Omega S.A. vs. Costco Wholesale Corp: First Sale Doctrine vis-à-vis Imported Goods

On January 20, 2015, a three judge panel from the United States Court of Appeals for the Ninth Circuit passed a decision which is a victory for Costco and other similar retailers alike. The Court affirmed the decision of the Central District of California which had granted summary judgment to the defendant, U.S retailer Costco. The defendant had been sued by the Swiss Luxury Watches manufacturer, Omega for copyright infringement.

Omega manufactures luxury watches in Switzerland, which it distributes around the world. One of Omega's high-end watches, the Seamaster, often bears an engraving of the Omega Globe Design (“Omega Globe”). Omega obtained a copyright for the Omega Globe in March 2003 and began selling watches with the engraving in September 2003. In 2004, Costco purchased 117 Seamaster watches bearing the Omega Globe on the so-called “gray market”. Omega sold the watches to authorized foreign distributors. Unidentified third parties then bought the watches and sold them to ENE Limited, a New York company. It was from ENE Limited that Costco then purchased the watches. Furthermore, Costco sold the watches to its members in California.

Omega sued Costco for copyright infringement claiming that it had authorized the initial sale but did not approve of the importation of the watches into the U.S.   Costco defended on the grounds of the first sale doctrine, which currently provides a defense for reselling goods manufactured in the United States that are resold by retailers or distributors. Costco claimed that the doctrine applies to foreign-manufactured goods as well. The Central District of California granted summary judgment to Costco, noting that Omega had engraved the Globe Design on its watches at least in part to control importation of the watches, and thus had misused its copyright. According to Costco, the first sale doctrine allows a copyright holder to control the initial distribution of his product, but prevents the copyright holder from controlling a copy’s distribution once it has entered the stream of commerce. Costco argued that copyright holders would be able to eliminate both secondary markets for copyrighted products and the market for used goods. According to Costco, copyright holders would also be able to restrict rental-, lease-, and other lending-based markets.

While the Costco suit was under way, the Supreme Court held in 2013, in Kirtsaeng v John Wiley & Sons that the first sale doctrine also applies to copies of protected works lawfully manufactured abroad. Since the Kirtsaeng judgment retroactively applied in Costco, the Ninth Circuit found that Omega had no copyright infringement cause of action against Costco.

“Omega’s right to control importation and distribution of its copyrighted Omega Globe expired after that authorized first sale, and Costco’s subsequent sale of the watches did not constitute copyright infringement”.

- Nayanika Singhal

Google lands into controversy

Google has landed into controversy with regard to its services, Google Books and Google News. Authors Guild has filed a lawsuit contending copyright violation and objecting three sentence “snippet” of a book that is reproduced by the search engine.

The 2nd Circuit U.S. Court dismissed the contention and held that the concept of snippet is highly transformative and falls within the ambit of “fair use” in copyright law. The Manhattan Court heard the arguments by way of an appeal. The approach of the bench seemed to favour the defendants stressing on extreme liberal approach of fair use. Judge Level is of the view that most classic fair use cases were based on activities that were commercial in nature.

The aspect that needs to be focused here is the traditional jurisprudence on fair use. According to it, mere reproduction in the absence of any value addition would not constitute fair use in such a profit-making scenario. Google Books makes no value addition to the book.

-Shambhavi Mishra

Overlapping of Intellectual Property Rights

In the case of Mukul Goyal v. Union of India and Ors., Section 15(2) of the Copyright Act has been brought under the scanner and has been contended by the petitioner to be ultra vires. As per Section 15(2), any artistic piece that is capable of being registered as a design, but has not so been registered, will lose its copyright protection the moment it has been reproduced more than 50 times. The petitioner has contended that S. 15(2) and 2(d) infringes his right to carry out his trade under Article 19(1)(g). Also Article 14 is violated as S. 15 imposes arbitrary restriction and the number of reproductions-50, is without any rationality.

As per Microfibres v. Giridhar, copyrighted artistic works simpliciter would not be hit by S. 15)2) while design works would be hit. This results in ambiguity due to overlapping Intellectual Rights. 

One solution can be to protect the original designs as artistic works under copyright law and amending the Copyright Act to ensure that any artistic work produced industrially more than 50 times is granted protection for only 15 years.

-Shambhavi Mishra

The Tale behind Fait d' Hiver

Jeff Koons for his porcelain sculpture Fait d’ Hiver (created in 1988) is likely to be sued by Frank Davidovici for plagiarism. Fait d’ Hiver is also the title of 1985 Naf Naf ad. The sculpture somewhat resembled the ad where a woman was lying in the snow with a pig and a Saint Bernard barrel around its neck.

Jeff Koons was sued for copyright infringement in the United States in 1992. He took the defense of fair use and subsequently lost it but won case on similar grounds in 2006. French law does not have a fair use defense as exhaustive as the United States and only certain articles provide for several uses of a protected work which the owner cannot oppose (for the purpose of caricature, parody or pastiche)

In the CJEU Deckmyn case, it was held that parody is an autonomous concept of European law and must be interpreted uniformly throughout the Union. Parody is an expression of humour and mockery and evokes an existing work (noticeably different from it).

The issue before Jeff Koons is to prove that the 1985 ad is still remembered and the sculpture is recognized as a parody of the Naf Naf ad. He may also contend that people were aware of the ad at the time of creation of the sculpture and current knowledge of the ad is irrelevant.

-Shambhavi Mishra

wetter.de v. wetter.at: Tug of War

The expansion of the E-World has resulted in disputes relating to domain names. The bone of contention was the use of the sign “wetter.de” between German website wetter.de and the Austrian weather website webber.at which was also accessible “Wetter-DE/Wetter DE/wetter.de” and offered a Smartphone app called “wetter DE” via its online shop.

The Regional Court of Cologne, decided in favour of wetter.at. On appeal, the Higher Regional Court of Cologne initially held that “wetter.de” was subject to work title protection but afterwards decided that Austrian website can continue with its usage as there is very low level of distinctiveness. Wetter describes the content of the app and was not protectable under Articles 5 (3), 15 (1, 2, 3 4) German Trade Mark Act. The judges were of the view that it even failed to qualify for work title protection. It was purely descriptive in nature without even a low degree of distinctiveness.

Wetter.at in the meantime remains free to use the signs “Wetter-DE/Wetter DE/wetter.de” for its apps.

-Shambhavi Mishra

Battle of the Titans

Computer programs are subject to constant new developments, making issues like Copyright infringement a subject matter of pertinence. Presently, Oracle and Google is battling on similar grounds. In August, 2010 Oracle filed a complaint that Google has copied verbatim the literal elements of the API packages in its mobile operating system. API packages form the platform for mobile software development; in this case Google went to the extent of replicating the exact elements of the declaring source code. The issue which was dealt with most was about the non-literal elements of 37 packages out of 166 packages.

Northern District of California decided the case in favor of Google and held that API is not a subject matter of Copyright. The Ninth Circuit in this case endorsed the principle of Abstraction-Filtration-Comparison which was developed in Computer Associates Int. Inc. v. Altai Inc. . Copyright protection cannot be denied for the lines of the declaring code because Sun/Oracle did not provide only a single technique of writing the declaring code. Secondly, those phases used in it are creative and original in terms of selection and arrangement and certain expressions in the programs are subject to copyright protection.

Google filed a petition in the U.S. Supreme Court to the review the decision of the subordinate court on 6th October, 2014. Thus, a lot is at stake in terms of money, reputation which will be depending on the Supreme Court.

-Shambhavi Mishra

What amounts to Communication to the Public

US Copyright Act of 1976 gives copyright owner exclusive right to perform the copyrighted work publicly.[1] This is a case[2] of infringement of broadcasting rights under copyright law, where the defendant Aereo Inc. started a service over the internet through which its subscribers could watch TV programmes over the internet at the same time as the programs are broadcast over the air.

Broadcasters, distributors, television produces etc. argued that this act of Aereo violates their exclusive right of public performance provided under the Copyright Act, 1976.

In response to the above claim Supreme Court hold that the act of Aereo infringes the right provided under the Copyright Act. The court considered two questions (1) whether Aereo’s operation amounts to performance (2) whether it’s a public performance. In answer to first question it concluded activities of Aereo amounts to performance. Answering the second question it rejected Aereo’s argument that transmission of program to a subscriber is made through a specific antenna allotted to that subscriber only so does not constitutes public performance. The court further clarified that it amounts to transmission to public or public performance where members of pubic receive the performance at the same time and place or different times or places. In other words, the public need not to be situated together.

-Gajendra Khichi

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[1] 17 U.S.C. SS 106(4)

[2] American Broadcasting Cos. V. Aereo 573 U.S. _(2014)

Orphan Works

Copyright protected work for which the rights holder(s) is/are positively indeterminate and cannot be contacted, is said to be an Orphan Work. Even when the author is known, but there is lack of sufficient details to contact him or her, the work falls into this domain. A copyright holder’s sudden demise might also lead to the work slipping into the category of Orphan Works, when the inheritance cannot be established.

The fact that the owner of the copyrighted work cannot be reached makes it very difficult to obtain his permission for the use of the work, mere digitization becomes impossible. The use can only be warranted by Fair Use Exceptions.

The respective Governments have taken steps towards extending the accessibility of these works to the general public for these works to maintain their successful circulation and some have also taken steps to guarantee the payment of royalties for use of such works.

The latest news in this regard, is the UK IPO’s licensing scheme for Orphan Works. The IPO intends to maintain a register of works which can be licensed out to Applicants upon payment of royalties. The register will also enable the authors to check if any of their works have been labeled as Orphan Works under the system. The IPO also retains the power to deny the Applicants licenses where the proposed use is deemed to be inappropriate, or on any other reasonable ground.

The EU rules, in place, have already allowed the libraries, museums and universities, among other institutions, to digitize “Orphaned Works” from their respective collections, only after a diligent search has been carried out for determining the owners of the works. It is only time which shall determine the success of the scheme which the UK IPO has intended to move ahead with, and similar frameworks being adopted by other IP regimes across the globe. 


- Bagmisikha Puhan

Fair Use Defense

Fair use as a concept stands on very tricky grounds. One cannot just be sure if the ground will stick through as fair use or not. In the scenario where such a matter reaches the courtroom, the time and finances that are invested into settling the dispute, many a times outweighs the benefit reaped out of the use in the first place.

For all those people who have been taking shelter of acknowledgments and disclaimers are not really safe. The very fact that one has acknowledged the original author in his or her use of the protected work does not preclude the person from their liability in a suit of infringement.  The fact that the original author has been cited can support the author in his claim of infringement; if he chooses to retort to the claim of a person infringing upon his right of publicity.

The fact that a disclaimer has been added to the use of the protected work does not preclude the user from his liability towards infringement. A disclaimer stands to prove stronger grounds for fair use, but does not stand as a ground for defense in its own merit.

One of the best ways to avoid any claims of copyright infringement is to abstain from using the protected material without the explicit permission of the original author. Apart from the usual factors which are taken into consideration while judging an instance of fair use, consideration of acknowledgements and disclaimers proves to be a viable option for the courts. 

- Bagmisikha Puhan

Bollywood copying Hollywood: Protection of Intellectual Property in Film Industry

The phenomenon of remaking and borrowing ideas is not new to the film makers around the world. It has been present in the film making process since the birth of cinema. Earlier the audience reach of film industries was restricted to certain geographical areas. As Hollywood[i] was restricted to English speaking countries, likewise Bollywood[ii] was restricted to India and its neighboring countries. But globalization and the record breaking developments in Information Technology and the worldwide reach of internet has taken the films beyond nations.

At present, copyright infringement of the protected film scripts has become the main conflict between the two largest film industries of the world Hollywood & Bollywood. Hindi films have often been accused of copying entire frames from their Hollywood predecessors; leading legal scholars recognize this practice as copyright infringement. Until the summer of 2008, no lawsuit was ever filed by a US studio against an Indian film for violation of the studio’s intellectual property rights. The reason was Bollywood’s lack of profitability, India’s status as a third world country and traditionally distinct audiences, which never allowed Bollywood movies to get surfaced on Hollywood’s radar. But recent boom in Indian economy, increase in the profitability of Bollywood and overlapping audiences reversed the views of Hollywood studios towards Bollywood movies.

A long list of Bollywood movies is present where they have been accused of being copied from some Hollywood blockbuster. In 2007, Sony Entertainment, holding the copyright of Hitch (2005), threatened a lawsuit against Partner (2007), a Bollywood film, for infringing content.

In August 2008, Warner Bros. filed suit against the producers of a Bollywood film Hari Putter: A Comedy of Terrors, claiming that the title was too similar to the Harry Potter brand. The Delhi High Court ruled in favour of the defendants largely on Warner Bros. delay in filing the suit[iii].

In 2010, for the first time, a successful suit was filed by Twentieth Century against Sohail Maklai Entertainment for the unlawful remake of Twentieth Century’s 2002 thriller Phone Booth, into Knock Out. It was for the first time when an Indian court ruled that Bollywood infringed a Hollywood copyright. The Bombay High Court awarded Twentieth Century injunctive relief until Sohail Maklai Entertainment paid $340,000 in damages[iv].

On being accused of copyright infringement by Hollywood studios, Indian filmmakers argue that when they adopt a Hollywood film for remake for the Indian audience they make the film undergo a transitory process of “Indianisation” by adding songs, dance and other Indian stuffs which in all together results in an inherently distinct product from the original. 

Legal framework available

India’s copyright law, as laid down in the Indian Copyright Act, 1957 later amended by Copyright (Amendment) Act, 1999, is compatible to the Berne Convention on Copyrights, to which India is a party. Copyright consists of the following rights:

1. Economic Rights – Right of reproduction, public performance, adaptation, broadcasting, translation etc.
2. Moral Rights – Right of author against any alteration in his work that might be injurious to his reputation.

 The following come under the purview of copyright protection:

1. Original literary, dramatic, musical and artistic works
2. Cinematograph films
3. Sound recordings
4. Computer programmers 

The Paris Convention for the Protection of Industrial Property (1883) and the Berne Convention for the Protection of Literary and Artistic Works (1886) are the two conventions which serve as the basis of current international standards regarding intellectual property rights. The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, 1994, is built on these century old principles. United States and India being a member of World Trade Organization (WTO) are bound by the TRIPS[v] Agreement.

The relevant provisions of Berne Convention which is embodied in the TRIPS Agreement provide exclusive rights to author to grant or allow for reproductions and adaptations of their original work. When a film’s storyline is borrowed which is recognizably borrowed is known as “derivative work”.[vi],[vii] But when it is used without the knowledge or authorization of the author/creator it is known as unauthorized derivative works which is not only harmful for the author/creator but it will adversely affect the demand for the original work.

In both the U.S. and India, infringement of copyright takes place when a party engages in actions reserved for the copyright owner. In US, for copyright infringement the copyright owner needs to prove that he holds the ownership of the copyright and that substantial matter has been copied from his protected material. In India, copyright infringement takes place if the work of the defendant is a substantial and material copy of the first. Substantiality is measured by weighing both quantity and quality of the work copied.

The Indian and U.S courts had used the “ordinary observer” test to determine the presence of substantial similarity between two works. According to the “ordinary observer” test two works are considered as substantially similar if an ordinary viewer of reasonable attentiveness concluded that the defendant unlawfully encroaches the protected expression of the plaintiff.

The U.S. courts originated the “ordinary observer” standard from the audience test in Daly v. Palmer (1868)[viii]. In this case the Court observed, “If enough random original elements are copied, even if individually insubstantial, they may constitute copyright infringement in the aggregate”.

The Supreme Court of India established the same standard test in the R.G.Anand vs. Delux Films (1978)[ix]. The Supreme Court observed that, “...in order to be actionable, a copy must be a substantial and material one that immediately demonstrates that an infringement has occurred. While simple additions, omissions, or modifications to the original work do not defeat the infringement claim, if the similarities between the two works appear coincidental and enough dissimilar elements exist to negate the intention to copy the original, infringement cannot be said to have occurred”. Courts in both countries thus analyze the quantity as well as quality of the copying in applying their respective versions of the ordinary observer tests.

Article 9.2 of TRIPS confirms that copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such. This concept has been incorporated in both the legal system of US and India.  This Agreement empowers the author/ creator to bring private cause of action for infringement in any member country where the infringement is occurred or occurring. Further, this Agreement says that member countries are bound to accord same rights to the author/ creator of other member country as it gives to their own[x]. Hence, it can be understood that Indian or American film-makers could bring a suit of infringement in either nation’s domestic courts.

Conclusion

Bollywood’s appeal is no longer limited to the South-Asian subcontinent. Bollywood’s international appeal is on the rise. The success of recent movies pertaining to South-Asian themes and culture such as Slumdog Millionaire and Bend It Like Beckham, while not Bollywood productions, have helped Bollywood receive more international attention. Therefore, Bollywood’s reputation and viewership among international audiences will benefit from original scripts and productions. Originality will ultimately lead Bollywood to greater revenues than copying does. Remaking and borrowing ideas from other countries is nothing new and is not altogether a bad phenomenon, so long as proper authorization is obtained from the right holder. Borrowing ideas, scripts and remaking them in different cultural contexts are a part of international cinema but the right way to do it is to obtain the proper license. It should also be noted that mere copying of idea cannot be considered as copyright infringement, as under TRIPS agreement only expressions are protected and not the ideas. So, for proving the infringement the plaintiff should prove that there is copying of both ideas and expression.

By Arvind Kumar

For Biswajit Sarkar

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[i] Film industry of USA.

[ii] The mainstream Indian film industry based in Mumbai, formally Bombay.

[iii] Warner Bros. Entertainment Inc. v. Harinder Kohli and Ors. [IA No.9600/2008 in CS(OS) 1607/2008]

http://delhicourts.nic.in/Sep08/WARNER%20BROS%20ENTERTAINMENT%20VS.%20HARINDER%20KOHLI.pdf

[iv] Twentieth Century for Film Corp. v. Sohail Maklai Entm’t Pvt. Ltd., NM-2847 (Bombay H.C. 2010)

http://bombayhighcourt.nic.in/data/original/2010/NMS284710141010.pdf.

[v] TRIPS: A More Detailed Overview of the TRIPS Agreement

http://www.wto.org/english/tratop_e/TRIPS_e/intel2_e.htm

[vi] 17 U.S.C. Section 106- copyright owner has exclusive rights to prepare derivative works based upon the copyrighted work;

Copyright Act of 1957 Section (14)(a)(vi) (India)-a copyright owner has the exclusive right to authorize adaptations of the work.

[vii] 17 U.S.C. Section 101-Defines a derivative work to be one based upon one or more preexisting works;

Copyright Act of 1957 Section 2(a)(v) (India)-defines an adaptation as:  “in relation to any work, the use of such work involving its rearrangement or alteration.”.

[viii] Daly v. Palmer, 6 F. Cas. 1132 (C.C.S.D.N.Y. 1868) (No. 3,552)

[ix] R.G. Anand v. Delux Films (1978) 4 SCC 118

[x] Article 5 (1) of Berne Convention. This requirement is in compliance with the WTO’s goal of guaranteeing most-favored nation status to member countries and non-discriminatory treatment by and among members.

Registration and Protection of Designs in India

In India registration and protection of Designs are regulated by Designs Act 2000 and Designs rules 2001. Design is defined under Section 2 of Designs Act 2000 as only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957(14 of 1957).  A design is prohibited from registration on the grounds mentioned under Section 4 of the relevant Act, i.e.,

a) that the design is not new

b) that it has been previously published in India or in any other country by publication in tangible form or by use in or in any other way prior to the filing date, or where applicable, the priority date, or where applicable, the priority date of the application for registration; or 

c) that it has been significantly distinguishable from known designs or d) comprises or contains scandalous or obscene matter.   Further, a design is subject to cancellation on the grounds mentioned under Section 19 of the relevant Act, i.e., a) that the design has been previously registered in India, 

b) that it has been previously published in India or in any other country prior to the date of registration or c) that the design is not a new or original design or c) that the design is not registrable under this Act; or 

e) that it is not a design as defined under clause (d) of section 2. 

Although in India design has not been classified further into categories according to Designs Act 2000, but it has been observed that Indian Courts classify the design in question into aesthetic and functional. An aesthetic design is one which is applied to any article, whether for the pattern or the shape or the configuration or the ornamentation thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof. A functional design means any design applied to any article, whether for the pattern or the shape or the configuration thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which are necessitated by the function which the article to which the design is applied is to perform. In India the landmark judgment which acted as precedent for subsequent cases was passed in Bharat Glass Tube Limited v. Gopal Glass Works Limited. In this case the the Court gave interpretation of Section 2 (d) stating “Designs has been defined in Section 2(d) which means that a feature of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process. That means that a feature or a pattern which is registered with registering authority for being produced on a particular article by any industrial process whether manual, mechanical or chemical or by any other means which appears in a finished article and which can be judged solely by eye appeal.  The definition of design as defined in Section 2(d) read with application for registration and rule 11 with form 1 makes it clear that the design which is registered is to be applied to any finished article which may be judged solely by eye appeal. A conjoined reading of these three provisions makes it clear that a particular shape or a particular configuration is to be registered which is sought to be produced on any finished article which may be judged solely by eye appeal.[1] However the judgment passed in Interlego v. Tyco Industries,[2] the landmark British case which was pertaining to designs of toy bricks originated in Hong Kong and eventually was filed before the Privy Council in the United Kingdom acted as guiding principle for cases in India. In that the Privy Council observed that the bricks qualified for registered design protection, and thus did not qualify for copyright protection. Lord Oliver observed as follows -

“Inevitably a designer who sets out to make a model brick is going to end up by producing a design, in essence brick shaped. […] There is clearly scope in the instant case for that argument that what gives the Lego brick its individuality and the originality without which it would fail for want of novelty as a registrable design is the presence of features which serve only the functional purpose of enabling it to interlock effectively with the adjoining bricks above and below”.

The court further held that design drawings were a combination of both artistic and literary works. The written matter on such a drawing comprised the literary matter, and the graphics the artistic matter.

The only changes made to the drawings were alterations to some radii and to the dimensions of some elements. Lord Oliver further observed-

“Take the simplest case of artistic copyright, a painting or a photograph. It takes great skill, judgement and labour to produce a good copy by painting or to produce an enlarged photograph from a positive print, but no-one would reasonably contend that the copy, painting, or enlargement was an "original" artistic work in which the copier is entitled to claim copyright. Skill, labour or judgement merely in the process of copying cannot confer originality.”

In India designs are protected by two legal rights, they are as follow:

1)      Registered Designs

2)      Artistic Copyright

 

Design registration in India gives the owner, a monopoly on his or her design, i.e. the right for a limited period to stop others from making, using or selling the design without the owner’s permission and is additional to any design right or copyright protection that may exist automatically in the design.

           Under Section 6 

           (1) a design may be registered in respect of any or all of the articles comprised in a prescribed class of articles. 

        (2)Any question arising as to the class within which any article falls shall be determined by the Controller whose decision in the matter shall be final.

         (3)Where a design has been registered in respect of any article comprised in a class of article, the application of the proprietor of the design to register it in respect of some one or more other articles comprised in that class of articles shall not be refused, nor shall the registration thereof invalidated—

Under Section 7 the Controller shall, as soon as may be after the registration of a design, cause publication of the prescribed particulars of the design to be published in such manner as may be prescribed and thereafter the design shall be open to public inspection.

           Under Section 11when a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.

           To conclude with, a design is entitled to be registered and protected from being copied and applied on the same article and of the same class of articles which is not merely functional but has an aesthetic appeal to eye. At the same time a design is entitled of copyright which is absolutely original and has not been copied from any other class of articles.

By Ranidipa Ghosh

For Biswajit Sarkar

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[1] 2008 AIR 2520

[2] [1989] AC 217

The Copyright Amendment Bill, 2012

The Copyright Amendment Bill, 2012 is successfully passed in the Parliament, is now waiting to be signed by the President. This bill marks a historic turning in the foster of Copyright laws in India. It introduces many pertinent changes in the Copyright laws. One of the characteristics of the Bill is that it has tried to make certain definitions. It defines commercial rental, Rights management information, visual recording.

Cinema is one of the craziest stuff that we, Indians have promoted and enjoyed a lot. Thus, the amendment with regard to the royalties payable to the music composers and lyricists is very much celebrated by the people. Right from the Oscar holder A.R.Rahman to the celebrities like Javed Akhtar & Shankar Mahadevan had struggled a lot to get this amendment pass in the Indian Legislature.  Under the former provision these music composers and lyricists didn’t have right to claim royalty equally. The problem was especially with regard to the cinematographic works or generally cinemas. The copyright for the movie either goes to its producer or its director. The lyricist and the music composers usually assign their copyright for their work to these people for the money considerations thus lacking right to claim any equal amount of royalty. Now the amended law has made eligible for the music composers and the lyricists to claim an equal share of royalties and consideration payable in case of utilization of their work.

Another interesting amendment is that to relinquish the copyright, the author may merely give a public notice. The Bill also amends that the photographs shall enjoy copyright protection as that of any artistic, literary, musical work (cheers to the photographers…). The Bill in addition enables the author to license any of his work by mere writing document not necessarily signed. Again the Bill proposes that the compulsory license shall be granted for any works rather than ‘ Indian works’ which is indeed a really good provision as it facilitates for more availability of works to the people. Another significant amendment is that it allows any person working for the benefit of persons with disability on a profit basis or for business, to apply to the Copyright Board for a compulsory license to publish any work in which copyright subsists, for the benefit of such persons. Moreover these applications need to be disposed off as soon as possible in a favorable manner. This Bill also makes a provision with regard to the cover version copies, which shall be made only after 5 years of making the original. It requires that the cover version be of same medium as the original. So if the original is on a cassette, the cover cannot be released on a CD. Also strict regulations are made like the cover version should claim it to be the cover version & not to be misleading, royalty to be paid in advance if 50, 000 copies are to be made, no alterations to be made except for the technical necessities.

This Amendment Act also inserts that every copyright society shall be registered for a period of five years and may be renewed from time to time before the end of every five years on a request in the prescribed form. This bill also elaborates more upon the performers rights like he/she can claim for royalty in case of making of the performances for commercial use; performer of a performance shall, independently of his right after assignment, either wholly or partially of his right, have the right to claim to be identified as the performer of his performance and  to restrain or claim damages in respect of any distortion, mutilation or other modification of his performance that would be prejudicial to his reputation.

Again the fair dealing provisions are now applicable to all the works and also says that the transient or incidental shortage of a work or performance purely in the technical processor electronic transmission or communication to the public or for the purpose of providing electronics links,access or integration, where such links, access or integration has not been expressly prohibited by the right holder will be an exception.This is available only till he/she who does such storage a complaint from the copyright holder alleging it to be infringement.In such a circumstance he/ she shall not use this works for a period of 21 days or till he/she gets a court order prohibiting them to continue.

Another vital provision is again to people with disabilities. The amendment act allows the use of any work or performance in any accessible format for the using it by the persons with disability on non - profit basis.Another remarkable amendment is the introduction of the provision which punishes any person who would puncture any technological measure taken to ensure the copyright for a period of 2 years.Also there has been a modification to the moral rights of the authors.Moral rights are the inherent right available exclusively to the author even after the assignment or the licensing or expiration of the copyright.The amendment has now allowed the legal representatives of the author to claim the right to claim authorship along with the other rights which was not allowed in the earlier act.

By
S.Deepika
for 
Biswajit Sarkar