighted work;
    2. Assessment of the extent of reproduction by the alleged infringer, i.e. Substantial Similarity Test;
    3. Whether the defense of independent creation is applicable, i.e. whether there are any possible explanations as to how the alleged infringer produced his/her work in record time.

    EXCEPTIONS TO INFRINGEMENT 

    So as to balance the interests of the copyright holder, in the exclusive rights awarded to him/her, and those of the general public, in the free dissemination of work, free uses provisions have been incorporated in laws. This principle of balancing these two interests was established in the case of Donaldson v. Beckett [8], and to date finds a place in the national legislations of various common law nations.

    Section 52, Copyright Act, 1957 provides an exhaustive list of permitted uses, which would otherwise constitute an infringement of copyright. The basic idea behind this list is to permit the use of copyrighted material for purposes of education, research, and the promotion of public policy. These include fair dealing for research and private study, criticism or review, and for reporting current events, reproduction of work in judicial proceedings or legislation’s work, or in a certified copy made under law and publication of work in a newspaper or magazine. 

    Fair dealing, although not defined under the Copyright Act, constitutes an exception or limitation or as a valid defense against copyright infringement and facilitates the use of copyrighted works without the copyright holder’s permission. It is similar to the Doctrine of Fair Abridgment (UK) and the Doctrine of Fair Use (USA). 

    A four-factor test was laid by the US courts [9], as incorporated under  Section 107 of the US Copyright Act, 1976, for the determination as to whether an unauthorized dealing of a copyrighted work qualifies as fair use or not. The four factors included, firstly, the character and purpose of use; secondly, the character held by the copyrighted work; thirdly, the quantity and substantiality of infringement; and lastly, the potential market or value of copyrighted work. The concept of fair use, as in the US, however, is not as restrictive as fair dealing in India, which is limited in scope to the exhaustive list of thirty-two activities provided under the Copyright Act, 1957.

    In Super Cassettes Industries Ltd. v. Hamar Television Network Pvt. Ltd. & Anr [10], the Supreme Court laid down broad principles of law with regards to fair dealing, some of which are:

    1. It is neither possible nor advisable to define the exact contours of fair dealing.
    2. It is a question of fact, degree, and overall impression carried by the court.
    3. Public interest and what interests the public need not be the same.
    4. Commercial use of copyrighted work cannot simpliciter make it unfair.
    5. The motive of the user plays an important role.
    6. The principle of freedom of expression will protect both information as well as ideas. It includes the right to publish and receive information.

    REMEDIES FOR INFRINGEMENT 

    The Copyright Act, 1957 entitles the holder of the copyright to certain remedies, in any case of infringement so as to enable them to protect their exclusive rights over their works. As per Section 56 of the Act, in cases where such rights are owned by more than one person, any such person may, to the extent of the right owned by them, will be entitled to claim remedies under the Act. 

    Civil Remedies

    Section 55, Copyright Act, 1957, empowers and authorizes the owner of a copyright to civil remedies by way of injunctions, damages, accounts, and otherwise as may be conferred by law[11]. The right to claim infringement, as per Section 54, lies with the owner of the copyright, including an exclusive licensee. Civil Remedies for copyright infringement may be:

    (a) Preventive Civil Remedies

    I. Interlocutory Injunction: An injunction is a court order, which compels or prevents any party from undertaking certain acts until the case is finally determined. It is a means of interim relief to the copyright owner. However, the issue of injunction is not a matter of right and courts may exercise discretion while deciding whether to grant or refuse the grant of an injunction. The exercise of this judicial discretion is not unbridled and rather, it is a judicial one, which is governed by rules. Factors to be considered for the grant of interlocutory injunction include (a) Prima facie evidence to support the plaintiff’s case; (b) the balance of convenience between parties; and (c) the possibility of irreparable injury to the plaintiff owing to infringement on the part of the defendant. 

    II. Perpetual/ Permanent Injunction: Upon successful establishment of infringement, the plaintiff will be entitled to a permanent or perpetual injunction to restrain future infringements for the remainder of the term of copyright. The grant of a permanent injunction is to be in accordance with Section 38, Specific Relief Act, 1963. Further, the grant of a permanent injunction does not depend upon any proof of actual damages. What is important, in such cases, is that the plaintiff’s copyright in his/her work has been infringed. However, the plaintiff must establish a possibility of damage in the case where the defendant continues to infringe on the plaintiff’s right. 

    CONTEMPT OF COURT- THE LATEST WRANGLE

    III. Anton Piller Orders: In the UK, courts have made ex parte orders in certain cases, after holding an in-camera hearing of the plaintiff, in the absence of the defendant. Anton Piller Orders are directions to the defendant or his agent, to allow the plaintiff to inspect his/her premises. These orders either allow the plaintiff or his agent to take over the possession of copies that allegedly infringe copyright, or require the defendant to preserve them for the purpose of evidence. It is not the same as a search warrant since its scope is restricted to mere entry and inspection and also requires prior permission from the defendant. For a court to make such an order, three conditions must be satisfied:

    (i) The Plaintiff must put forth a strong prima facie case;

    (ii)The Plaintiff must prove that irreparable damages have or are likely to be caused to him/her. 

    (iii) The Plaintiff must provide clear evidence showing that the defendant possesses infringing copies or materials.

    In case the plaintiff misuses such orders, the defendant shall be liable to damages.

    IV. John Doe Orders/ Ashok Kumar Orders: Courts have been empowered to order injunctions against persons other than those impeded in the suit, who may be found violating the plaintiff’s copyright and whose identities the plaintiff cannot ascertain. 

    V. Appointment of Local Commissioner: Where copyright in computer software is infringed, the plaintiff may request the appointment of a local commissioner ex parte for the purpose of preserving and protecting the infringing evidence. Illustrative guidelines for such appointments were made by the Delhi High Court in Rajeev Kumar & Anr. v. Microsoft Corporation & Anr [12].

    (b) Compensatory Civil Remedies

    1. Damages: Damages may be awarded by courts, as compensations, so as to restore the plaintiff to his position before the infringement. They may be awarded under three heads: actual or compensatory damages; damages to goodwill and reputation; and exemplary or punitive damages.[13] 
    2. Damages for Conversion or Delivery Up: The court may also award damages incurred while intentionally dealing with goods in a manner inconsistent with the rights of the owner, so as to deny the copyright owner of his/her lawful rights or to assert a right which is not in consistency with the copyright owner’s rights. Section 58, Copyright Act, 1957 ascertains that in cases of copyright infringement, all infringing copies and all plates, etc used for their production shall be deemed to be the property of the copyright owner and therefore, the owner will be entitled to recover the possession of the same. 
    3. Accounts of Profits: Accounts of profits are supplementary to the injunction and are required to be paid by the defendant to the plaintiff in respect of the profits he/she made from the infringement of copyright. Calculation of profits, in this respect, is not notional and takes into consideration the actual profits made by the defendant. A plaintiff has an option, either to claim damages or to claim accounts of profits. The plaintiff cannot opt for both. 

    Criminal Remedies

    To sufficiently deter infringers, the Act, under Sections 63-70, provides criminal remedies against infringers. As per Section 63, knowingly infringing copyright or any right under the Copyright Act or knowingly abetting the same is an offense punishable with imprisonment for at least 6 months, which may exceed up to 3 years, and with a minimum fine of Rs. 50, 000/-, which may extend up to Rs. 2 Lac. However, courts have the discretion to reduce the minimum punishment for adequate and special reasons where the infringement was not for procuring gains in the course of trade or business. Further, Section 63B makes the knowing use of infringing copies of a computer programme an offense that is punishable with imprisonment of at least 7 days, which may exceed up to 3 years, and a minimum fine of Rs. 50,000/-, which may go up to Rs. 2 Lacs. Registration of copyright is not a precondition for prosecution under the infringement provisions of the Copyright Act. [14] 

    Border Measures

    Section 53, Copyright Act, 1957 provides that the copyright owner may notify, in writing, to the Commissioner of Customs, or any officer authorized in this behalf by the Central Board of Excise and Customs, that he/she is the owner of the said copyright, and provide evidence of the same and further request the Commissioner to treat the allegedly infringing copies of the said work as prohibited goods. Such notice must also specify the period, which cannot be more than a year, for such prohibition and the expected time and place of arrival, within India, of the said copies. Further, the copyright owner is also to deposit security, as quantified by the Commissioner, with regards to the likely expenses on demurrage, cost of storage, and indemnity to the importer in case the goods are found not to be infringing.  Importation into India is not limited to importation for commerce but also includes importation for transit across the country.[15]

    ENDNOTES

    [1] Bayer Corporation v. Union of India & Ors, 2014 (5) ABR 242: MIPR 2014 (3) 53: 2014 (60) PTC 277 (Bom).

    [2] Section 17, Copyright Act, 1957.

    [3] Entertainment Network (India) Ltd. v. Super Cassette Industries Ltd & Ors., 2008 (37) PTC 353 (SC).

    [4] Associated Publishers v. Bashyam, AIR 1964 Mad 114; Divya Sood Proprietor M/s The Body Care v. Renu bajaj Proprietor M/s The Perfect Body Care, 2011 (45) PTC 307 (Del.).

    [5] R. G. Anand v. Delux Films, AIR 1978 SC 1613.

    [6] Section 13, Copyright Act, 1957.

    [7] Section 14, Copyright Act, 1957. 

    [8] Donaldson v. Beckett, 4 Burr. 2408.

    [9] Falcom v. March (1841, US)

    [10] Super Cassettes Industries Ltd. v. Hamar Television Network Pvt. Ltd. & Anr, 2011 (45) PTC 70 (Del.).

    [11] Dabur India Ltd. v. K.R. Industries, 2008 (37) PTC 332 (SC).

    [12] Rajeev Kumar & Anr. v. Microsoft Corporation & Anr., 2014 (59) PTC 195 (Del)(DB).

    [13] Microsoft Corporation v. K Mayuri & Ors., 2007 (35) PTC 415 (Del.).

    [14] Maojah Cine Productions v. A. Sundaresan, AIR 1976 Mad. 22; Nav Sahitya Prakash v. Anand Kumar, AIR 1981 All. 200; Zahir Ahmed v. Azam Khan (1996) Cri. LJ 290.

    [15] Gramophone Company of India Ltd. v. Birendra Bhadur Pandey & Ors., AIR 1984 SC 667.

    Abhilasha Bhatia | Amity Law School, Delhi

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