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Dealing with copyright infringement in India

A. Infringement  

Copyright is infringed when a person without any authorisation by the author does an act which only the author/ owner is authorized to do, such as by making unauthorized copies, distributing copies, performing in public, broadcasting, adapting, etc., if the act is not covered under the ‘concept of fair use’ (see the fair use exceptions below). Reproduction by use of modern equipment such as photocopiers or unauthorized scanning is covered within the ambit of infringement.

In addition, providing a place for communication, selling, letting for hire, distribution or exhibition of an infringing work in public, or importing infringing copies of a work (except import of one copy for private and domestic use of any work other than a cinematograph film) also constitute infringement.

Understanding the criteria for infringement

Of course, there will be an infringement if a piece of work is simply copied and duplicated (e.g. if a software is copied on CDs and sold), or when a book is photocopied and distributed. However, there are many situations in real-life where portions of stories, or parts of a plot are copied.

For example, X may publish a novel on anti-religious sentiment in the US in the aftermath of the 9/11 attacks. Could another writer who has written a book before him on the same subject sue for infringement of his work? Note that the theme of the 9/11 attacks is merely an idea. Since there is no copyright on an idea or theme, there can be no infringement in this case. Any writer is free to write on the same idea unless he is copying the expression of another's work.

Consider this: plots or themes of movies cannot be copyrighted - and one can make another movie on the same plot as long as the screen arrangement, screenplay, dialogues etc. are not copied.

Let’s modify the scenario. Assume for a moment that X wrote on the individual experiences of a middle-class family living in the suburbs of New York, in the aftermath of the attacks. If another writer Y publishes a book (much after X had published his work) on the life of a middle-class family in Manchester which captures the same experiences and emotions (only the character bear different names). Assume that each chapter in both books is comparable, and the second book has the same end. Could that constitute infringement?

The lines get blurred here. In the second case, there is a significant chance that a court would consider it to be an infringement.

Usually, it is very difficult to prove infringement – unless there has been an act of piracy or photocopying, or distribution, which is direct evidence of the fact that the work has been copied. 
  • Relevant criteria for determination of infringement
To determine whether there has been an infringement, the infringing work must be treated as a whole. A variety of factors are relevant before coming to a finding of infringement. Merely finding some portion that is similar in two works does not amount to infringement.

In an infringement proceeding, the court also tries to conceive how an ordinary observer will perceive the work – will he treat the work as being taken/ copied from the copyrighted source? If yes, then there is an infringement. If writing style, language and errors are similar between two works, it constitutes evidence of copying. Minor modifications will not affect the claim of infringement.

Whether the alleged ‘infringer’ had access to the original work is a relevant factor. Merely having access to the original work does not by itself establish that there has been an infringement. However, if the infringer had no access to the work at all, chances of copying (and hence infringement) are negligible. If the alleged infringer had access to the work, then the inquiry can proceed to the next step.

Using similar scenery in a movie or borrowing minor portions of a plot of a movie/ book from another movie/ book does not constitute infringement, unless these are the essential features of the infringing work. If the alleged work contains material dissimilarities, then it will not be considered to be infringing. The new work should be able to ‘stand’ on its own footing without the borrowed portions.

The process of determination of infringement can be divided into four key steps, as below:
  1. Are the ideas similar?
  2. Is the expression similar?
  3. id the infringer have access to the original material?
  4. If expression in certain portions is similar, have the ideas in the work been treated in a new way? Are there significant dissimilarities which are an essential component of the overall work?
  5. See Section 51 of the Copyright Act, 1957)

Those of you who would like to gain specific expertise in this area, refer to:
  • R.G. Anand v. Deluxe Films AIR 1978 SC 1614
  • Twentieth Century Fox Films v. Zee Telefilms Ltd. (Del HC), July 2012, AIR 1978 SC 1614
You can easily find these cases online by using a search engine.
  1. Remedies for infringement
A. Takedown notices in case infringement has occurred online
As the discussion below will indicate, a person whose copyright has been infringed can claim various remedies from a court of law. Some remedial measures (e.g. certain temporary orders) are immediately issued by courts to prevent further damage to the copyright-owner’s commercial interest, on the basis of preliminary findings. It is not always necessary to approach courts for remedial measures. Under Indian law, certain remedial measures can also be taken by approaching private entities.

With reference to infringing material on the internet, which is very common in case of user-generated content on websites such as YouTube, blogs or social media content, businesses also have the option to write to an ‘intermediary’ (assuming the intermediary operates in India) requesting it to remove the infringing content from its website (for more details see the discussion on Intermediaries in the Information Technology Law Module). The intermediary is required to remove such content within 36 hours of receiving the request.

For example, if a person has written a blogpost on ‘Essentials for your business website’ on Yourstory.in, which is very similar to a post written by a web-development startup called New Age Web Developers (NAWD) on its own website, NAWD can issue a takedown notice to Yourstory.

There may be practical difficulties in approaching intermediaries who do not physically operate from India, as they may respond by stating they are not bound by Indian law. In many cases, they may also be able to rely on the Digital Millennium Copyright Act (DMCA) of the United States, which has similar provisions (DMCA is relevant for businesses from a strategic perspective as majority of the servers or internet registries in the world are located in the US). 

B. Monetary damages, account of profits and injunctions
The key remedies for infringement of copyright are – an injunction against the circulation of infringing material, monetary damages or an account of profits made through sale of infringing copies.

Note that if the infringer is able to establish that he had no reasonable ground to know that the work was copyrighted, an injunction is the only remedy that can be obtained against such person, and the infringer will not be liable to pay damages or account of profits.

To prevent an infringer from taking the argument that he was not aware that copyright subsisted in the infringing work, it is always a good idea for an owner to ‘claim’ a copyright on his work by including a copyright notice. A sample copyright notice is provided below:

“© [Name of entity/individual], [Year of creation of the work]. All rights reserved. Any unauthorized distribution, circulation or republication of a part or whole of the [book/ pamphlet, etc.] will be liable to action under applicable law.”

Pending final decision on a legal proceeding, a temporary injunction can be claimed, which may become permanent if the court finds that there has been an infringement, or it may be revoked if the court makes a finding that there was no infringement. Injunctions can also be granted ex parte, that is, in the absence of the infringer. Under copyright law certain variations of injunctions and other ex parte orders are being granted by courts to protect the interest of copyright owners, which are discussed below.

i) John Doe Orders – injunction against unspecified infringers

John Doe order is a variant of an injunction passed in the absence of the infringer, without providing the infringer an opportunity of being heard on the matter (called an ex parte injunction). High Courts in Bombay, Delhi and Madras have issued ‘John Doe’ orders, that is, interim directions restraining unidentified infringers from infringing copyright. Such orders are useful when it is difficult to identify or locate the infringer(s) immediately, or when the violation is happening at multiple locations simultaneously. Often, the list of violators may also be expanding on a real-time basis. This can happen in case of unlicensed or pirated broadcast of TV channels, unreleased movies or sports broadcasts.

In such cases, it is very time consuming to identify all defendants before applying to the court for an injunction. It may also be too late to protect the rights of the copyright owner, as the harm may already be done. Therefore, an application praying for a ‘John Doe order’is allowed to be filed prior to identification of an infringer, by a copyright owner in such cases.

A John Doe order is binding once it is issued. For the purpose of its enforcement, the Court can appoint officers to identify the ‘infringing parties’ after passing the order.
Example of John Doe order in the ‘Singham’ movie case “ (Reliance Big Entertainment v. Multivision Network and Ors.) (Del HC)

Applying for John Doe orders is a common practice for movie producers, and Reliance Big Entertainment frequently has been frequently applying to courts for John Doe orders for its releases. In 2011, Reliance Big Entertainment apprehended unauthorised distribution of its movie ‘Singham’ by cable operators, infringing CD, DVD, Blue-ray discs and VCD or by online uploads. The company argued that in the past cable operators have indulged in such violations in case of new releases. They have been made parties to the injunction application whenever they could be located, but there can be many other persons involved in such infringement activities, so they requested the court for a John Doe order, which was granted by the Delhi HC.

ii) Anton Pillar orders - For discovering evidence of software piracy and in other infringement cases.

A particular type of remedy, called an ‘Anton Pillar’ order may be granted in copyright or trademark infringement cases. An Anton Pillar order authorizes the owner (accompanied by court appointed officers) to enter the infringer’s premises, make an inspection of relevant documents/ articles and take copies or remove the documents/ articles from safe custody. The purpose of an Anton Pillar order is to prevent destruction of infringing evidence by the infringer. Therefore, it is issued without hearing the alleged infringer’s case (it is an ex parte order).

NOTE : You can See generally Bucyrus Europe Ltd. vs Vulcan Industries Engineering (2004) and Diesel SpAvs Crescent Exports Ltd. (2012) (both Calcutta High Court judgments).

If an infringer was informed each time a legal proceeding was filed against him, he would be in a position to destroy infringing evidence (at least what was in his possession), which could defeat the purpose of the court proceedings.

For example, in 2012, the company manufacturing the brand ‘Diesel’ had been granted an Anton Pillar order by Calcutta High Court for discovery of infringing copies by an Indian company called Crescent Exports. The court had appointed two advocates to accompany the representatives of Diesel.

As a pre-condition to issue of an Anton Pillar order, a court may also require the owner to give an undertaking to pay damages to the defendant if he suffers any loss. This is to discourage frivolous claims by copyright owners, where they do not have sufficient reason to believe that the defendant has infringed their rights.

Anton Pillar orders are extremely useful in software piracy cases, as evidence of pirated software (which is typically circulated online) is most likely to be found at the premises of the person who is distributing the software.

C. Remedies available in respect of imported goods that violate copyright

i) What can an Indian copyright owner do if he realizes that his somebody is importing material that infringes his copyright and selling it in India?

If infringing copies of a worked copyrighted in India are being imported, the owner of the copyright has two options:

  1. He can apply to the Registrar of Copyrights to prohibit import of such goods. The Registrar can make an inquiry on receiving the application. He can enter a ship, dock or any other premises to inspect if there are infringing copies (which can be confiscated pursuant to his order). He also has powers to prohibit the import of such infringing copies.
(See Section 53 of the Copyright Act)
  1. He can apply to the customs authorities (see discussion below) for suspension and prohibition of imported goods. As per the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, a person who has any intellectual property rights, such as trademark, copyright, patent or design-related rights (called ‘Right-holder’), can issue a notice to the Customs Commissioner or another person whom the Customs Commissioner has authorized (Authorized Customs Officer), who has jurisdiction where infringing goods are being imported, to prohibit the import of such goods.
NoteThis step cannot be taken with respect to imported goods of non-commercial nature contained in personal baggage or sent in small consignments which are intended for personal use of the importer. In such cases, making an application to the Registrar of Copyright may be more feasible.

If there are preliminary or reasonable grounds to believe that certain imported goods infringe intellectual property rights, the Deputy or Assistant Customs Commissioner can suspend their clearance, and provide the Right-holder an opportunity to examine and test the goods so that he can verify whether they are counterfeit.

The Authorized Customs Officer can register or reject the notice within 30 working days. If the notice is registered, import of such goods will be prohibited under Customs Act, and a notice will be issued to other customs offices about the prohibition.

The notice must be in accordance in Annex B at the end of this chapter.

Validity: Usually the prohibition has a minimum validity of 1 year, unless the Right-holder requests a shorter period.

Conditions for registration
The grant of registration is subject to two conditions:
  • the Right-holder must execute a bond  with the  Commissioner of Customs  for an amount  that the Commissioner deems appropriate for security, to protect the importer, consignee and the owner of the goods to  bear any costs for detaining the goods until their destruction or disposal.
  • he should also execute an indemnity bond with the Commissioner for indemnifying Customs authorities against any liabilities and expenses on account of suspension of allegedly infringing goods.
ii) What should an importer do to ensure that the imported products do not infringe third-party copyright?

In case of import transactions (especially when books, music or movie CDs, DVDs, etc. are imported), the possibility of copyright infringement by the foreign exporter poses serious risks for the importer. Imagine a situation where XYZ Booksellers Ltd. (located in India) purchases books at a discount from a Chinese publisher. Now, assume that one of the imported publications being purchased in this way is a copy of a book on Defamation Law, which is published under copyright in India by Lexi Publishers Ltd. Let’s assume that the Chinese publisher has not obtained a license from Lexi Publishers Ltd. for the book.

In this situation, Lexi Publishers Ltd. has a legal right to apply to the Registrar of Copyrights to prohibit import of this book. If import of the book is prohibited, there is possibility that the business of XYZ Booksellers Ltd. may be adversely affected. There is also a possibility that XYZ Booksellers Ltd. may itself be held liable for copyright infringement by making infringing copies available for sale in India. In this situation, XYZ Booksellers Ltd. should use a combination of managerial and legal strategies to minimize the risks arising out of the possibility of importing infringing goods.

Legal mechanisms: For example, the importer must be provided suitable representations and warranties from the supplier that no third-party copyright is violated in course of export of the articles. The contract should also state that the supplier will be liable to indemnify the Indian importer in the event the importer is held liable for copyright infringement. The importer may also have rights to terminate the contract in advance, if there is some evidence of a possible copyright infringement.

Managerial practices: Some of the managerial practices could be - inspection of product samples, checking publicly available lists of suppliers of the product and seeking reliable references from the exporter. These practices can be employed to check the genuineness of the goods and the exporter’s reputation in the market.

  1. Criminal remedies against infringement
Copyright owners may also initiate criminal proceedings against an infringer, although these are less common. Criminal proceedings are, however, a greater deterrent against piracy. Knowingly infringing or encouraging infringement of a copyrighted work is punishable with imprisonment of up between 6 months to 3 years and with fine ranging between INR 50,000 – INR 2 lakhs.

Using a computer program knowing that it is pirated attracts a similar punishment – which is a powerful tool for proceeding against software piracy.

How can criminal proceedings be initiated for infringement?

Criminal proceedings in respect of infringement can be initiated by filing a first information report (FIR) at the police station – the infringer must be named as the accused in the FIR. The police can arrest the infringer without any warrant from the magistrate. Further, an allegation of the offence of copyright infringement is non-bailable. Hence, the person accused in the FIR will not ordinarily be granted bail as of right and it is the magistrate’s discretion to grant bail.
In addition, a sub-inspector or more senior police officer can seize infringing copies on receiving information about the same, without any prior authorization or warrant from
The judicial body before which a criminal infringement case proceeds is:
  • the Metropolitan Magistrate in a metropolitan area such as Mumbai, Delhi, Bangalore, Kolkata, Howrah or
  • a judicial magistrate of the first class in other areas.
Fear of arrest usually creates a more deterrent effect against infringement.
 [See Sections 63 to 70 of the Copyright Act for further details]

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