# Part-1 How early stage businesses can use copyright law to protect important works

An understanding of copyright law is a necessity for any startup today. Copyright protection is not useful only for book authors, musicians or film producers. It is relevant for every business, be it small or huge, if it has its own website, or a blog, software, unique user interfaces, product manuals, sales pages, sales pitch, catalogue or any other marketing material. Basically, if your company is generating images, code, videos and text for various activities of the company, it is likely that you need to protect the same from pirates and competitors. Copyright law is the only tool you have - which gives you the right to prevent others from copying your work in certain circumstances. Intellectual property is often so crucial to the business model of a company, that ability to effectively protect it often accounts for making or breaking the business.

Copyright is relevant not only for entrepreneurs, but also for employees and freelancers - content marketers, social media marketers, photographers, bloggers, freelancers and a whole lot of other service providers. An understanding of copyright law can enable you to more effectively commercialize content generated or owned by you and prevent others from unfairly benefiting from your work. You will also need to know what actions you can take if you find out that another entity is wrongfully exploiting your work.

The Indian Copyright Act, 1957 grants copyright protection to five types of works (listed below). The discussion below explains how each type of work may be relevant to an early stage business (provided that the content is copyrightable):

i) Literary works – A literary work is not necessarily a piece of literature - a story, essay or novel. Brochures, manuals, blog posts and articles, content of a website and any other marketing material will also qualify as literary works. In fact, works which would not sound literary to a common man, such as software, computer programs, diagrams, tables, compilations and computer databases, a set of logarithmic tables or an income tax return compilation are considered literary works within the meaning of copyright law.

ii) Artistic works – Paintings, drawings and photographs are protected under this category. Any original photographs, images (whether they are created in physically form or on a computer) can be protected under this category. This would cover layouts, package designs, logo and sometimes even user interface, layout or design of a software or website.

An infographic could be protected under both artistic and literary categories (depending on the kind of content and imagery that has been used in the infographic). It may have components of both an artistic work as well as a literary work.

iii)    Musical works– Musical works must not be confused with sound recordings – music which is described in any form of graphical notation (e.g. sheet music, or guitar tabs) is protected under the ambit of musical works. Words are excluded from the definition of a musical work. The tune and instrumental notations are protected under this category. For example, A.R. Rahman’s tune for Airtel (not a performance or sound recording) will be protected as a musical work.

NOTE:
1. Those who are interested in knowing more about sheet music may visit here

• A detailed discussion of what guitar tabs are and how you can read them is available here
1.  ‘Cinematograph’ films–This is the term used under the Copyright Act for visual recordings. The act protects visual recordings on any medium. Promotional videos, video testimonials, interviews, screencasts will be within the ambit of a cinematographic film.

2. Sound recordings–The act protects sound recordings on any medium. For example, a recording of a song, podcasts, audio books will be covered under this category.

3. Dramatic works–A piece of recitation, a choreographic work, a play or a script, a skit, scenic arrangement or acting, etc. whose format is fixed on a medium (either by writing or otherwise) will be within the ambit of dramatic work. A cinematographic film has been specifically excluded from the ambit of a dramatic work.

A. Conditions for a work to be copyrightable

1) Copyright protects expression (of an idea), not the idea itself. For example, a politician's views on democracy may not be different from a pre-existing notion of democracy. However, if he has written or delivered a speech on his views in his own unique words, the speech will be protected under copyright law (provided there is a written or recorded version of it). Note that the same idea can be expressed in many different ways, and each of such expressions are eligible for protection independently under copyright law.  As a result of this, another politician can write another speech covering the same issues and ideas, and if his expression of the same is unique, that will be eligible for protection under copyright law as well.

Copyright law will not protect an expression if there is only one way to express a particular idea - this is known as the ‘merger’ doctrine. For example, some mathematical expressions can be expressed only in one or two ways. No one can claim copyright on those expressions.

Copyright law cannot also prevent another person from providing an identical result as other copyrighted material. For example, two softwares which perform the same function can both be protected by independent copyright if they are written in different computing languages, or in the same language but with different codes. Copyright law only ensures that another person cannot simply lift your code and commercially exploit the same. If they achieve the same functions as your codes by writing codes in a new way, even the new code will be entitled for copyright protection and will not infringe your copyright over your codes.

2) In order to be copyrightable, a work (in any of the categories listed above) should be ‘original’. Under copyright law, originality simply implies that the work must be the result of the author's own skill and labour. The investment of skill and labour by the creator of the work is important, not any rare nature of the work. Evidence of investment of sufficient amount of skill and labour of the creator is sufficient for existence of copyright, and no particular level of aesthetic appeal, technical achievement or intellect is required. The Supreme Court has recently added the requirement that that there should also be a certain ‘minimum amount of creativity’.

Also, if you want to copyright your content or software, the expression or the codes should not be a copy of something that already exists. If it is so, it would be very difficult for you to establish that your work is original.

In cases where there is no effort put in by the author, e.g. where a newspaper article has been merely copy-pasted into a blog (without addition of background, a different perspective, or making suitable edits to the form of expression), the work will not be copyrightable. Further, there must be some effort in creating the work (in legal parlance, the work must not be ‘de minimis’).

Expression has to be substantial in nature as well. An article or speech consisting of only one paragraph can be copyrighted if the same is original, substantial and reflects use of skill and labour. However, a slogan such as “Impossible is Nothing” or “Yeh Dil Maange More” is not copyrightable. Such an expression, however, may be trademarked, as a trademark protects the relationship between a unique name/ phrase and goods/ services.

B. Rights available to a copyright owner

When you create any content or material that is copyrightable, you automatically acquire copyright over it instantly.

Simply put – a copyright owner has the sole authority to exploit his work from the moment of creation, unless he has himself permitted somebody else to do so. He can prevent others from copying, distributing, or making adaptations of the work. As per the Copyright Act, he has exclusive right to make copies of his work (e.g. by publication of copies of a book, distribute the work), make an adaptation or a cinematograph film out of it (e.g. by converting a book into a movie or an audiobook or translation in another language, converting a blog post into a video tutorial), to perform the work in public or translate it into other languages. The owner may exploit it himself or authorize another person to do it by licensing or assigning the copyright.(See Section 14 of the Indian Copyright Act, 1957)

Note: Understanding Moral Rights
In addition to the rights of commercial exploitation, authors also have certain special rights under Section 57 of the Copyright Act. They have the right to claim authorship of the work, and to prevent any distortion, mutilation or modification of the work (Alterations) (during the term of the copyright) which adversely affects the author’s reputation. The author can claim damages or restrain another entity from making Alterations.

The term of copyright for a published work is as follows:

 Type of work Duration of copyright Literary, dramatic, musical, artistic work, photographs 60 years after the death of the author. The period is counted from the beginning of the next calendar year after the year of death of the individual creator. For example, if a work is published on 12 June 2007, and the author died on 25 May 2010, the counting of 60 years will commence on 1 January 2011, and the copyright will expire on 31 December 2070. In case of a work that has more than one author, the 60 year period will be counted from the year after the death of the author who dies last. In case the creator is not an individual but an organisation or entity, copyright subsists for 60 years only. Sound recording and cinematograph films 60 years after publication. The period is counted from the beginning of the next calendar year after the year of publication. e.g.: A sound recording is published on 31 October 2007, counting of the 60 year period will begin on 1 January 2008, and the period will expire at the end of 31 December 2067.

# Part 2 –Most common techniques for exploitation of copyright

A business may not always be capable of utilizing the full commercial potential of a copyrighted work all by itself. It is also possible that others in the market are better placed to commercially exploit the work. In such cases, besides exploiting the copyright itself, it may grant others the right to do so too, for payment of a fee. Depending on its needs and the commercial circumstances, it may also decide to sell the copyright completely, or grant exclusive licenses in which case it will not retain any rights in the work.

There are two modes of commercialization of copyrighted works – assignment and licensing (which may be exclusive or non-exclusive).

In real-life, assignment is usually done when the full gamut of the economic rights under copyright law are intended to be transferred (although partial assignment is also permitted under copyright law as discussed below). The duration is also typically kept as perpetual. When the commercial intent is to transfer limited rights only, licensing is preferred.

Consideration for either of the methods can be received either as a lumpsum amount or by way of a periodic royalty.

When the creator of a copyrighted work intends to ‘sell’ the right to exploit the work, he can assign the copyright in the work. As per the Copyright Act, copyright in a work can also be assigned partly i.e. for a particular duration, or with a geographical limitation. For instance, you can assign the rights to a certain documentary film or graphics you have designed to a company for the next 5 years, only for the region of continental Europe.

The assignee is treated as an owner of the copyright with respect to the assigned rights. Therefore, an author of a book may either assign all rights in the book, including the right to make a movie, game, compilations, etc. out of it, or assign it in a limited way - such as the right to translate in French language only.

When a company is acquired, the acquirer may require assignment of copyright in all the works as a pre-condition to the deal. For example, if Harper Collins Publishers India Ltd. intends acquires a law books publisher (e.g. Eastern Book Company or EBC), it may require EBC to assign the copyright in the books published by it.

Copyright can also be assigned in a future work, that is, a work which in not in existence at the time of assignment. In such a case, the assignment takes effect when the work comes into existence. This provision is useful in real-life situations as it enables businesses to assume copyright over any material produced by consultants, freelancers or employees even prior to commencement of the work.

NOTE: In case of work done by employees, copyright vests with the employer by default, if there is no provision in the employment agreement, under the Copyright Act.

For example, a construction company may want copyright over designs of the building produced by architects, a technology startup may require copyright on all material produced by any experts engaged as online marketers, copywriters, software developers etc. In each of these cases, the work is created much after the consultant is engaged for his services. For this purpose, agreements between the business and the consultant (executed at the time of engaging the consultant) state that copyright in any work created by the consultant will be automatically assigned in favour of the business.

As per the Copyright Act, all assignments must be in writing to be valid. Therefore, assignment is either undertaken by executing an assignment agreement or incorporating a clause for assignment in another contract, such as a consultancy contract.

Under the Copyright Act, the assignment instrument must mandatorily contain certain terms. The agreement should contain the description of the work that is assigned, the nature of rights, and any consideration or royalty amount. For the purpose of discussion here, these will be referred to as Compulsory Assignment Terms in the rest of this document.

The assignment can be revised, extended or terminated on mutually agreeable terms. In addition, the geographical area over which the assignee can exploit the copyright, duration of assignment (the copyright may be assigned perpetually as well) and the consequences if he does not exercise the rights assigned should also be specified (these shall be referred to as the Optional Assignment Terms).

If the Optional Assignment Terms are not specified, the copyright act applies certain ‘default’ provisions.
For example:

1. If no duration is specified, the assignment is considered to be valid for 5 years.
2. If no territorial limit is specified, the assignment extends all over India (but not internationally).
3. If there is no stipulation on the consequence of not exercising the assigned rights, the assignment terminates in one year.

If there are disputes related to the assignment, either party can file a complaint with the Copyright Board established under the Copyright Act. Such disputes could relate to non-use of the copyright, or other matters. The Copyright Board has powers to revoke the assignment, if 5 years have lapsed after assignment and the board is of the opinion that the terms of assignment are harsh to the assignor.

No filings are required for assignment of copyright under Indian law.

(See Sections 18-19A of Copyright Act)

B. Licensing

Note that a person who has been assigned a copyright may choose to license his rights over the copyrighted material to others.

A copyright or trademark license need not always be entered into as a separate legal document. A license clause may also be a part of other commercial agreements, e.g. a marketing agreement for publication of books – where the copyright owner licenses the right to use limited portions of the content of the book for promotion, such as a preview of a chapter or the table of contents (as is done on Amazon.com).

In such arrangements, the license is often granted

i) on a non-exclusive basis, that is, the copyright owner may provide a similar license to other entities, and

ii) on a royalty-free basis, that is, no royalties are payable by the marketer to the copyright owner for the use of the copyrighted work in promotion of the material.

# Part 3 - Registration of Copyright

Unlike trademarks and patents, registration of copyright is optional. Under Indian law (and in most other legal systems), a copyright comes into existence the moment a work is created. However, from an enforcement perspective, registration is often preferred.

In the absence of registration, a third party can claim that a particular work that a business is using was created much earlier by the third party. There is also a chance that records kept by the creator may not be considered reliable by enforcement authorities or courts. Further, it is important for a business to be in a position to avoid unnecessary litigation (or to be able to dismiss it as baseless), even when a third party’s claim is unfruitful, particularly where intellectual property is an essential part of the valuation of the business.

A certificate of registration of copyright is considered a prima facie evidence of date of creation of the document and the creator of the document, as these particulars are filed with a statutory authority, i.e. the Registrar of Copyrights at the time of registration.

Step 1
Filing the application for registration

Application for registration must be made in Form IV (of the Copyright Rules) to the Registrar of Copyrights in triplicate, at the following address:

Registrar of Copyrights, B.2/W.3, C.R. Barracks, Kasturba Gandhi Marg, New Delhi- 110 003, Tel: 338 4387.

Registration can be done either through online or the forms with requisite forms can be send through speed post/registered post. Online registration of copyright can be done at: http://copyright.gov.in/UserRegistration/frmLoginPage.aspx.

In case of an unpublished work, an applicant may send a copy of its manuscript, or only the extracts. The Copyright Office affixes its stamp on the document which is evidence of registration. If two copies of the manuscript are sent, one copy will be returned with the seal. The other copy will be retained by the Copyright Office for record-keeping purposes. Confidentiality of the manuscript will be maintained.

If an unpublished work that was registered is subsequently published, changes can be made to the registered particulars by filing Form V.

The application must be filed with appropriate fee (see Annex A). Three copies of the published work must be sent along with the application.

Note: Under the copyright act, even unpublished works can be registered.

Step 2 -

The person applying for registration shall give notice of his application to every person who claims or has any interest in the subject-matter of the copyright or disputes the rights of the applicant to it.

Step 3

If the Registrar of Copyrights is satisfied about the correctness of the particulars given in the application and no objections are received within 30 days of filing the application, the copyright will be registered.

If objections are received, or if the Registrar believes that some of the particulars are incorrect, he may conduct an inquiry and only enter those particulars which he considers as correct.

If copyright is registered, the Registrar of Copyrights sends a copy of the entries made in the Register of Copyrights to the concerned parties.

# Part 4 – Open Source Licensing

When a person (referred to as author) creates an original work (i.e. with his own skill and labour), he acquires copyright over it by default (unless he is an employee or working under a contract because of which copyright vests in another party). As explained before, acquisition of copyright over one’s own work does not require registration (although registration is useful). Once copyright expires, the work passes into the public domain and can be used by the general public.  The use of the work is only subject to the moral rights of the author.

In recent days, open-source softwares and open-source licensing have gained prominence. Open-source is a term which is used in context of works in which the creator has a copyright, but over which he has relinquished (or licensed) certain key rights (see below).

Traditionally, when a copyrighted work, such as a software is purchased, a user typically obtains a license to use the software. The terms of usage are governed by the End User License Agreement (EULA). In most standard software which is purchased off the shelf, a user does not get access to the source code, and is only entitled to use the software for personal purposes (without sharing it with anyone else).

Works are considered to be open source if they meet the ten conditions stipulated by the Open Source initiative in California, US. Some of the conditions are – access to the source code of the software must be provided, not discrimination against specific persons/ groups or against certain purposes (e.g. prohibiting use for business, etc.), non-restriction of other software (e.g. it should not state that it can only be used with other open-source software), and so on. For the full list of conditions, visit the link.

Further, the terms of most open source licenses require the license information to be displayed in every future copy of the work.  A license that is called ‘open source’ must be reviewed and approved by the OSI, to ensure that it meets the open source definition. Nevertheless, many people loosely use the term open source for works granted under similar license terms.

Open source works can be used, modified and distributed to the public. They may even be sold. However, depending on the terms of the open-source license concerned, it is possible to restrict modification of open source software, or to start selling modified open source software.  Works which cannot be sold by a user, but can be used, modified and distributed (so long as they are not sold) qualify as copyleft works. Broadly, copyleft is a sub-category of open-source licenses.

Open source and free software are different – a software whose source-code is not available in the public domain but which can be used for free is a free software, sometimes called a freeware, but will not be considered open source.

i) Permissibility of profit-making activities in relation to open-source software

Merely because open source software are free to distribute and modify does not mean that the open source software industry does not make money. Red Hat maintains a Linux business that makes approximately $90 million in annual revenues, while Sun Microsystems has revenues of approximately$18 billion.

Although open source software is free, there are significant possibilities for a developer/ business focussed on open source programs to generate a profitable revenue stream. Interestingly, most open source licenses do not contain any warranties about the merchantability of the software (that is, on whether it is capable of being used for a particular purpose) or any provision for damage in case of harm or malfunction of the software, and a user must use such software at his own risk.

Sometimes, the software are not easily implementable by users who do not have a high level of technical specialization. In this situation, businesses have started making money by customization, value added services, integration and maintenance services, paid add-on modules (e.g. paid modules for Joomla or Drupal, which are open source content management systems), warranties or other assurances, offering support and troubleshooting contracts, etc. Some of these services are very profitable if they are marketed to large institutional clients.

Further, the business is also entitled to create its identity by branding its open source activities. Imagine the wide spread use of the free software and the branding it can generate for a company. One prominent example of this is one of the most celebrated companies of the Silicon Valley, 37 Signals, which created Ruby on Rails (a programming language which is widely used - Twitter was initially built on Ruby on Rails). 37 Signals has its very popular proprietary software and also earns millions from its workshops, conferences and other services. The branding earned by creating Ruby on Rails gave the company an enviable stature and widespread fame.

ii) Consequences of breach of an open source license

As per the amendment to the Copyright Act (which came into force in June 2012), alteration of rights management information (rights management information includes details of the author and terms and conditions regarding the use of rights) without authority or distribution of software with knowledge that rights management information has been is punishable with
imprisonment of up to 2 years and fine. Breach of the terms of an open source license will be punishable under this provision.

# Part 5 – Copyright infringement and remedies

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.

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?

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?

(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.

Exceptions to copyright infringement - Fair use

Use of a copyrighted work for certain purposes is permitted under copyright law and does not attract infringement provisions. This is known as fair use (in the US). The Indian Copyright Act uses the expression ‘fair dealing’. Section 52 of the Copyright Act lists 31 exceptions. Broadly speaking, the exceptions permit the following kinds of actions in relation to copyrighted works (Permitted Uses):

• Use for the purpose of research and private study, or for review and criticism
• Reporting of current events
• Reading a reasonable quantity of the extract in public
• Reproduction or performance in the course of instruction, or as part of questions (or answers) in an examination
• Viewing of a recording by members of a club or non-profit organization, or by residents of residential premises as part of the amenities.
• Making or publication of drawings, paintings or artistic works that are permanently situated in public places or premises to which the public has access
• Making up to 3 copies of a book (including pamphlet, sheet music, chart) for use by a public library if the book is not available for sale in India
• Making copies of a computer program from a personal copy which has been legally obtained, for non-commercial personal use (Software Use 1)
• Any acts necessary to obtain information essential for inter-operability of an independently created computer program with other programs by a lawful possessor of a computer program if such information is not otherwise readily available (Software Use 2)

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:

a. 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)

b. 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.

D. 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]

# Part 6 – Understanding Digital Rights Management and Copyright Law

With growing popularity of peer to peer sharing (P2P) softwares, torrents, etc., it has become possible to circulate copies of softwares, e-books, and other copyrighted material electronically. Hence, digital rights management (DRM) technologies are constantly developed to be used by software manufacturers, publishers and other copyright holders to secure copyrighted materials from being copied. For example, songs stored on a particular user’s iPod cannot be copied to another iPod. Similarly, Google Books and Kindle use DRM measures to prevent piracy of e-books.

DRM controls the use of copyrighted material by implementation of technological measures. For example, a DRM technology may be used to make a software work only if the user possesses a USB token. Alternately, a DRM measure could involve pure software implementation – for example, a video may be played on a user’s computer only when he is connected to a specific website.

What is the relationship of DRM technologies with copyright law? Read on.

i) DRM and Fair Use:

DRM technologies may interfere with fair use. A DRM method is often ‘blind’ to the kind of use that copyrighted material has been put to. For example, assume that a particular software allows only users who have a key to use it, and one user can only install the program on one machine only. If the software has been purchased by a teacher, he may require, for certain purposes, his teaching assistant to use it as well. While such use may be permitted under certain circumstances under fair use provisions, DRM protection may prevent such use or make it practically unviable.

Therefore, in its attempt to prevent copyright infringement, DRM may in certain cases interfere with legitimate uses of copyrighted material (which is permitted under fair use).

Note that there is no legal remedy available to someone who is prevented by DRM measures to utilize copyright for fair use purposes. In such cases, the only available option for a user is to circumvent the DRM measure technologically. Circumvention of a DRM protection technologically for the purpose of ‘fair use’ will not attract any liability (see discussion below), although the entity who has altered the DRM measure will have to prove that it was done for a fair use purpose, in case of a legal proceeding.

What happens if you break or compromise the DRM measure? In June 2012, the Copyright Act was amended (by introducing Section 65A), to prohibit measures aimed at circumventing technologies that protect rights under the Copyright Act.

However, circumvention measures against DRM technologies are permitted under the following circumstances:

•  for taking actions for obtaining information related to inter-operability and
• making copies of legally obtained software for personal use.
• testing the security of a computer system/ computer network with the authorisation of its owner or operator;
• actions that circumvent technology measures intended for identification or surveillance of a user
• conducting encryption research
• a lawful investigation
• measures taken in the interest of national security.

Unfortunately, the punishment for circumvention of technological measures is less severe compared to the punishment for infringement of copyright – it is punishable with imprisonment of up to 2 years only, as compared to 3 years’ imprisonment for infringement of copyright. Further, any person who alleges circumvention of technological measures will have to approach a magistrate to file a complaint – the police cannot initiate investigation pursuant to an FIR. The accused can obtain bail immediately upon arrest, as the offence is bailable.

ii) DRM and data protection

DRM technologies also raise data protection concerns. If, pursuant to the implementation of the technology, a software manufacturer or service provider is able to collect personal information and transmit it back to a host without the user’s knowledge or consent, there may be a possibility of violation of data protection law.

# ANNEX A

Fees For Registration

 Application in respect of Fees Literary, dramatic, musical or artistic work (which is not used with goods) INR 50 Literary, dramatic, musical or artistic work which is used with goods (e.g. promotional material, operating manual, brochures, etc.) INR 400 Sound recordings INR 400 Cinematograph films INR 600

# ANNEX B

FORMAT FOR NOTICE OF REGISTRATION TO CUSTOMS COMMISSIONER

(as per Intellectual Property Rights(Imported Goods) Enforcement Rules, 2007)

Note
: The notice below must be accompanied with requisite application fee (as per the rules, the application fee is INR 2000).

 1 Name of the  Applicant: 2 Contact Details of the applicant: (A)   Office address: (B)   Residence address (C)   E-mail address (D)   IEC No 3 Applicant’s Telephone numbers( including mobile number) 4 Name and  contact details  of  authorized representative   of the right holder. ( please attach authorization from the right holder) 5 Proof of the  existence and ownership of a valid  intellectual property right by the right holder 6 A statement  of the grounds for the notice of  suspension of  release of the goods allegedly infringing intellectual property rights 7 In  the case of a specific consignment  of goods allegedly infringing intellectual property rights, details of the consignment and  a statement of the ground for the notice including prima facie evidence of infringement 8 Detailed description  of the goods with Customs Tariff Heading in respect of which an intellectual  property right applies, together with a sample,  model or photograph  of a genuine product 9 Name of customs  airport/ customs port/land customs station to be covered

I/We declare that the particulars  furnished above  are true to the best of my/our  knowledge and the documents enclosed herewith  are genuine.

Signature of the  right holder or his authorized representative

Office Seal

Place:

Date:

[F.No305/96/2004-FTT(part-I)]

[Name and signature of the government officer]