Copyright Injunctions and Indian Entertainment Industry

Home , Sohail Khan

“COPYRIGHT INJUNCTIONS AND

INDIAN ENTERTAINMENT INDUSTRY”

Dissertation submitted in part fulfilment for the requirement of the

Degree of LL. M

SUBMITTED BY - SUBMITTED TO-

JANHAVI PRAKASH TIWARY Asst. Prof. YOGESH PAI

NATIONAL LAW UNIVERSITY DELHI (INDIA)

2014 DECLARATION BY THE STUDENT

I hereby declare that the work reported in the dissertation thesis titled “ Copyright

Injunctions and Indian Entertainment Industry” is an outcome of my own work submitted at ‗National Law University, Delhi‟, carried out under the supervision of

Associate Professor Mr. Yogesh Pai. I have duly acknowledged all the sources from which the ideas and extracts have been taken. The project is free from any plagiarism issue.

(JANHAVI PRAKASH TIWARY) NATIONAL LAW UNIVERSITY,DELHI DATE PLACE

2 CERTIFICATE OF SUPERVISOR

This is to certify that the work reported in the LL.M. dissertation entitled “Coyright

Injunctions and Entertainment Industry”, submitted by Janhavi Prakash Tiwary at

National Law University, Delhi is a bonafide record of her original work carried out under my supervision. To the best of my knowledge and belief, the dissertation: (i) embodied the work of the candidate herself; (ii) has duly been completed; and (iii) is up to the standard both in respect of contents and language for being referred to the examiner.

(Signature of Supervisor) Mr. Yogesh Pai Associate Professor of Law National Law University, Delhi

DATE PLACE

3 ACKNOWLEDGEMENT

First of all I would like to pay my sincere regards to my guide Asst. Prof. Yogesh Pai with the direction, guidance and patience of whom this dissertation saw the light of the day ,I would also thank Prof. Ranbir Singh ,Vice-Chancellor and Prof. Srikrishna Deba Rao

,Registrar ,National Law University Delhi for providing all the required resources and support. Also, the kind of support the library staff of the university has given is worth more than appreciable This acknowledgement shall remain incomplete without mentioning the contribution of my parents, Mr. Anant Prakash Tiwary and Mrs. Janlakshmi Tiwary for their unconditional support and motivation which harnessed in me the spirit of ‗ never giving-up‘

,they stood with me always motivating me to do better . I should not forget to acknowledge the contributions given by my younger sister Shambhavi and brother Tejasvi whose insightful comments and suggestions were very helpful in deciding the fate of various important portions of this study. Other than all of those mentioned here ,there have been several people who helped me in myriad ways to build –up this work, I thank them all.

JANHAVI PRAKASH TIWARY

4 LIST OF ABBREVIATIONS

AC Law Reports,Appeal Cases 1891-

AIR All India Reporter

ALL ER All England Law Reports

App Cas Law Reports,Appeal Cases,1875-1890

Beav Beaven‘s Report,Rolls Court

CA Court of Appeal

GLR Gujrat Law Reports

IA Indian Appeals

ILR Indian Law Reports

IPLR Industrial Property Law Reporter

Ker LJ Kerela Law Journal

LJ Law Journal Reports

PTC Patents and Trademark Cases

SC Supreme Court

SCA Supreme Court Appeals

SCC Supreme Court Cases

SCR Supreme Court Reports

WLR Weekly Law Reports

WN Weekly Notes

WR Weekly Reporter

5 LIST OF CASES

A. Chandrasekaran v Geetha Arts Division 2007 MLJ 1045

American Cynamid Company v Ethicon Limited 1975) 1 ALL ER 504

Barrett v Universal Island Records Ltd(2006) EWHC 1009 Bassey v Icon Entertainment Plc (1995)E.M.L.R 596

Confeti Records Ltd v Warner Music UK Ltd (2003)EWHC 1274,

Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others [2012] eBay, Inc. v. MercExchange (2006)547 U.S 388 Educational Testing Services v. Katzman, 793 F.2d 533, 539 (3d Cir.

EMI v Sky[2013] EWHC 379

Entertainment Network Ltd. Vs Supercassettes Industries Ltd AIR 2008 5114

Gertz v. Robert Welch, Inc 418 U.S. 323, 339–40 (1974).

Gramophone Company of India Ltd. v. D.B. Pandey [(1984) 2 SCC 534

Haelan Lab, Inc vs Topps Chewing Gum, Inc, 202F.2d 866 at 868, (2d Cir) Hanumanprasad Tiwari v State of Maharashtra AIR 1984 Bom 34

Harisson v Haisson (2010)EWPCC 3,para 60

India T.V News Private Ltd v yashraj Films Pvt. Ltd PTC 477(Del)

Indian Performing Rights Society v Aditya Pandey MIPR 2011(3) 19,

Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 264 (2d Cir.2005)

King Feature Syndicate Inc. V Sunil Agnihotri (1997)PTC303(Del)

Loretto v. Teleprompter Manhattan CATV Corp (1982) 2E.LLR Lotus Development Corp. V Paperback Software International 740 F Supp 37. Metro-Goldwyn-Mayer Studios Inc. v Grokster, Ltd. (Grokster)(2005) 545 U.S. 913

6 Mirage Studio v Counter Feat Clothing (1991) FSR 275 at p 280-. 291

Music Broadcast Pvt. Ltd v IPRS 2011(47) PTC 587,2011(113)Bom LR 3153 Norowzian vs Arks (1998 FSR 394) Nottingham Movies Pvt Ltd. V Euronations Pvt Ltd.(1993)FSR 541

Paramount Entertainment Ltd. Vs British Broadcasting sky Ltd [2013] All ER (D) 151 .

Pepsi Co. Inc v Hindustan Cola Co 2013 AIPC 240(Del)

Perfect 10, Inc. v. Google, Inc., 416 F.Supp.2d 828 (C.D. Cal. 2006)

Raja pocket Books v Radha Pocket books 1997(17)PTC 84,

Ram Sampath v Rajesh Roshan 2009(40)PTC 78 Indian Performing Rights Society v Eastern

India Motion Pictures Association AIR 1977 SC 1443

Ramesh Sippy v SMPEL Ltd 182(2011)DLT226

Salim Khan and Javed Akhtar vPuneet Prakash Mehra nd Ors C.S No. 112 of 2013 Bom

Salinger v. Coting 607 F.3d 68 (2d Cir. 2010) [2010 BL 97772]

Schwinn Bicycle Co. v Ross Bicycles ,Inc. 870 F.2d1176

Sony Corp. v Universal City Studios, Inc. (Betamax) 464 U.S. 417 (1984) Super Cassette Industries Ltd v Myspace Inc. MIPR 2011(2) 303

Super cassette Industries Ltd. V Hamar Television Network Pvt. Ltd 2011(45)PTC 70(Del)

Super Cassette Industries Ltd. v. Positiv Television Pvt. Ltd. & Anr., 2008 (38) PTC 47

Super Cassettes Industries v Chintamani Rao 2012(49)PTC 1 (DeL)

Taj Television v. Rajan Mandal (2003)F.S.R 22

Twentieth Century Fox Film Corp. v British Telecommunications Plc. (Newzbin) 2 (2011)

Twentieth Century Fox Film Corporation and others v British Telecommunications (2011)

Twentieth Century Fox Film Corporation and others v Newzbin Ltd, ([2010] EWHC 608

Twenty First Century Entertainment Ltd. V Sohail Maklai Ent. Pvt Ltd 2010 Bom LJ 325

Urmi Javekar Chiang v Global Broadcast News Ltd. 2008(36) PTC 377

Vikas Swaroop v Christian Colson and Ors 2008 Bom LJ 187

7 Warner Bros. Ent. Inc. v. RDR Books 575 F. Supp. 2d 513, 552 (S.D.N.Y. 2008) Winter Vs Natural Resources Defence Council 555U.S 7(2008)

Yashraj Films Pvt Ltd v Blue Ray Entertainment media Ltd(2009) 42 PTC 31

Zee Telefilms Ltd Anr v. Sundial Communication Pvt Ltd & Ors, 2003 (27). PTC457

8 TABLE OF CONTENTS

TITLES PAGE NO.

DECLARATION BY THE CANDIDATE 2

SUPERVISOR‘S CERTIFICATE 3

ACKMOWLEDGEMENT 4

LIST OF ACRONYMS / ABBREVIATION 5

LIST OF CASES 6-8

CHAPTER-1A 9

CONTEMPORARY RELEVANCE OF THE STUDY AND INTRODUCTION 9

RESEARCH METHODOLOGY 24

STATEMENT OF PROBLEM 24

RESEARCH OBJECTIVES 25

RESEARCH QUESTIONS 25

RESEARCH HYPOTHESIS 26

RESEARCH DESIGN 26

CHAPTER-1 27

„NATURE OF INJUNCTIVE RELIEF‟-OVERVIEW AND DEVELOPMENT 27

OVERVIEW AND DEVELOPMENT 27

RELATIONSHIP BETWEEN “ COPYRIGHT”-PART OF PROPERTY 29

RIGHTS AND INJUNCTIONS-HOW MUCH IMPORTANT?

WHAT EXACTLY REQUIRES FOR GRANTING „INJUNCTIONS‟? 31

THE TRADITIONAL „FOUR-FACTOR TEST‟ 32

KINDS OF INJUNCTIONS 33

CONCLUSION 35

CHAPTER-2 37

„INTERNATIONAL PERSPECTIVE‟ 37

APPROACH OF „U.S COURTS‟ IN GRANTING „DAMAGES‟ 38

APPROACH OF „U.S COURTS‟ IN GRANTING „INJUNCTIONS‟ 39

APPROACH OF „COURTS OF U.K‟IN GRANTING „INJUNCTIONS AND 46

„DAMAGES‟

„INTERNATIONAL CONVENTIONS‟ AND PRE-„TRIPS‟ POSITION 50

POST-„TRIPS‟ POSITION 52

CONCLUSION 59

CHAPTER-3 61

INDIAN PERSPECTIVE OF GRANTING „INJUNCTIONS‟ IN 61

INFRINGEMENTS IN „INDIAN ENTERTAINMENT INDUSTRY‟

„OF LITIGATION STRATEGIES….‟ 61

„INJUNCTIONS‟ IN „IDEA-EXPRESSION‟DISPUTES 64

„INJUNCTIONS-A REMEDY IN CASE OF „PERFORMER‟S RIGHT‟ AND 73

OTHER INFRINGEMENTS IN CINEMATOGRAPH INDUSTRY?‟

„INJUNCTIONS IN ASSIGNMENT AND LICENSING INFRINGEMENTS‟ 85

„INJUNCTIONS‟ IN CASES OF „FAIR-USE‟ TAKEN AS A DEFENCE 91

CONCLUSION 95

CHAPTER-4 96 INJUNCTIONS OR DAMAGES? 96 „INJUNCTIONS‟ CENTRAL TO PROPERTY RULE

PROPERTY AND LIABILITY RULES 99 WHEN COURTS WILL AND SHALL NOT GRANT „INJUNCTIONS‟? 102 „DAMAGES‟ IF MORE APPROPRIATE REMEDY? 104

CONCLUSION 105 SUGGESTIONS 109 BIBLIOGRAPHY 112

CHAPTER-1A CONTEMPORARY RELEVANCE OF THE STUDY-

1.1 INTRODUCTION

Indian Film industry has seen robust growth in past few years and for this reason it has been given the status of an ‗industry‘ in the year 2000.1 And many of the bollywood movies were successful in breaking the records in terms of earning but the darker side of picture is the concern for whole is none other than ‗ piracy‘ and other such copyright infringements.

For instance .2quite a large number i.e 238 of ‗john-doe‘ or ‗Ashok Kumar‘ and other such injunctions were issued from the period of 2006-2013 in Indian High Courts which clearly shows that roaring number of infringements must also have taken place and so, copyright which itself is considered to be a weak protection becomes more vulnerable to such infringements.

So, on one hand we see a lot more a glitzy side of bollywood and on the other hand there is a rush of litigations relating to infringement of I.P rights, breach of various contracts etc. As in the very famous case of the movie ―Slumdog Millionnaire‖ it was seen that due to the violation of the author of the story from which the script was taken the producers had to ensure their presence in the courts in place of preparing for the premier. And injunction was sought for the infringing act but the question this study will be dealing with is that are

‗injunctions‘ an effective remedy in such a scenario as the film has already been made and it

11 Indian media and entertainment industry has turnover of about US$ 14.4 billion in 2010, and 11 percent over the previous year but industry is observed to grow at a compounded annual growth rate (CAGR) of 14 per cent by 2015 so as to reach US$ 28.1 billion, also as per the report by the Federation of Indian Chambers of Commerce and Industry (FICCI) and research firm KPMG,it is also seen that he Indian film industry stood at US$ 1.9 billion in 2010 which is now projected to grow at a CAGR of 9.6 per cent and reach US$ 2.6 billion by 2014 Source: http://www.indiainbusiness.nic.in/industry-infrastructure/service-sectors/media-entertainment.htm last visited on 1.8.2014 2 See V.K Srivastava ―Copyright Enforcement challenges‖(2008)p.19

9 will incur heavy loss upon the producers and those behind the investments and so, what shall be the approach of courts in such cases ,should they are supposed to go for a more lenient view or if they give ‗injunctions‘ what shall be the criteria for granting the same?.In many cases famous ‗John Doe or Ashok Kumar‘ order/injunction has been issued , J Dalveer

Bhandari pronounced it in the case of Taj Television v. Rajan Mandal 3,the requirements for this kind of injunction though stands similar to the kind of injunction granted under Order 39

Rule 1 and 2 of C.P.C.was pronounced ,injunctions no doubt have proved to be a final resort in such situations.

The relevance of this study lies in the set of incidences related to issuance of injunctions in some cases pertaining to infringements of ‗copyrighted works in entertainment industry4 as it is very common these days to observe litigations related to ‗lifting of tunes ,story-lines‘ without giving the creator his due share and as the stature of Indian Entertainment Industry is growing with leaps and bounds so, is the tendency of maximising the profits with minimum investments but these are not the only cases which are leading to the restrictive remedy of

‗injunctions‘ but there is another side of story too ,in some of the cases such as the ‗Slumdug

Millionnaire movie‘ litigation ,also in the case of ‗Satyagraha‘5starring Amitabh Bachchan it was held by the Bombay High Court litigations and plea for injunction prior to a day or some days of release are clothed with many colours and in many cases are just not bona fide .So, there is a need to strike perfect balance between deciding the real claims and such frivolous litigations.

We need to look into the kind of protection provided under the Indian Copyright Regime before discussing such bona fide and frivolous litigations, the nature of injunctive relief, the approach of courts of U.S and U.K in granting injunctions ,how efficient are injunctions as a

3 Taj Television v. Rajan Mandal (2003)F.S.R 22 4 See V.K Srivastava ―Copyright Enforcement challenges‖(2008)p.23 5 http://en.wikipedia.org/wiki/Satyagraha_(film)last visited on 1.8.2014

10 remedy in case of copyright violations of cinema works and the different situations of infringements where they are granted and where they are denied along with their comparison with damages in appropriateness.

An artist whether literary, musical or author of any other work ,worth being copyrighted deserves authorship in respect of that work ,the work being the it of his labour should be considered his property and thus, this is the property which civilised nations name as

―Intellectual Property‖ which is protected by national and International laws.

It is in this modern world that the concept of copyright arose, the framework of Indian copyright is such that it provides the legal framework for the protection of the traditional beneficiaries of the protection which typically any copyright law of any country provides

.Copyright is important in a way that the that it affects a huge array of business whether it is in the field of advertisements, film ,literary world , broadcasting and recording industries, computer software industries and no business industry can afford to do business with the subject matter which is ignorant to the vast market implications and not adherent to the current legal framework.

1.2 STATUTORY DEFINITION OF COPYRIGHT-6

(1)Literary,dramatic or musical works,not being a computer programme, (2)Computer programme, (3)Artistic work, (4)Cinematograph film and (5)Sound recording.

6 Section 14 of the Copyright Act 1957

11 The right in which copyright subsists is to copy or to reproduce the work in which copyright is provided. Also such right subsists not only to the complete form of such work but also to a substantial portion of such work. The nature of ‗copyright‘ being negative i.e to prohibit others to infringe or use the copyright owner‘s right makes it a negative right.

1.3 LEGAL FRAMEWORK UNDER THE INDIAN COPYRIGHT LAW-

To start with the Indian Copyright in the section 1 of the Act it is provided that it extends to whole of India .In section 2 (a)of the Act it is provided that the work which is in the nature of an ‗adaptation ‗ is also entitled for protection but the section provides a list of works which can be regarded as ‗adapted work‘ .The list provided under section 2(a) lies as follows-

1-in relation to a dramatic work, the conversion of such work into a non- dramatic work,

2-in relation to a literary work or an artistic work the conversion of the work into a dramatic work by way of performance in public or otherwise;

3-in relation to literary or any dramatic work ,any abridgement of the work or any of the version of the work in which the story or any action is conveyed wholly or mainly by means or pictures in a form suitable for reproduction in a book, or in any of the newspaper,magazine or any such similar periodical.7

4-in relation to a musical work, any arrangement or transcription of the work8.

59-in relation to any work , any use of such work involving its re-arrangement or alteration.

7 The word ―and‖ has been omitted by the Act No. 38 of 1994. 8 Ins. By Act No. 38 of 1994. 9 Ins. By Act No. 38 of 1994.

12 (b) 10 ―work of architecture‖ means any building or structure having an artistic character or say design,or any model or such building or structure;

(i) a painting , a sculpture, a drawing (including a diagram, map,chart or plan),an engraving or a photograph, whether or not any such work possesses artistic quality;

(ii) an architectural work or art; and

(iii) any other work of artistic craftsmanship;

1.4 PROTECTION PROVIDED UNDER SECTION 13 AND 14 OF THE INDIAN

The provisions provided under S. 1311 clearly enumerates that what are the list of works which qualify for copyright protection. Such as the work should be an ‗original‘ literary, dramatic, musical and artistic work, cinematography films and sound recording .It is significant to note here that in case of copyright in a cinematograph film or a sound recording

,nothing will affect the separate copyright protection in any work in respect of which or a substantial part of which, of the film or of the sound recording is made.12

- Section 14 of the Act elucidiates in a clear way as to what

are the bundle of rights associated with each piece of copyrighted work as mentioned

in the previous section such as in the case of a literary ,dramatic or musical work

except computer programmes the rights available are to-

10 Through the Act the word ―work of architecture‖have been substituted for the words‖architecture work of art‖ by Act No. 38 of 1994. 11 Section 13 of the Indian Copyright Act 1957 12 Section 13 of the Indian Copyright Act 1957

13 1-To reproduce the work in any material form

2-To issue copies of the work to public

3-To perform the work in public or communicate it to public.

5-To make translation and adaptation of the work

6-To make cinematograph film or sound recording in respect of the work13

In addition to these set of rights Section 14 (d) and (e) provides an addition set of rights relating to ‗cinematograph film‘ and ‗sound recording‘, such as –

1-To make a copy of the film inclusive of taking photograph of any image in the film, forming part of it,

2-To sell or to give on hire or offer for sale or hire any copy of the film and previous sale or hire shall not affect its current sale or hire.

3-To communicate it to public,

For sound –recording the rights are –

1-To make any other sound –recording embodying it,

2-To sell or to give on hire or offer for sale or hire any copy of the sound-recording and previous sale or hire shall not affect its current sale or hire.

3-To communicate it to public.14

13 S. 14 (a) of the Indian Copyright Act 1957

14 S. 14 (a) of the Indian Copyright Act 1957

14 1.5 PERFORMER‟S RIGHTS

Performer‘s are also provided with an ‗exclusive set of rights‘ as enumerated under S. 38 A. A performer has an exclusive right subject to the provisions of this Act to do or authorise for doing any of the following acts in respect of the performance or any substantial part thereof, namely:—

(a) to make a sound recording or a visual recording of the performance, including—

(i) reproduction of it in any material form including the storing of it in any medium by electronic or any other means;

(ii) issuance of copies of it to the public not being copies already in circulation;

(iii) communication of it to the public;

(iv) selling or giving it on commercial rental or offer for sale or for commercial rental any copy of the recording;

(b) to broadcast or communicate the performance to the public except where the performance is already broadcast.

Also, where once a performer has, by written agreement, consented to the incorporation of his performance in a cinematograph film he shall not, in the absence of any contract to the contrary, object to the enjoyment by the producer of the film of the performer‘s right in the same film. Provided that, notwithstanding anything contained in this sub-section, the

15 performer shall be entitled for royalties in case of making of the performances for commercial use.15

Now, apart from these ‗economic rights‘ another genre of rights, known as ‗moral rights‘ are also provided under S.57 and S. 38B,these rights are also known as ‗Author‘s special rights‘ which give the author.

1.6 MORAL RIGHTS

Moral Rights of the author are enumerated under S.57 of the Indian Copyright. S. 57 provides that where an assignment of the rights either wholly or partially has take place ,the author still has certain rights which are -

(a) to claim authorship of the work; and

(b) to restrain or claim damages in respect of any distortion, mutilation, modification or other act in relation to the said work which is done before the expiration of the term of copyright if such distortion, mutilation, modification or other act would be prejudicial to his honour or reputation:

Provided that the author shall not have any right to restrain or claim damages in respect of any adaptation of a computer programme to which clause (aa) of sub-section (1) of section 52 applies.

Explanation. Failure to display a work or to display it to the satisfaction of the author shall not be deemed to be an infringement of the rights conferred by this section.

15 S. 38 A of the Act

16 (2) The right conferred upon an author of a work by sub-section (1), other than the right to claim authorship of the work, may be exercised by the legal representatives of the author‖16.

S. 38 B

-Section 38B provides that where the 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 but not where there is omission which is dictated as per the use of the performance. The performer also reserves the right to restrain or claim damages in case there is any mutilation, distortion or any such act which is prejudicial to his reputation. The section is also supplemented with an explanation which says that for the purposes of this clause, it is hereby clarified that mere removal of any portion of a performance for the purpose of editing, or to fit the recording within a limited duration, or any other modification required for purely technical reasons shall not be deemed to be prejudicial to the performer‘s reputation.17

1.7 INFRINGEMENT OF THESE RIGHTS-

Act which is in not within the saving provisions of section 52 falls within section 51 as regarded as an ‗infringing act‘. Copyright in a work shall be deemed to be infringed—

(a) when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under the Copyright Act.

16 S.57 of the Indian Copyright Act 1957

17 S. 38 B of the Act.

17 (i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or

(ii) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or

(b) when any person—

(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or

(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or

(iii) by way of trade exhibits in public, or

(iv) imports into India, any infringing copies of the work

Provided that nothing in sub-clause (iv) shall apply to the import of one copy of any work for the private and domestic use of the importer.

Explanation. For the purposes of this section, the reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an "infringing copy‖.

Thus, By the very virtue of section 51 of the copyright Act ,to constitute the act of infringement ,there must be following situations-

18 1- A reproduction of the whole or any part which is substantial in nature of the plaintiff‘s

work and then again

2- the defendant‘s work must not as regard to the plaintiff‘s substantial part, be an

independent production and lastly

3- It must have been reproduced from the plaintiff‘s original composition.

4- Also to constitute infringement it is necessary tha the whole of the work should have

been reproduced, or any large portion ,a substantial portion, being important in nature is

enough to be labelled as an act of infringement.

Further, the word ‗substantial‘ has a deep meaning as it embraces in it two important

conceptions-

1-First being the one which is considerable as regards to quantity

2-The other being ‗important‘ and this meaning is given to the word when the quality of

the work ‗infringed‘ is not uniform in nature some, of the parts show vitality and the

other may not, if the matter taken is neither substantial ,then no infringement occurs but

where the act is covered under section 52 which talks about the defences or the situations

where the alleged act of infringement is not regarded as an act of infringement as being

in the saving provisions.18

18 See Blackwood and Sons Ltd. V A.N Parasuraman AIR 1959 Mad 410 Also, see Mary P. Marshall v Ram Narain Lal AIR 1934 All 922, Ananth Padmanabhan ―Intellectual Property Rights –Infringemennt and remedies‖2012 p.308-309.

19 1.6 DEFENCES WHICH CAN BE TAKEN-

(A)Fair Use

The defence is provided under S.52 of the Act19.This defence ponders upon two points i.e where the work is for personal use and secondly where the use of work is for criticism, reviewing ,any other use will not lead the work to be dealt ‗fairly‘. 20The concept of ‗fair – use‘ has been described to be one which is strictly not at all of commercial nature or profit – incentive.21There are wide variety of judgements as to when a work of private nature becomes commercial.22 The fair-use defence is based on certain factors. Those factors, while not exclusive, are: 1) whether the defendant‘s purpose in making the work was commercial and the nature of the work, 2) the nature of the copyrighted work, 3) the degree of material that was used, and 4) the effect on the original market by the new work.23

(B) Originality-Originality and novelty are the cardinal requirements for granting protection under the intellectual property rights and in case of copyright protection ,a work though not

19 S. 52 (1)(a) of the Indian Copyright Act 1957

20 See India T.V News Private Ltd v yashraj Films Pvt. Ltd PTC 477(Del) 21 See Super Cassette Industries Ltd. v. Positiv Television Pvt. Ltd. & Anr., 2008 (38) PTC 477(Del) ESPN Star Sports vs Global Broadcast News Ltd. & Ors., (1972) 1 All.ER 1023 22 Hubbard & Anr. Vs. Vosper & Anr., (2000) R.P.C. 604 Hyde Park Residence Ltd. Vs. Yelland, (2002) R.P.C. 5 Ashdown Vs. Telegraph Group Ltd., (1986) R.P.C. 515 Associated Newspapers Group Plc Vs. News Group Newspapers Ltd. & Ors., (2005) EWHC 472 Fraser- Woodword Ltd. Vs. British Broadcasting Corporation & Anr., (1964) 1 All.ER 465 Ladbroke (Football) Ltd. Vs. William Hill (Football) Ltd., (1934) 1 Ch.593 Hawkes & Son (London) Ltd. Vs. Paramount Film Service Ltd., 146 F.Supp. 795 Donald Irwin Robertson Vs. Batten, Barton, Durstine & Osbrom Inc, 812 F.2d 421 (9th Cir. 1987) Baxter Vs. MCA Inc, PTC 385 (Del) The Chancellor Masters & Scholars of the University of Oxford , (1999) FSR 610 Pro Sieben Media AG Vs. Carlton UK Television Ltd., and 2008 (37) PTC 569 (Del) Super Cassette Industries Ltd. v. Positiv Television Pvt. Ltd. & Anr., 2008 (38) PTC 477(Del) ESPN Star Sports vs Global Broadcast News Ltd. & Ors., (1972) 1 All.ER 1023

23 Super Cassette Industries Ltd. v. Positiv Television Pvt. Ltd. & Anr., 2008 (38) PTC 477(Del) ESPN Star Sports vs Global Broadcast News Ltd. & Ors., (1972) 1 All.ER 1023, India T.V Independent News Service Pvt. Ltd. V Yashraj Films Pvt. Ltd. Also ,see Bharat Matrimony .Com Pvt. Ltd. v People Interactive(I) Pvt. Ltd. AIR 2009 Mad 78,2009(41)PTC 709(Mad).

20 be novel but must be original and in cases of infringement, it can be seen they prove to be good defence in the question of an alleged infringement. ‗Originality‘ in copyright means though the work may not ne novel and ‗ideas‘ pertaining to that work might be present in the market but it‘s expression should be original and in such cases where the infringement is alleged it proves to be strong defence that the work owned lacks originality and hence, prima- facie not capable of protection . 24

(C) THE SCENES A FAIRE DOCTRINE25- The defence taken under this doctrine is one among of the good defences taken in case of infringements, the doctrine talks about the ‗idea- expression dichotomy‘ controversy, it says that certain subject-matters such as folks, fables, public images, tried and true stories as being part of public domain should not be monopoly of a single copyrighted work, this defence have proved to be useful at certain remarkable extent in cases of visual works.26

(D) Merger Doctrine –The merger doctrine says that where the ‗idea‘ and the expression of such idea are so tied together that they cannot be separated at all then such an ‗expression‘ is not subjected to copyright protection as there is no protection for ‗ideas‘. This doctrine proves to be good defence where the case is of a genuine complexity of an idea and it‘s expression. This doctrine is generally complimented with the doctrine of ‗scenes a faire doctrine‘.27

24 See R.G Anand v Delux Films Ltd(1978)AIR 1178 25 Infra

26 [Mark Lemley, Convergence?; Scott Abrahamson, Seen One, Seen Them All? Making Sense of the Copyright Merger Doctrine, 45 UCLA L. REV. 1125(1998).

27 See. e.g., Educational Testing Services v. Katzman, 793 F.2d 533, 539 (3d Cir.) Also See Supra note 23 1986). There is a great deal of scholarship discussing the merger doctrine. E.g., Mark A.Lemley, What‘s Different about Intellectual Property?, 83 TEX. L. REV. 1097, 11012005) ; Jane C. Ginsburg, The Exclusive Right toTheir Writings: Copyright and Control in the Digital Age, 54 ME. L. REV. 195, 210 & n.91 (2002); Mark A.Lemley, Convergence in the Law of Software Copyright?, 10 HIGHECH. L.J. 1, 9-10 (1995) [Mark

21 1.7 ENFORCEMENT OF REMEDIES POST INFRINGEMENT-

There are two kinds of enforcement-

1-Criminal enforcement

Enforcement is the most difficult part of IP laws as the property is not in tangible

except in few cases and also the chances of infringement because of the technological

advancement are more in this genre of rights. The criminal enforcement remedies are

contained in the ‗Indian Copyright Act‘ of 1957 as amended in 2012 ,in sections 63 to

section 70.Imprisonment for a term of not less than 6 months and up to 3 years is

provided under section 63 of the Act. Also sections 133 ,142 and 144 of the Code of

Criminal Procedure,1973 deal with injunctions in criminal proceedings. The trend in

criminal enforcement of copyrights is very much different from that of civil ,in severe

cases piracy ,counterfeiting etc. Penal measures are adopted and the courts have taken a

stringent view where the question is enforcing I.P rights through criminal remedies.28

2-Civil enforcement

Civil remedies available in case of an intellectual property rights violations are similar to

the one‘s available in case of any other property rights violation, the remedies include

injunction, damages, accounts of profits etc.29

Lemley, Convergence?]; Scott Abrahamson, Seen One,Seen Them All? Making Sense of the Copyright Merger Doctrine, 45 UCLA L. REV. 1125(1998). 28 See N.S Gopalkrishnan and T.G Agitha ―Principles of Intellectual Property Rights‖Eastern Book Company Publication(2009). 29 See N.S Gopalkrishnan and T.G Agitha ―Principles of Intellectual Property Rights‖Eastern Book Company Publication(2009).

22 WHEN DO INJUNCTIONS COME INTO THE PICTURE?

‗Injunction‘ which is termed as an efficacious restrictive remedy comes into the scene when an actual infringement has occurred. In case of infringement what is need to considered are the four cardinal aspects namely-

1-The copyright should be such that can be distinguished from rights in the physical embodiment of the original work,30

2-Subject –matter if improperly taken,

3-the need to show that the defendant has misappropriated the actual work and that too has been done to a substantial extent and lastly,

4-the degree to which he may infringe by authorising the acts of others.

Injunctions are awarded generally with the mere proof of the existence of right and its current or immediate infringement, in case of economic right ,the approach of the court‘s is more on the existence of ‗goodwill‘ as in case of trademarks and in case of copyright generally the court go for a mere production of the proof of ownership in the copyright protected work and its infringement. Whereas in case of infringement of ‗moral rights‘ the approach of court is to strike a balance where the alleged infringement is as not of economic importance so, injunction is granted though keeping in view if any economic right might getting affected. But still in the upcoming portions of the study we will observe that there is exponential increase of infringement litigation of moral rights. And as the scope of the study is limited to ‗injunctions‘ only we will be touching damages for comparing its effectiveness with injunctions .

30 See Cornish &Llewelyn ―Intellectual Property:Patents,Copyright,Trade Marks and Allied Rights‖,Sweet and Maxwell 2008p.451

23 DAMAGES -

The very aim to award damages is to compensate the plaintiff for the loss so happened The difference between these two is of principle ,the remedy of ‗damages‘ is awarded to compensate the loss so occurred but it is important to prove the liability of the infringer whereas in case of accounts of profits is weak in comparison to it as most of the times it‘s difficult to prove the profit so earned by the infringer ,the principle is such that the claimant is allowed to recover the profits so received by the defendant by way of using the alleged IPR but this remedy stands weak in few aspects as it can be easily defeated by the defences of laches ,delay, clean hands ,innocent infringement.

RESEARCH PROBLEM

The recent controversies related to a day prior to release of a film and thereafter making it run its screening in the courts room and effectiveness of asking injunctions in such cases and in other cases dealing with infringement of an economic right lying in a ‗cinematographic work‘ ,the exponential rise of litigations in such cases and appropriateness of ‗injunctions‘ as a remedy in such situations is the problem which will be dealt in this study with prime focus on ascertaining the ‗approach of Indian courts‘ in such cases.

24 OBJECTIVES OF THE STUDY-

1-To study the nature of ‗injunctive relief‘.

2-To examine and analyse the approach of U.S and U.K Courts in granting injunctions in

‗entertainment industry‘ along with the general requirement for grant of injunctions under

Indian legal framework.

3-To examine the efficacy of injunctions in Indian entertainment industry in the light of the nature of demand for injunctive relief.

4-To examine whether the grant of injunctions is an appropriate remedy in cases of infringement in entertainment industry or whether alternative remedy in the form of damages suffice.

RESEARCH QUESTIONS

1-Are injunctions efficacious as a remedy in case of ‗coyright infringements‘ in Indian entertainment industry.

2-Is there any set test or factor for determining in what situations should injunction be granted in ‗copyright infringements‘.

3-If there is any difference in the approach of U.S and U.K courts in granting the injunctive relief and if the same approach is followed India.

4-Why there is an exponential rise in seeking ‗injunctive relief‘ as a remedy a day prior to release of a film?

25 5-Whether the approach of Indian Courts is different in different kinds of copyright infringements such as in cases of ‗idea-expression dichotomy‘, ‗moral rights infringements‘,

‗performer‘s economic rights infringements‘ and where ‗fair-use ‗ is taken as a defence .

HYPOTHESIS-

―Injunction is a more appropriate remedy when infringement is of copyright protected work in Indian entertainment industry‖

In order to resolve this hypothesis and research questions the Indian condition and approach of courts will be seen in a comparative light with those of U.S and U.K courts.

COLLECTION OF DATA-

Data will be collected with the help of articles, case-studies, etc.

Sample will be the Indian film industry infringement and other copyright enforcement issues which will be analysed with the current Indian copyright law along with case-laws/studies.

RESEARCH TECHNIQUE/DESIGN-

Research technique will be doctrinal in nature ,techniques of iteration ,analysis of the samples with the help of various ‗doctrinal analysis tools‘ will be adopted.

CONTRIBUTION OF THE RESEARCH-STUDY-

The contribution of the study will be to consolidate the issues pertaining to enforcement of rights of performers, musicians and to suggest effective enforcement measures in case of infringements and to highlight the importance of having a set criteria for providing

‗injunctions‘ as a remedy in case of infringements by the Indian courts.

26 Chapter -1

“NATURE OF INJUNCTIVE RELIEF”

1.1 OVERVIEW AND DEVELOPMENT OF INJUNCTIONS

The injunction was called the quintessential equitable remedy which originated from Roman law and developed in Common law of England. The rules of injunctions, like the other rules of equity were the product of Court of Chancery. The law of injunction traces its roots from

Equity jurisprudence of England, further England borrowed it from none other than Roman

Law , ‗interdict‘ is what it is called in Roman Law31. Injunction was divided there under three sub-divisions there i.e-

1-Prohibitory

2-Restitutory

3-Exhibitory

In 1589, there was an indictment on the statute of ‗Praemunir‘ & against an attorney for seeking an injunction against the execution of a judgment at law, but the indictment was not brought to trial. The very fact of an indictment, however, shows a mounting dissatisfaction with this kind of injunction.32 Chancery did not, however, remain quiescent; there was a case in 1594 where the Chancellor imprisoned both a party and his attorney for continuing a suit at law in spite of an injunction, and it appears that parties in

31 See Adam Moshof ―Development of Injunctions‖3rd Ed.p 170 See Shyamkrishna Balganesh ―Demystifying the Right to exclude: of property,inviolability and automatic injunctions‖at http://chicagounbound.uchicago.edu/last visited on 1.8.2014 32 See Walter Howard Ferere B.D ―of Injunctions‖ 2nd Vol 1991.

27 other cases were similarly punished33. This early use of the injunction, led to the historic breach between the common law courts led by Coke as chief justice and the chancery led by

Ellesmere, in which the latter eventually triumphed following the Earl of Oxford‘s Case34 and the decisive intervention of James I in favour of the chancery.35

.But post 1616 there were many significant changes that took place in the ‗Courts of Chancery‘ and ‗Common law‘ which formed basis of the concretising ‗injunctions‘ as a remedy. The system of citing cases had started and this relief was recognised as one having strong deterrence. Though there were many few cases observed where injunctions were issued but still they had found their importance in Common law as an effective remedy. And finally in the seventeenth century with the endeavours of chancellors like ‗Francis Bacon‘ and Lord Nottingham ,injunctions were regulated and moderated in their issuance by chancery courts.

"It is the duty of a Court of Equity," said Lord Cot ten hem in Taylor v. Salmon, (and the same is true of all Courts and institutions), "to adopt its practice and course of proceedings, as far as possible, to the existing state of society and to apply its jurisdiction to all those new cases which from the progress daily made in the affairs of men must continually arise and not from too strict an adherence to forms and rules established under very different circumstances decline to administer justice and to enforce rights for which there is no other remedy." 36

33 See http://www.repository.law.indiana.edu/cgi/viewcontent.cgi?article=2160&context=ilj Last visited on 1.8.2014 34 Earl of Oxford‘s Case (1615) 1 Rep Ch 1 35 See http://www.repository.law.indiana.edu/cgi/viewcontent.cgi?article=2160&context=ilj last visited on 1.8.2014 36 See Adam Moshof ―Development of Injunctions‖3rd Ed.p 188

28 1.2 RELATIONSHIP BETWEEN “ COPYRIGHT”-PART OF PROPERTY RIGHTS

AND INJUNCTIONS-HOW MUCH IMPORTANT?

This remedy of ‗injunction‘ is nothing but an important tool used by the courts in dispensing justice and has no less contribution in the furtherance of justice. In India also this remedy is dispensed by the courts on the basis of equitable considerations only but few of the statutes have made it a part of remedial measures provided in case of infringements and or violations of rights. Section 133,142 and 144 of the Code of Criminal

Procedure ,Chapter VII of part III of the Specific Relief Act,1963 contains provisions as related to civil matters thereby making it less discretionary and a kind of a more ‗statutory‘ remedy ,the statutes related to property laws and intellectual property laws more specifically have made it a statutory remedy .Such as the ‗Indian Copyright Act of 1957‘ which contains injunctions as a civil remedy in case of infringements also patents and trademarks statutes have given equal importance to injunctions as a civil remedy.

1.3 THEORY OF PROPERTY AND THE RIGHT TO EXCLUDE

The theory of ownership to a property talks about injunctions to automatically follow in case there is any disturbance or any such fear of disturbance to such right, following concise judgements laid down in some of the leading case enumerated below clear the concept precisely-

―The notion of property consists in the right to exclude others from interference with the more or less free doing with it as one wills‖. Justice Holmes in White-Smith Publishing Co.

29 v. Apollo Co. (1908)37. ―The power to exclude has traditionally been considered one of the most treasured strands in an owner‗s bundle of property rights‖, as held by Justice Marshal in

Loretto v. Teleprompter Manhattan CATV Corp38 . But the trend is seen to have changed post ‗ebay case‘39-―The creation of a right [to exclude] is distinct from the provision of remedies for violations of that right.‖Justice Thomas in eBay, Inc. v. MercExchange, LLC

(2006) 40

Blackstone defined property as ―sole and despotic dominion of exercise over external things in the total exclusion of the right of any other.41He is clearly seen to be purporting that there should be strong deterrence in case one infringes with one‘s right to his property, but this concept of ‗excluding all others‘ has become a debatable issue for quite a long time, no doubt there are huge judgements, scholarly articles advocating for the same as this right to exclude others remains same for tangible and intangible property with no difference but the approach of U.S court in ‗e-bay case ‗ speaks a different line of thinking getting generated wherein my right to exclusion of other‘s has to be considered in the light of

37 White-Smith Publishing Co. v. Apollo Co. (1908). 38 . Loretto v. Teleprompter Manhattan CATV Corp (1982) 2E.LLR 39 eBay, Inc. v. MercExchange (2006)547 U.S 388 40 see Richard A. Epstein, ‗Takings: private property and the power of eminent domain 63 (1985) (noting that the idea of ―exclusive possession‖ is implicit in the basic conception of property). see also Jan Laitos,‘ Law of property protection ‗,S 5.03[a] (1999). 41 2 William Blackstone, ‗COMMENTARIES‘ *2 (emphasis supplied). For elaborations on Blackstone‗s definition see Carol Rose, Canons of Property Talk, Or, Blackstone‗s Anxiety, 108 YALE L.J. 601 (1998); Robert P. Burns, Blackstone‗s Theory of the ―Absolute‖ Rights of Property, See also, Merrill, note 6, at 754 (―Property means the right to exclude others from valuable resources, no more and no less.‖). Others have argued equally persuasively that the right to exclude is an ―essential but insufficient‖ component of what property means. See Mossoff, supra note __. I bracket this question here and focus on disaggregating the idea. One of the earliest known expositions on the nature of rights in the English-speaking world was that of Jeremy Bentham. See H.L.A. Hart, Bentham on Legal Rights, in oxford essays on jurisprudence: second series 171 (a.w.b. simpson ed. 1973). for a history of the development of rights see Alan m. Dershowitz, rights from wrongs: a secular theory of the origin of rights (2004). see also Carl Wellman, the proliferation of rights: moral progress or empty rhetoric (1999).

30 the right of others and as held in this case that ‗injunctive relief‘ is not automatic in case of infringement does highlight this diversion from the traditional approach.42

But what will it mean to have a ‗right ‗ then after all , a right (or a claim) is defined as a situation that places another individual or say group of individuals under a correlative duty of some kind and this ‗right‘ derives it‘s significance only from the privilege it is associated with,this privilege is nothing but is of exclusion ,of excluding other‘s in case the owner of the right want‘s to. Hohfield has also combined his idea of a right with that of a privilege, which has independent normative content, in that it privileges its holder to do certain things, quite independent of others. So, if A has a right over C ,this right is inclusive or say bundle of various privileges,one such being to have an ownership and to exclude other‘s where there is any disturbance in the ownership ,so the judgement given by the U.S Supreme court in ‗e- bay case‘43holds no good for those advocating the importance of ‗rights‘ and the privileges associated with it as the judgement in the crux means to ―take the money and forget about one‘s right and a clear direction to the violator to again and violate the patent(right).

1.4 WHAT EXACTLY REQUIRES TO GRANT AN‟INJUNCTION‟?

An injunction is granted primarily when any other remedy such as damages, accounts of property will not be sufficient, though it can be granted together with them and along with this the need and demand to restrain the alleged infringer from the infringing act is all what it requires to grant ‗injunctions‘ .The court however evolved their own criterias from granting the same and in case of infringement of intellectual property rights, the courts resort to the

42 See Shyamkrishna Balganesh ―Demystifying the Right to exclude: of property,inviolability and automatic injunctions‖at http://chicagounbound.uchicago.edu/last visited on 1.8.2014 43 Supra

31 traditional ‗four –factor test‘ as propounded in a patent‘s case which is generally applied in copyright infringements too.

1.5 THE „TRADITIONAL FOUR-FACTOR TEST‟

The traditional „four –factor‟ enumerates four criteria for granting injunctions in case of infringement, whereby the plaintiff has to prove following four factors, and if not all then most of them generally. The plaintiff has to prove-

1) that it has suffered, or is likely to suffer, an irreparable injury in the absence of an injunction;

2) that remedies at law, such as monetary damages, are inadequate to compensate for that injury;

3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and

4) that the public interest would not be disserved by a permanent injunction.

Further section 36-42 exclusively deal with grant of injunctions ,the nature provided is broadly categorised into-

1-Temporary Injunctions

2-Perpetual or Permanent Injunctions

32 1.6 TEMPORARY INJUNCTONS

In an important case of Gujrat Bottling Co. Ltd Vs Coca Cola Company and Ors,44 it was held by the Hon‘ble Supreme Court that ―The very object behind the issuance of interlocutory injunction is to protect the plaintiffs against the violation of his right for which he cannot be compensated by way of damages but in such cases the balance of convenience of both the parties have to be weighed i.e what if issuance of injunction causes more inconvenience to the legal right of the defendant? .So, these are the factors which have to be given parallel consideration also for the grant of temporary or ad-interim injunction is the presence of an immediate danger or fear for the infringement which cannot be compensated with damages or any other remedy.

1.7 PERMANENT INJUNCTIONS

A perpetual injunction is also known as permanent injunction is granted when the decree has been made upon hearing and the suit has been decided on merits. There are circumstances which have to be looked after while granting this injunction, which is to be referred from the provisions of Section 38.Further the mandatory injunctions are contemplated under section

39 ,which is more serious in nature as it declares that should be imparted so as to prevent breach of an obligation and the erring party is compelled to perform certain acts. The factors for granting a permanent injunctions are same as there in temporary injunctions provided here the need to show a prima facie case is absent, but irreparable harm, balance of convenience, public interest and the absence of any other remedy is still has to be proved and is considered by the court.

44 1995(5) SCC 545

33 1.8 ANTON PILLAR ORDER

This remedy for the very first time came up before the Court of Appeal in England in

Piller(Anton) in the case of K.G v Manufacturing Proceses Ltd. ,the order given was a pre- judgement order where the defendant was directed to permit the representatives of the plaintiff to access the defendant‘s premises without alerting them,the access was for allowing the plaintiff to conduct search of the evidences ,vital for his case, in short it was a ‗civil search warrant‘.Nowdays, also in case of civil infringement is issued without any safeguards by the Indian Judiciary and it finds it‘s place in the order 39 Rule 7 of the Civil procedure

Code.

1.9 MAREVA INJUNCTIONS

Mareva injunctions are nothing but restraint orders ―freezing‖the assets of the defendant and can also be issued where the property or the person so concerned is beyond or outside the jurisdiction of the court so issuing such order.45These orders derive their nomenclature from the decision of the Court of Appeals in Mareva Compania Naviera SA ,in this case the court restrained the defendant from dissipating his assets ,though no security interest created by way of these orders in the property but this kind of injunction has an immediate effect on the property which is the subject matter of such an order.46

45 Mohit Bhargava v Bharat Bhushan Bhargava (2007)4 SCC795 46 See Ananth Padmanabhan ―Intellectual Property Rights –Infringement and remedies‖Butterworths(2012).p24- 29

34 1.10 QUIA TIMET INJUNCTIONS

Any injunction sought for to prevent situations where the illegality or breach of obligation has not occurred yet but is on the verge of occurring ,is known as ‗quia timet injunction‘.47Recently Delhi High Court In the case of Super Cassette Industries Ltd v

Myspace Inc.48the question arose before the court that this kind of injunction should not be extended to copyright infringement cases. However the court rejected this contention and held that it alike other kinds of injunctions is applicable to any tortuous liability where there is an apprehension of an infringement which is likely to happen.

1.11 JOHN DOE/ASHOK KUMAR ORDER/INJUNCTION

A John Doe or Ashok Kumar order is a kind of injunction which is granted by courts in such kind of cases where there is breach of rights of the plaintiff by anonymous person and such person can‘t be identified by the plaintiff by the time he is filing the suit.In India J Dalveer

Bhandari pronounced it in the case of Taj Television v. Rajan Mandal 49,the requirements for this kind of injunction though stands similar to the kind of injunction granted under Order 39

Rule 1 and 2 of C.P.C.

CONCLUSION AND SUMMARY OF ARGUEMENTS

Thus, we see that injunctions which originated as an equitable and discretionary remedy from days of Roman law and Common law has evolved as one of the strong remedies at least in

47 See Ananth Padmanabhan ―Intellectual Property Rights –Infringement and remedies‖Butterworths(2012).p.32

48 Super Cassette Industries Ltd v Myspace Inc. MIPR 2011(2) 303 49 Taj Television v. Rajan Mandal (2003)F.S.R 22

35 IPR cases and the importance of it was so recognized that Indian criminal procedure code also gives it it‘s due place. And this could not have been possible had the strong advocates of

‗theory of property‘ and other legal luminaries had not contributed enough .As it is very central to the idea of having property is the idea to exclude other‘s from it, where the owner intends so.

So, the nature of injunctive relief is to restrict the infringer or the one causing breach of such right is out rightly restricted to cause such infringement and the approach of courts in granting it have been to consider that whether it makes a prima – facie case i.e is there likelihood of the plaintiff to prove his evidences and if such deterrence is issued in his favour ,then is there any possibility that it will affect any right of the defendant ,also if damages or any other remedy more suitable to be issued and lastly if there any ‗ public interest‘ affected. So, the nature of the remedy is being ‗restrictive‘ ,is to be considered together with other factors as enumerated above. The trend thus, followed in granting ‗injunctions‘ has been seen to revolve around the traditional four-factor test whether accepted formally by the courts or is seen to be embodied in the spirit of the judgement. But what is noteworthy that the courts do not hesitate to issue ‗injunctions‘ where it makes a prima-facie case of infringement and that is how automatic injunctions come into play.

36 CHAPTER-2

INTERNATIONAL PERSPECTIVE

2.1 INTRODUCTION

Why and what lead to the need to the protection of copyright and other such neighbouring rights ,the answer is self-explanatory as also there was a time when the protection such given was vehemently opposed by few of the nations and after when couple of treaties were adopted many of the countries did not complied with it. Many of the factors were involved in the evolution of an International regime in this regard as there were principles of prevailing territoriality, then there was regular discrimination of the foreign nationals where there was absence of an international obligation. 50

But that is not the scene today and ‗copyright protection‘ is enjoyed in near all of the nations but with the risen significance of this right ,its infringement has also increased or may be it was previously also there but it was not highlighted the way it is been now and with this has risen the awareness about enforcement of one‘s right. Enforcement in can be criminal and can be civil, the focus of this study is ponder upon civil enforcement remedies such as injunctions and damages. In this segment we will be discussing how are the damages and injunctions granted in case of a ‗copyright infringement‘ in United States of America and United Kingdom i.e what is the approach ,if any adopted by the courts.51

50 See Cohen and Loren ―Enforcement of Copyright Law‖2012 p.121-123 51 See Carlos M.Correa ―TRIPS Related Aspects Of IPR‖ 2010 p.188

37 2.2 APPROACH OF U.S COURTS FOR GRANTING DAMAGES-

The approach of U.S courts had set new standards and in a way they have been pioneer in setting parameters for providing damages in case of copyright infringements as the average amount granted for damages ranges from $750- $1,50,00052 even before the final judgement.

For better understanding lets have a look on following cases-

U.S. copyright law provides scant guidance about where in that range awards should be made, other than to say that the award should be in amount the court ―considers just,‖ and the upper end of the spectrum—from $30,000 to $150,000 per infringed work is reserved for

―willful‖ infringers. Although Congress intended this designation to apply only in

―exceptional cases,‖But U.S courts have interpreted wilfulness so broadly that those who merely should have known their conduct was infringing are often treated as wilful infringers.53

However,what the Congress wanted was to have ‗damages‘ of compensatory nature and nothing more than that but over the time as modest amount of damages were issued in case exceptional innocent infringements but as the nature of infringement transformed from innocent to wilful so, has the amount been aggravated.54

That damages in copyright cases are sometimes difficult to prove .And statutory damages are sometimes grossly disproportionate. Copyright damages are difficult to prove, as seen inMP3.com and Free Republic cases, the Supreme Court‘s due process jurisprudence still has application. Courts approach should be to award the damages ,the amount of which makes sense and if possible the plaintiff should be made satisfied with a more modest award. Would an award of less than $118 million have deterred MP3.com from further copying of recorded

52 From http://law.scu.edu/ last visited on 3rd aug 2014. 53 From http://law.scu.edu/last visited on 3rd aug 2014. 54 See Von Lewinski ―International Copyright Law and Policy‖2010,p 321-22

38 music? Would less than $1 million have deterred Free Republic from further postings of news articles? We think so, but we think that courts should at least ask this sort of question before statutory damage awards in copyright cases. Damages in copyright are not in anyway hard to get calculated.

It has been observed that statutory damages have been too often misused ,had been actually used as a tool to generate profits, such grossly excessive awards without any set criteria make no sense. Then again it also depends on the type of damage if its ‗exemplary‘ then it would have different criteria as they have quite strong and punitive purpose. But the normal statutory damages has the only purpose and that is just to compensate and deter infringement. But off late what the courts in U.S have been doing is ignoring the statutory provision, i.e section 504(c) in determining the same.55

2.3 APPROACH FOR INJUNCTIONS,ANY DIFFERENT?

Copyright Act has a set of remedies in case of infringement, one and can say the most prominent among them are ‗injunctions‘. Injunctions which can be temporary or preliminary and also permanent deter the infringer from further infringement of the copyright of the plaintiff. Injunctions come out to be an immediate relief ,the purpose of which is to immediately prohibit such act. Although the approach of courts in granting injunctions has changed post ‗e-bay‘ case56

But what is required that the copyright owner in case of an infringement should be ready to make specific factors so as to seek preliminary injunction, though the factors keep changing

55 See Michael Blakeney ―Intellectual Property Enforcement‖2012 p.165 2ndpara 56 eBay, Inc. v. MercExchange, 547 U.S. 388 (2006)

39 are set by the courts. However following factors have been set to grant a preliminary injunction-

1. Whether the plaintiff has demonstrated either (a) a likelihood of success on the merits or

2- sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the plaintiff‘s favour;57

3- Whether the plaintiff has demonstrated that it is likely to suffer irreparable injury in the absence of an injunction;

4-. The balance of hardships between the plaintiff and the defendant and whether the balance of hardships tips in the plaintiff‘s favour; and

5- Whether the public interest would not be disserved by the issuance of a preliminary injunction.

Temporary restraining orders are also in common issuance, the court in such situation issues a restraining order that too without notice to the other party if the movant is capable enough to show that an immediate and irreparable injury will result ,if the adverse party is heard and further the attorney of the movant certifies his efforts to give notice and the reasons along with it that why it should not be required. Such orders have a validity of 14 days and can also be further extended for another 14 days and that too without adverse party‘s consent.

57 See Von Lewinski ―International Copyright Law and Policy‖2010,p 321-22

40 Circuit Courts have thus, seen to have developed their own variants of the improper appropriation test.

-Preliminary injunctions in U.S however are granted on the basis of the traditional ‗four- factor‘ test , circuit courts although are dividing on ‗sliding scale‘ in which all the factors as present before the case are supposed to be weighed against one another, but this division is present in the decisions of ‗circuit courts‘ only.

In a very important case of- Winter Vs Natural Resources Defence Council58

This case could have been significant in deciding the provisions or say factors which shall govern the ‗sliding scale‘ but here the Supreme Court failed to comment if the ‗sliding scale‘ factor remains viable.

Injunctions are made available ,when the remedy of ‗damages‘ is not sufficient which is the case in India too59. Courts in U.S routinely grant both permanent and interlocutory injunctions where required ,from the below mentioned cases it will be made more clear that when shall such copyright injunctions be granted .

Traditionally, the courts have put the ‗four factor test‘ in application to patents injunctions along with other ‗Intellectual property Rights Infringements‘.

58 Winter Vs Natural Resources Defence Council 555U.S 7(2008) See Carlos M. Correa ―Trade Related Aspects of Intellectual property rights‖ p. 17 See Von Lewinski ―International Copyright Law and Policy‖2010,p 340

59 Super Cassette Industries Ltd v Myspace Inc. MIPR 2011(2) 303

41 2.4 (1)INJUNCTIVE RELIEF POST EBAY CASE-

Some of the recent cases have left Courts to think on a very serious note that ―are injunctions as a remedy that much easy?‖. In eBay Inc. v. MercExchange60, the Supreme Court held inapplicable the Federal Circuit‘s ―general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.‖

The court in this case stated that although Patent Act confers property rights in the patented inventions but still this genre of right is different from the other variety of right and its violations and so shall be the remedies. Although the relief provided in the equity still applies here and so, is the traditional‘ four –factor‘ test but there can be no automatic presumption in favour of or against the injunctive relief in case of any infringement.

2.4 (2) THE „TRADITIONAL FOUR-FACTOR TEST‟ RUNS AS FOLLOWS-

1) that it has suffered, or is likely to suffer, an irreparable injury in the absence of an injunction;

2) that remedies at law, such as monetary damages, are inadequate to compensate for that injury;

3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and

4) that the public interest would not be disserved by a permanent injunction.

60 Supra note 46

42 And this approach was held not to be limited for patent cases only but shall apply in case of

‗copyright infringements‘ too. However the court outrightly rejected the invitation for presumption that the ‗equitable consideration‘ shall be substituted with a rule propounded by the court bearing this determination that ‗a injunction determines an infringement‘, further in the subsequent cases too this approach was seen to be applicable whether it was copyright infringement of broadcasting rights or any other sort of copyright infringement. The Supreme

Court is seen to have reinforced the decision laid down in ‗e-bay case‘.61

It was in Salinger v. Coting62in this case both the Second and Ninth Circuits have since applied the eBay test to copyright injunction cases. In Salinger v. Colting, the Second Circuit vacated and remanded a case in which author J.D. Salinger obtained a preliminary injunction against dissemination of a purported sequel to The Catcher in the Rye. The court further held that here eBay effectively abrogated its prior law on injunctive relief in that eBay effectively abrogated its prior law on injunctive relief in copyright cases. So, now prior to eBay, the

Second Circuit‘s longstanding approach had been to ―presume that a plaintiff likely to prevail on the merits of a copyright claim is also likely to suffer irreparable harm if an injunction does not issue.‖ .Some courts however made this presumption rebuttable as so, generally in almost all of the copyright cases ‗injunction‘ was issued. .So, the court in Salinger‘s case held that after eBay and Winter, courts ―must not adopt a ‗categorical‘ or ‗general‘ rule or presume that the plaintiff will suffer irreparable harm‖ but rather ―must actually consider the injury the plaintiff will suffer if he or she loses on the preliminary injunction but ultimately prevails on the merits, along with it also to be considered that whether the alternate remedies available can suffice or compensate for the injury thus, occurred.63

61 See Carlos M. Correa ―Trade Related Aspects of Intellectual property rights‖ p.115 62 , Salinger v. Coting 607 F.3d 68 (2d Cir. 2010) [2010 BL 97772] 63 See Von Lewinski ―International Copyright Law and Policy‖2010,p 344

43 Also, in the case of Perfect 10 v. Google Inc.64 In this case there was a request on the part of Perfect 10 for grant of preliminary injunction as they alleged that Google used its copyrighted photographs causing thereby irreparable harm ,they pleaded injunction on the likelihood of success of their case ,the District Court refused but the Ninth Circuit affirmed injunction on the basis of longstanding rule of ‗likelihood of success‘. And so, the decision given in ‗e-bay‘ stands effectively overruled.

Major factors which evolved post this case are that the plaintiff must be able to prove the likelihood of success of his case along with the proof of some actual injury caused to him mere speculation will not work if the complete extent can‘t be proved so, likeliness of injury which is irreparable is also enough but should be definitive in nature .Lastly infringement should be such that any other remedy is insufficient to compensate for the loss.

One of the other most important reason for awarding

‗injunctions‘ is that the infringements in copyright lie in a bit different category as the copyrighted work may be sold in different geographical area with different sales –records and then off late the remedy of damages has been misappropriated a lot as in some cases it has been used for generating incentives and profits and not as a compensatory tool. Apart from this in many of the situations there are ‗non-monetary‘ harms such as harms relating to reputation of the author if the ‗infringing material‘ is allowed to published and so, in such situations nothing other than ‗injunctions‘ can be an effective remedy. Although injunctions in such kind of situations is not necessarily awarded by U.S Courts as seen in few of these

64 Perfect 10, Inc. v. Google, Inc., 416 F.Supp.2d 828 (C.D. Cal. 2006)

44 below mentioned cases.It is difficult to know what to do with this type of harm as held in

Gertz v. Robert Welch, Inc., 65 Also, in Warner Bros. Ent. Inc. v. RDR Books66

―Theory in copyright law has held that only the harm of market substitution is cognizable under the Copyright Act and not of natural or moral rights‖.67And the approach of U.S Courts had always been pro-injunctive relief except this revolutionary ‗e-bay case‘ which has given rise to new set of debates but as for now it can be concluded that generally the courts in U.S are in favour of granting injunctions with the help of the four factor test which is still relevant and vital in granting this relief ,its just how the Courts sometime percept it that creates flurry.68

In case of Barrett v Universal Island Records Ltd69,in this the Federal Circuit issued injunction on the defendant to release a music album containing copyrighted work of the plaintiff ,the work was a complete duplication of the plaintiff‘s music label and thus, the court after considering the traditional 4 factors, issued preliminary injunction against the defendant to release the music album.

65 Gertz v. Robert Welch, Inc 418 U.S. 323, 339–40 (1974). 66 Warner Bros. Ent. Inc. v. RDR Books 575 F. Supp. 2d 513, 552 (S.D.N.Y. 2008) 67 See also Sony Corp. v Universal City Studios, Inc. (Betamax) 464 U.S. 417 (1984) Super Cassettes Industries Ltd. v Myspace Inc. (Myspace) MIPR 2011 2 303 Twentieth Century Fox Film Corp. v British Telecommunications Plc. (Newzbin) 2 (2011) EWHC 1981 68 See alsoConfeti Records Ltd v Warner Music UK Ltd (2003)EWHC 1274, Harisson v Haisson (2010)EWPCC 3,para 60 69 Barrett v Universal Island Records Ltd(2006) EWHC 1009

45 2.5 POSITION IN U.K –

In ‗U.K Copyright Law ‗ Provisions relating to ‗Fair dealing‘ are lot more practical as compared to our Indian laws as under the ‗U.K Copyright Law‘, it is not a breach of copyright for persons to make ,for using it at home, videotape recordings or other such sound recordings of broadcasts 70,both of radio and television programme .71alike India where the infringing act is not within saved exceptions but where ‗infringement‘ is prima –facie proved then the remedy of ‗injunction‘ is clearly awarded.72Also the importance of injunctions in cases of copyright infringements is given the same importance as by other Courts .

As in the very important case of Waltz Disney Ltd. V Gurvitz Pvt. Ltd.73The factors for granting ‗injunctions‘ were enumerated as follows –

1-If the case is a ‗prima –facie case for injunction‘ i.e likelihood of plaintiff to succeed

2-Damages not adequate remedy

3-If the plaintiff is denied injunction ,will cause him irreparable harm and injury

4-balance of hardship should be in favour of the plaintiff

2.5(1) APPROACH OF U.K COURTS FOR GRANTING „INJUNCTIONS‟ AND

„DAMAGES‟

The „American Cynamid Company v Ethicon Limited74 generally cited as the leading authority for granting ‗interim injunctions‘ in courts in UK in matters pertaining to

70 S.70 OF THE U.K Copyright ,Designs and Patents Act,1988. 71 A User‘s Guide to Copyright by Michael F.Flint,3rd Ed,p. 335,para 32.04 72 See, e.g., Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 264 (2d Cir.2005) 73 (1982)FSR 446 74 (1975) 1 ALL ER 504

46 intellectual property. Lord Diplock reasoned that here as the legal rights of the parties depended upon disputed facts, the evidence available to the court at the interlocutory injunction stage would be incomplete being given on affidavit and untested by oral cross- examination and thus, it would be unfair to the plaintiff if the discretion vested in the Court to grant interim injunction will be exercised upon the chances of plaintiff‘s success which is again based on untested, incomplete preliminary evidence is nothing but an unfair rule and thus, keeping into consideration the factor of ‗balance of convenience‘ ,a preliminary injunction was granted.75

The approach of court granting and assessing damages is such that while assessing the monetary loss arising to the plaintiff, it is essential to make a distinction between loss that can be quantified in terms of damages and other kinds of loss. In ‗Peaudouce v Kimberly

Clark76, in this case where there was an action taken against patent infringement, injunction was sought that monetary loss will be incurred from the associate companies of the plaintiff, this claim was rejected and the court held that the alleged monetary loss should not be remote in nature and also injunction cannot be sought as a protection against irrecoverable loss.

Awarding damages are preferred over grant of an injunction when damages are adequate , so the test is whether damages are an adequate remedy, though not necessarily a perfect remedy.77

Generally the approach of the U.K Courts have been to consider the remaining three factors and the court feels that there is risk 78of injustice if the injunction was refused sufficiently outweighed the risk of injustice if the injunction was granted. As seen in case of ‗

75 Ananth Padmanabhan ―Intellectual Property Rights-Infringement and remedies‖2012 p.22 76 (1996) FSR 680 77 Supra See Ananth Padmanabhan ―Intellectual Property Rights-Infringement and remedies‖2012 p. 25 78 Nottingham Movies Pvt Ltd. V Euronations Pvt Ltd.(1993)FSR 541

47 Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.79 .Also , in case of ‗Paramount

Entertainment Ltd. Vs British Broadcasting sky Ltd80 ,The High Court has granted a website blocking order against TV and film streaming websites pursuant to s.97A Copyright, Designs and Patents Act 1988.Paramount in its representative capacity for key film studios, successfully applied for an injunction81 against the six main UK Internet service providers, in order to block film streaming websites, which infringed copyright. The four streaming websites in question – Viooz, Megashare, zMovie and Watch32 (the Websites) – all offered access to a wide range of films and TV programmes without requesting consent from the copyright owners. It is worth noting that the Websites themselves did not host the copyrighted content; they categorised and allowed users to quickly search for a film or TV programme and the content could be viewed by way of an embedded player. As a result, the

High Court had to consider whether the mere provision of a hyperlink was considered to be a communication to the public.82

In order to establish whether an injunction should be granted, the High Court had to consider whether: (i) the ISPs were service providers; (ii) copyright had been infringed by users or operators of the Websites; (iii) the users of the Websites used the ISPs to access them; and

(iv) the ISPs had actual knowledge of their service being used to infringe copyright laws. All four points were proven and the Court ruled that even if the ISPs did not have actual knowledge at the outset, they did at the time of proceedings, as an email from Paramount was sent giving notice of the alleged breaches. In Twentieth Century Fox Film Corporation and others v Newzbin Ltd,83 the High Court held that the film-makers' copyright was infringed by a service that indexed and enabled searching of unlawful copies of films posted on the

79 Metro-Goldwyn-Mayer Studios Inc. v Grokster, Ltd. (Grokster)(2005) 545 U.S. 913 80 Paramount Entertainment Ltd. Vs British Broadcasting sky Ltd [2013] All ER (D) 151 . 81 See also British Film Stars and Producers Associations vs British Broadcasting Ltd.[ 2013] All ER (D) 151 82 See http://uk.practicallaw.com/2-565-2787?q=&qp=&qo=&qe= last visited on 3.8.2014 83 Twentieth Century Fox Film Corporation and others v Newzbin Ltd, ([2010] EWHC 608

48 Newzbin. The court granted an injunction restraining Newzbin from infringing the copyright in the repertoire of films. The High Court later granted an order that the internet service provider (ISP) British Telecommunications plc block access to the Newzbin website

(Twentieth Century Fox Film Corporation and others v British Telecommunications84

In Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others,85 the

High Court granted injunctions against five UK ISPs, requiring them to block access to a peer-to-peer file-sharing website .

In EMI v Sky,86 the High Court approved an order agreed between the UK's major ISPs and owners of music content to block internet users from accessing website that facilitated the transmission of copyright infringing material .

Also, in Bassey v Icon Entertainment Plc87, it was held that rights conferred on a performer by the 1988 Act as amended were rights to authorise or prohibit an act and were sufficiently different rights from those originally conferred by s.

182 of the ‗British Copyright Act‘ and thus, amounting to new set of rights ,and still injunction can be issued in case they are violated and the case fits to be a ‗prima-facie‘ case of infringement.

Thus, it can be observed that the approach of Courts in granting injunctions interim as well as permanent or perpetual injunctions in copyright infringements hardly differs with the nature of copyright infringement i.e whether it is a ‗cinematographic work‘ or any other work such as literary or dramatic work except where the infringement is of such cinematographic work

84 Twentieth Century Fox Film Corporation and others v British Telecommunications [2011] EWHC 1981 85Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others [2012] EWHC 1152 86EMI v Sky[2013] EWHC 379 87 Bassey v Icon Entertainment Plc (1995)E.M.L.R 596

49 which causes a high amount of adverse effect on the commercial scale ,then though the courts have not concretised the four factor test but still they recognise it and consider it, then in such situations,the factor of ‗balance of hardship‘ is given more importance. But more or less the approach of the U.K Courts is not different from those of U.S.

2.6 CONVENTIONS RELATING TO COPYRIGHT-

In the International scenario there have been many conventions such as the ‘,‗Rome convention ‘,‘Berne convention‘ which have been pioneer in talking about the recognition of

Intellectual property rights. In this portion we will be dividing our study into two parts-

2.6 (1)PRE-TRIPS POSITION

Prior to the TRIPS(Trade related aspects of Intellectual property rights) there were many conventions which initiated the talks about protection of intellectual property rights such as-

Berne Convention

The Berne Convention for the Protection of Literary and Artistic Works, known as the Berne

Convention, was signed in 1886. Its stated aim was to ensure that literary and artistic works would receive some uniform standards of international copyright protection on which to rely.

This would replace the existing system under which artists, writers and creatives received extremely varying copyright protections across national jurisdictions i.e. preferential treatment given to creatives in their country of birth or residence and so on.

In terms of its strictures for minimum terms of copyright protection, the Berne Convention prescribes protection for literary and artistic works for the life of the author plus fifty years

(fifty years from publication for anonymous or pseudonymous works), while cinematographic works receive fifty years either from the date at which the author makes the

50 work public, or from the date of completion. With regards to photographic works the

Convention leaves the specifics to the discretion of its signatory states, but prescribes a minimum of twenty-five years copyright.88

The Berne Convention did not however create international bodies or mechanisms to enforce these standards, and did not compel member states to act in instances of copyright infringement .89

Thus, we see ‗Berne convention‘ did not spoke about the enforcement mechanism or provisions of intellectual property rights and in the absence of which the authors, artists and other such copyright holders had to struggle a lot to get their rights enforced and as there was no such enforcement mechanism for compelling the member states for enforcing these rights, there were frequent violations and due to all this a need was felt to concretise these rights by providing them with proper enforcement remedies.90

General Agreement on Tariffs and Trade (GATT)

The General Agreement on Tariffs and trade (the GATT) is a multilateral agreement governing international trade relationships, originally signed in 1947. The stated aim of the

GATT according to its preamble was 'the substantial reduction of tariffs and other trade barriers and the elimination of preferences, on a reciprocal and mutually advantageous business'. It functioned as an international organisation, holding under its auspices eight rounds of talks on international trade issues and regulation. The last of these, the Uruguay

Round (1986-1994) created the World Trade Organisation to replace the GATT.

88 From Carlos M. Correa ―Trade Related Aspects of Intellectual property rights‖ p.133

89 See wiki.openrightsgroup.org/wiki/Trade-Related_Aspects_of_Intellectual_Property_Rights last visited on 3.8.2014 90 See also Making Cyberspace Safe for Copyright: The Protection of Electronic Works in a Protocol to the Berne Convention' - R.A. Cinque (Fordham International Law Journal, Vol. 18, Issue 4, 1994, Article 9)

51 The GATT represented the international trade forum through which the TRIPs legislation was pushed and concluded.91

2.6(2) POST –TRIPS POSITION

The Agreement on Trade-Related Aspects of Intellectual Property Rights, known as TRIPs, was signed in Marrakesh, Morocco on April 15 1994. It is one of a number of agreements signed as part of the Uruguay Round of Multilateral Trade Negotiations from

September 1986 - April 1994. TRIPs is the first major multilateral agreement aimed at universalizing intellectual property (IP) laws and setting globally enforceable standards of IP protection which has provided viable enforcement bodies and mechanisms. It entered into force January 1 1995 and applies to all members of the World Trade Organisation.92

As in the case of many other WTO agreements and the very WTO agreement itself, the

TRIPS Agreement opens up with a detailed preamble and it expressly advocates the protectionist paradigm with regard to intellectual property rights. An important implication of the inclusion of the TRIPS Agreement as being one of the covered agreements in the WTO is the application of to IPRs of the three basic principles of GATT, these principles being93 the principle of ‗most favoured nation‘, principle of ‗national treatment‘ and ‗Transparency‘.

And as the IP rights were given due share ,so were the remedies too as in case of infringement ‗injunctions‘ and ‗damages‘ were recognized as enforcement remedy and specifically provided in the ‗TRIPS Agreement‘. As the scope of our study is limited to injunctions only ,so we will be analysing ‗injunctions‘ only in the light of the given provisions.

91 See wiki.openrightsgroup.org/wiki/Trade-Related_Aspects_of_Intellectual_Property_Rights last visited on 3.8.2014 92 See wiki.openrightsgroup.org/wiki/Trade-Related_Aspects_of_Intellectual_Property_Rights last visited on 3.8.2014 93 From Carlos M. Correa ―Trade Related Aspects of Intellectual property rights‖ p.3-8

52 ARTICLE 44

ARTICLE 44 of TRIPS talks about ‗injunctions‘, the provisions are enumerated as follows-

Injunctions

1. The judicial authorities shall have the authority to order a party to desist from an infringement, inter alia to prevent the entry into the channels of commerce in their jurisdiction of imported goods that involve the infringement of an intellectual property right, immediately after customs clearance of such goods. Members are not obliged to accord such authority in respect of protected subject matter acquired or ordered by a person prior to knowing or having reasonable grounds to know that dealing in such subject matter would entail the infringement of an intellectual property right.

2. Notwithstanding the other provisions of this Part and provided that the provisions of

Part II specifically addressing use by governments, or by third parties authorized by a government, without the authorization of the right holder are complied with, Members may limit the remedies available against such use to payment of remuneration in accordance with subparagraph (h) of Article 31. In other cases, the remedies under this Part shall apply or, where these remedies are inconsistent with a Member‘s law, declaratory judgments and adequate compensation shall be available.94

When the Supreme Court issued its May 15, 2006 decision in eBay

Inc. v. MercExchange, LLC, 126 S. Ct. 1837, it eliminated the notion that a patent or copyright would be automatically enforceable as an exclusive right. The decision

94 From http://www.wto.org/english/docs_e/legal_e/27-trips_05_e.htm last visited on 3.8.2014

53 concerned not the putative rights under a patent or another intellectual property right, but rather the ability of the owner to obtain remedies, in cases involving infringement.

To be sure, the Patent Act also declares that ―patents shall have the attributes of personal property,‖ §261, including ―the right to exclude others from making, using, offering for sale, or selling the invention,‖ §154(a)(1). According to the Court of Appeals, this statutory right to exclude alone justifies its general rule in favor of permanent injunctive relief. 401 F. 3d, at

1338. But the creation of a right is distinct from the provision of remedies for violations of that right. Indeed, the Patent Act itself indicates that patents shall have the attributes of personal property ―[s]ubject to the provisions of this title,‖ 35 U. S. C. S261, including, presumably, the provision that injunctive relief ―may‖ issue only ―in accordance with the principles of equity,‖ S283.

This approach is consistent with our treatment of injunctions under the Copyright Act. Like a patent owner, a copyright holder possesses ―the right to exclude others from using his property.‖ Fox Film Corp. v. Doyal, 286 U. S. 123, 127 (1932) ; see also id., at 127–128 (―A copyright, like a patent, is at once the equivalent given by the public for benefits bestowed by the genius and meditations and skill of individuals, and the incentive to further efforts for the same important objects‖ (internal quotation marks omitted)). Like the Patent Act, the

Copyright Act provides that courts ―may‖ grant injunctive relief ―on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.‖ 17 U. S. C. §502(a). And as in our decision today, this Court has consistently rejected invitations to replace traditional equitable considerations with a rule that an injunction automatically follows a determination that a copyright has been infringed. See, e.g., New York Times Co. v. Tasini, 533 U. S. 483,

505 (2001) (citing Campbell v. Acuff-Rose Music, Inc., 510 U. S. 569, 578, n. 10 (1994) );

Dun v. Lumbermen‘s Credit Assn., 209 U. S. 20, 23–24 (1908) .

54 The Court said ―the decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards.‖

The Court noted that under ―well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief.‖

A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

Subsequent to the eBay decision, U.S. courts have rejected a number of requests for temporary and permanent injunctions in cases involving patents, and at least one case involving a permanent injunction for copyright infringement.

In Christopher Phelps & Assocs. v. Galloway, 477 F.3d 128 (4th Cir. Feb. 12, 2007) an architect (Phelps) sought an injunction to remedy an infringement of architectual plans by a home owner (Galloway), who had obtained a copy of the plans from a builder. Galloway was ordered to pay money for his use of the plans, but the architect‘s efforts to obtain an injunction preventing the resale or leasing of the house was denied.

Injunctive relief under the TRIPS

The eBay decision is widely understood to give judges the flexibility to effectively grant non- voluntary authorizations to use patents or copyrights, as an alternative to the enforcement of the exclusive right. This raises an interesting question. How does this flexibility relate to the

TRIPS?

55 With regard to copyright, the relevant provisions in the TRIPS start with the sections on the minimum rights for copyright owners, set out in Part II - Standards Concerning The

Availability, Scope And Use Of Intellectual Property Rights, specifically Section one,

Articles 9 through 14. These are implemented in light of the rest of the TRIPS, including in particular Articles 1, 6, 7, 8 and 40. This is where most of the scholarship on the TRIPS focuses — the rights and normal limitations and exceptions to those rights. However, the eBay decision draws our attention to another important part of the TRIPS — Part III, on the

Enforcement of Intellectual Property Rights, and specifically, Articles 44 and 45.

The last sentence of Article 44, regarding injunctions, is particularly important. It reads: ―In other cases, the remedies under this Part shall apply or, where these remedies are inconsistent with a Member‘s law, declaratory judgments and adequate compensation shall be available.‖ Thus, regardless of the existence of ―exclusive rights‖ in Part II of the TRIPS, courts can decline to enforce the exclusive rights, in return for ―adequate compensation.‖

The TRIPS does not provide rules on how to define ―adequate compensation.‖ Members are not required to offer lost profits or other specific approaches, and like everything else in the

TRIPS, Articles 1, 7, 8 and 40 provide members considerable flexibility to consider consumer protection and public interest objectives.

Interestingly, under Article 45 of the TRIPS, ―In appropriate cases, Members may authorize the judicial authorities to order recovery of profits and/or payment of pre-established damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity.‖ One can read this as:

Members may authorize judicial authorities to order payment of pre-established damages

Taken together, these provisions can be used for systems of compensatory liability to use copyrighted works.

56 There are examples of just such approaches. In the United States, 28 U.S.C. 1498 provides for the elimination of injunctive relief for cases involving (a) patents, (b) copyright and (d) plant varieties. The copyright provision reads as follows:

Whenever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States, by a corporation owned or controlled by the United

States, or by a contractor, subcontractor, or any person, firm, or corporation acting for the

Government and with the authorization or consent of the Government, the exclusive action which may be brought for such infringement shall be an action by the copyright owner against the United States in the Court of Federal Claims for the recovery of his reasonable and entire compensation as damages for such infringement, including the minimum statutory damages as set forth in section 504 (c) of title 17, United States Code;

It is interesting to note the ways that patents and copyright are treated differently in the

TRIPS. The Article 13 three-step test under copyright and related rights is arguable more restrictive than the similar provisions for trademarks (Article 17) and patents (Article 30), because it fails to mention the legitimate interests of ―third parties‖. In addition to the three step-test for patents, Article 31 provides for a special set of provisions for non-voluntary authorizations for uses of patents. In the area of copyrights, the nature of rights under the Part

II, Section One of the TRIPS include a number of other special provisions for copyright and related rights, including for example, mandatory exceptions for quotations, specific limitations on the use of compulsory licenses for some instances, and the extensive and complex [and often criticized] provisions of the Berne Appendix, a part of the Berne system that is only available to developing countries.95

95 Infra

57 The provisions in TRIPS Article 44 on injunctions has a special rule for patents. When the uses of a patent are authorized by a government (as opposed to a judicial authority resolving a dispute between private parties), remedies for infringement can be limited to ―adequate remuneration‖ under Article 31.h of the TRIPS. But

―in other cases,‖ including those involving copyright, when injunctions ―are inconsistent with a Member‘s law, declaratory judgments and adequate compensation shall be available.‖ Thus for copyright cases, the term ―compensation‖ is used, rather than ―remuneration,‖ a choice that seems to reflect the differences between a government authorization to use a work, and a remedy for infringement.96

In the case of an Article 31 non-voluntary use of a patent, there is normally an obligation for the right owner to have a prior negotiation with the right holder ―on reasonable commercial terms and conditions.‖ This obligation is only waived in cases of emergencies (31.b), non-commercial public use (31.b) and when the authorization is a remedy to anticompetitive practices (31.k). The only similar obligation in the TRIPS for copyright concerns uses under the Berne Appendix.

In the case of patents, right owners have to be ―informed promptly‖

when the case of ―public non-commercial use,‖ if the government or contractor knows

or has demonstrable grounds to know that a valid patent is or will be used by or for

the government. There is no such general obligation in the area of copyright.In U.S.

law, the ability to infringe a copyright without fear of an injunction is available for

anyone ―acting for‖ and ―with the authorization or consent‖ of the government,

regardless of what that use is for. 97

96 See also Mark J. Feldstein ―Permanent Injunctons and Running Royalties in Post E.bay World‖.Finnegan Publishing Journal.Sept 1st 2009. 97 See http://www.keionline.org/content/view/68/1 last visited on 12.8. 2014.

58 CONCLUSION

Thus, we see prior to the TRIPS Agreement there was no such concrete mechanism infact there was a total absence of any such enforcement provision of intellectual property rights due to which there was frequent violations of IP rights and the IP rights owners had to struggle a lot in order to get it enforced as different country had different enforcement norms which gave rise to huge ambiguity , ‗injunctions‘ as an enforcement remedy were recognized at par with other remedies and in some countries they were not .Member states however exercise discretion in granting the kind of injunctions but as injunctions being recognised as an enforcement remedy under Article 44 so, the member states are required to desist from the infringement, as the language of the provision says and also to prevent the entry of such goods into the channel of commerce of their jurisdiction, and where the remedy of

‗injunction‘ is not possible ,a clear direction for grant of damages is provided.98

And as regard to question that if there is any difference in judgements of the foreign courts(U.S and U.K) in considering the ‗four –factor ‗ test it can be observed from the first portion of the chapter in which a detailed analysis of the judgements of the U.S and U.K courts have been done that the whether the courts stick to the traditional four factor test or there is variance in deciding copyright infringements and granting injunctions, it can be concluded from the various case –discussions that there is generally no difference in granting the same .99However in U.S, the factors to be satisfied for grant of preliminary injunction i.e an injunction pending litigation are not substantially different from those in the United Kingdom, though U.S has more settlement oriented legal

See also Mark J. Feldstein ―Permanent Injunctons and Running Royalties in Post E.bay World‖.Finnegan Publishing Journal.Sept 1st 2009. 98 See Article 44,45 of ‗TRIPS‘ as signed in 1994 99 See Von Lewinski ―International Copyright Law and Policy‖2010,p 386-87

59 system, the grant or refusal of an injunction weighs heavily in settlement discourse and due to this reason courts have recognized it to be an ‗extra ordinary remedy‘.100

100 See Schwinn Bicycle Co. v Ross Bicycles ,Inc. 870 F.2d1176

60 CHAPTER-3

INDIAN PERSPECTIVE OF GRANTING INJUNCTIONS IN COPYRIGHT

INFRINGEMENTS IN ENTERTAINMENT INDUSTRY

3(A) -1.1 LITIGATION STRATEGIES IN INDIAN ENTERTAINMENT INDUSTRY-

USE AND ABUSE OF „INJUNCTIONS‟

For quite a sometime a peculiar trend has been witnessed in the film industry ,which has led rise to a very pertinent question and that is ‗Are injunctive relief is been abused as a remedy‘.

Before proceeding further lets analyse some of these incidences-

―Ghajini‖-a bollywood movie was stalled for release a day prior of its release as a suit was filed for copyright violation relating to assignment of rights by the owner ,it was alleged that the producer A.R Murgadoss had vitiated the terms of assignment of remake rights and an additional charge of fabricating with the documents was also alleged by A. Chandrasekaran

,the owner of the copyrights of the film and the producer of the original Tamil movie,due to which a preliminary injunction was granted by the Madras High Court.101

The second case is of the movie ‗Knock- out‘102,in this case also the movie was all set to release on Friday ,when on Wednesday it got listed for hearing on the alleged infringement of copyright in the script of the movie ‗Phone booth‘ ,it was alleged by the plaintiffs that there was theft of script of the movie as the defendant‘s movie is very identical to that of the plaintiff‘s ,the question again give rise to the

‗idea-expression‘ dichotomy issues hovering the film industry.However though the expression was not similar but the plot came out to be identical, thereby resulting into

101 A. Chandrasekaran v Geetha Arts Division 2007 MLJ 1045 102 Twenty First Century Entertainment Ltd. V Sohail Maklai Ent. Pvt Ltd 2010 Bom LJ 325

61 preliminary injunction ,but it also raised questions about the bona fide of the plaintiffs as at the later stage of proceedings they claimed of damages which was much above the bar of it‘s compensatory nature.

Lets analyse the third case ,which raised turmoil on global level, the case of ‗Slumdog

Millionnaire‘103,the issue raise was regarding the adaptation of the novel ‗Q and A‘ written by Vikas Swaroop into movie, there was dispute as to payment of royalty fees, which again led rise to serious questions as to whether the litigation now days is just used as a tool to stall the release of the movies so, that a better bargain can take place thereafter. These issues have led to some serious problems as the producer who has invested so heavily in the movie can‘t afford to delay its release and so readily comes on negotiation table ,where the litigant has already created his set-up for bargain. Since 2000 ,there has been a sudden rise of such kind of litigation and such cases deal with just any aspect of the film. And in a very recent matter wherein the famous music composer threatened the makers of movie‘ Jai Ho‘ to take the matter to court in case he uses this titile as he already held copyright in the title ,though the matter was settled out of court ,still film-makers and producers are more nervous about litigations which may crop up prior to release than ‗Fridays‘ which were the reason for their nervousness always.

. In another recent case, a lyricist sued a television company three days before the start of a serial. "The serial was named after a film's title song that the lyricist had written. The producers had taken permission from the music company which owned the song and they thought the matter ended there. Filing a case before a film or a serial's launch, of course, is pure strategy. If a film is dragged to court on a Wednesday just before its release,

103 Vikas Swaroop v Christian Colson and Ors 2008 Bom LJ 187

62 chances are that it won't be released as scheduled. A suit filed on a Wednesday often means a quick out-of-court settlement.104

(A) 3.2 WHY IS IT HAPPENING?

The reason of such litigations is hidden in there disposal. If we observe the nature of relief asked in such cases ,we get answer to this question .Generally the cases crop just a day or two prior to release of the film and in the alleged infringement of the right a ‗preliminary injunction‘ is asked ,we are not arguing about the locus of the right ,the litigant holds but about the bona fide as the injunction issued in such cases restrains the release of the movie

,the producer and other people want an immediate settlement at generally any cost. And so

,such litigations are among the best strategies to fetch money.

(A) 3.3 NATURE OF REMEDIES ASKED,GENERALLY

From the cases mentioned above105it can be observed that in near about all of such kinds of cases ,remedy asked for is ‗Preliminary injunction‘ ,as also in case of the movie

‗Welcome‘106also the relief thus, asked for was a ‗preliminary or temporary injunction‘, the infringement was alleged in the song of the movie and it was asserted that rights of adaptation of the song were not taken by the producers thereby resulting into infringement.

These cases have pointed towards a sorry set of affairs which the Indian Film Industry is going through as in such cases extracting money by creating such uncalled pressure is the prime tool which raises question as to the bona fide of

104 See Nishith Desai‖Tackling Bollywood Litigations‖2013,p102 105 Supra p. 48 106 Puneet Prakash Mehra nd Ors v Nadiawala Grandson C.S No. 112 of 2010 Cal

63 the litigant . ‗Injunctive relief‘ is among a very serious genre of reliefs which was given importance because in many situations damages or compensation could not suffice and the harm thus, caused is irreparable in nature but from these cases it can be inferred that in cases where litigations are cropped a day prior to release of a film, ‗injunctive relief‘ asked for which is generally ‗temporary injunction‘ is a strategy to get a hefty amount in settlement

,which is the first thing which the film-makers will be ready and thus, it is seen that there is a blatant abuse of this relief.

(B)3.1 COPYRIGHT INJUNCTIONS IN CASES OF „IDEA-EXPRESSION‟

DISPUTES

Copyright is the right for the expression of an idea, art etc in a novel way or in a way which is original ,it has nothing to do with the originality of an idea ,everything revolves around the expression. So, there‘s nothing in the notion of copyright to prevent a second person from producing an identical result, however what is required that such identical result should arrive from the efforts of an independent process.107

(B)3.2 Principle of „Fixation‟-

A Copyright exists in a work only when such work is represented in a material form, such a principle is known as ‗fixation‘ .For example in the case where there is some literary work, the copyright protection is available to the material form i.e the actual written work and not any such idea, how novel or new it might be., though such property is in the form of a mental abstraction ,alike the other forms of intellectual properties ,so no question arises as to the novelty of idea, what matters is that how such ‗idea‘ is abstracted into a material form. If

107 Gregory Committee Report,1952,para 9 quoted in Whitford Committee report(1977).

64 there is only one way of expressing an idea and such expression is merged and thus, can‘t be the subject matter of copyright.108

The boundry line between an ‗expression‘ and an ‗idea‘ stands blurred ,it was in Lotus Development Corp. V Paperback Software International 740 F Supp 37. ,it was held-

That nobody has ever been able to fix the boundary between an ‗idea‘ and an ‘expression‘

,and this can‘t be done ever ,the reason being that it was never the subject-matter of copyright protection. However where there is a substantial similarity between the two works

,the expression of the copyrighted work of which infringement is alleged is seen to have a upper hand ,so the expression should be such that any reasonable person can‘t differentiate between the expression of the two.109

In India it was in R.G Anand v Delux Films110,the Supreme Court of India enunciated various governing principles in this landmark case, the plaintiff here has written a play titled ―Hum

Hindustani‖ in 1953 and it was staged for the first time in 1954,the defendant approached the plaintiff to make a film upon it but no such final communication could take place ,it was later on that the defendant announced to make a movie ―New Delhi‖, the cause of action arose and the plaintiff approached the defendant though he assured him that there is no such similarity but when the movie was released the plaintiff having formed the belief that it was based upon his play filed suit for copyright infringement against the defendant. The Court after considering various issues gave seven important guidelines while deciding questions based upon such situation-111

108 See Total Information Ltd v Daman (1992)FSR 171 at p.181,Also see Kenrick and Co. v . ;Lawrence and Co.(1890)25 QBD 99 and Lotus Development Corp. vPaperback Software International 740 F Supp 37. 109 Mary P. Marshall v Ram Narain Lal AIR 1934 All 922 110 R.G Anand v Delux Films (1978) 4SCC 118 111 See Ananth Padmanabhan ―Intellectual property Rights-Infringement and remedie‖2012 p.308-309

65 1-There can be no copyright in idea, subject-matter ,themes, plots or historical or legendary facts and any violation in such cases is confined to the form, manner and arrangement and expression of idea by the author of the copyrighted work.

2-Where the same idea is being developed in a different manner ,it is manifest that the source being common ,similarities are bound to occur, so in such situation courts should determine whether or not the similarities are of fundamental or substantial nature.

3-One of the safest and surest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent works appears copy of the original.

4-Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no such violation occurs thus, no injunction can be issued.

5-Where apart from the similarities appearing in the two works there are also material and broad dissimilarities which negative the intention to copy the original and the coincidences thus, occurring are clearly incidental ,in such situation too , no infringement occurs.

6-As a violation of copyright is an act of piracy, it must be proved by clear and cogent evidence after applying the various tests laid down in case discussed above.

7-Also where however the question is of the violation of the copyright of a stage play by a film producer or a Director the task of the plaintiff becomes very difficult .But still if the viewer after watching he film gets a totality of impression that the film is by and large a copy of the original play, violation is said to be proved.

66 And this decision since then has been followed in nearly all of the Indian cases.112

-It was in Mirage Studio v Counter Feat Clothing 113 ,it was held-

―I find it difficult to determine that what this phrase i.e ‗There is no copyright in ideas means although here are similarities in the graphic reproduction of the defendants, product to those in the plaintiff‘s product, are mainly reproduction of a concept of the humanoid turtle of an aggressive nature‖

Further in King Feature Syndicate Inc. V Sunil Agnihotri114 ,the defendant copied the idea of comic strips Phantom and proposed to launch a television serial which was titled as ‗Betal‘,as the expression was original, the court after considering the difference in expression which was substantially different ,was not convinced with the arguement of the plaintiff and held that there can be no copyright in ideas and thus, denied injunction.

And in another recent case of......

-Pepsi Co. Inc v Hindustan Cola Co.115,in this case also it was held that ―where the defendants used the tag line which was used by the plaintiffs in their advertisement ,but such use by the defendants was not in relation of their products ,which was actually in a mocking manner in relation to comparative advertising which does not amounted to infringement of copyright and so ,here also injunction was refused.As the view of the court was that where there is comparative advertising the copyrighted work has not been copied but used for comparison, such cant be a case of infringement.

112 Some of them being Raja pocket Books v Radha Pocket books 1997(17)PTC 84,Urmi Javekar Chiang v Global Broadcast News Ltd. 2008(36) PTC 377 113 Mirage Studio v Counter Feat Clothing (1991) FSR 275 at p 280-. 291 114 King Feature Syndicate Inc. V Sunil Agnihotri (1997)PTC303(Del) 115Pepsi Co. Inc v Hindustan Cola Co 2013 AIPC 240(Del)

67 Thus, we see that as there is no copyright in ideas or information, so if a person publishes some writing the idea of which is already in market or in public ,adoption of such an idea will not deter the writer from protecting his own work derived from such an idea provided that the idea is not protected in the form of ‗Non- disclosure agreements‘ and so, if in this sort of situation if infringement is alleged and injunction ,damages are sought as remedy ,following points have to be considered upon-

1-That the idea was ,if not previously available in the market was protected under ‗Non- disclosure agreement‘.&

2-That the defendant had copied it without permission thereby amounting it to be an infringing act.

When any writer has any such idea which he wishes to use for script development

funding, he has to or say comes across sharing this idea with multiple individuals.

Hence, there is no copyright protection available to an idea, until and unless it is

given a written form with adequate details. With a single set of idea or just an idea (or

sometimes even concept note), multiple storylines can be developed which are

entitled to separate copyright protection.

Thus, the only way the script writer can protect the idea or concept

note would be through non-disclosure agreements (NDAs). The courts have upheld

protection of idea through such non-disclosure agreements or when the idea has been

communicated in confidence through the writer. In the very recent case of Zee

Telefilms Ltd. v Sundial Communications Pvt. Ltd.116, Sundial developed the idea of

116 Supra p.54

68 a TV series called ‗ Krishna Kanhaiya‘ and the Managing Director of Zee was

approached in this regard, however what the Zee co. did later wards that they copied

the idea of ‗Sundial communications‘ as they came up with a tele-show ‗Kanhaiya‘

which was quite similar to the one ‗Krishna Kanhaiya‘ of the Sundial

Communications, at the interim stage, a single Judge bench of Bombay High Court

granted an injunction. And in an appeal against this injunction by Zee, the Bombay

High Court opined that an average person would definitely conclude that Zee‘s film

was based on Sundial‘s script and hence upheld the injunction against Zee as

Sundial‘s business prospect and goodwill would seriously suffer if the confidential

information of this kind was allowed to be used. In cases of disputes, in addition to

NDAs, the writer would have to prove that he originated the idea and the date of

origination and so, injunction was granted.

(B) 3.3 Injunctons in Cases of theft of Idea, Story and Script

When any writer has any such idea which he wishes to use for script development

funding, he has to or say comes across sharing this idea with multiple individuals.

Hence, there is no copyright protection available to an idea, until and unless it is

given a written form with adequate details. With a single set of idea or just an idea (or

sometimes even concept note), multiple storylines can be developed which are

entitled to separate copyright protection.

Thus, the only way the script writer can protect the idea or concept

note would be through non-disclosure agreements (NDAs). The courts have upheld

protection of idea through such non-disclosure agreements or when the idea has been

69 communicated in confidence. In the very famous case of Zee Telefilms Ltd. v Sundial

Communications Pvt. Ltd117., Sundial developed the idea of a TV series called ‗Krish

Kanhaiya‘ and approached the Managing Director of Zee and shared a concept note

where the basic plot and the character sketches were outlined in confidence. Later, it

was found that a TV series called ‗Kanhaiya‘ was broadcasted on Zee TV and this

series was substantially similar in nature to the idea that Sundial had communicated to

Zee. Sundial filed a suit against Zee and, inter-alia, sought for injunction. At the

interim stage, a single Judge bench of Bombay High Court granted an injunction. In

an appeal against this injunction by Zee, the Bombay High Court opined that an

average person would definitely conclude that Zee‘s film was based on Sundial‘s

script and hence upheld the injunction against Zee as Sundial‘s business prospect and

goodwill would seriously suffer if the confidential information of this kind was

allowed to be used. In cases of disputes, in addition to NDAs, the writer would have

to prove that he originated the idea and the date of origination. Some of the modes by

which protection can be accorded are as follows-

(B)3.4 Measures for Protection for Concepts, Scripts & Screenplays

Concepts, scripts, screenplays are protected as literary works under the Copyright

Act, 1957 (Copyright Act) and get protection if they are original. In most countries, copyright is provided in a work without any formal registration. And as soon as the work is originated, it gets protection. As India being a member of the Berne Convention and the Universal

Order, 1999 according to this order any work first made or published in any country which

117 Zee Telefilms Ltd Anr v. Sundial Communication Pvt Ltd & Ors, 2003 (27). PTC457

70 again ,is a member of any of the above mentioned conventions will be granted the same treatment as if it was first published in India, thus will be accorded ‗equal protection‘.

To create evidence of creation of the concept notes / script, some of the suggested steps are as follows-

• to apply for the registration of the script with copyright offices,

• to register with the writer‘s association/s,

• to mail the script to the person entrusted with a ‗Non-disclosure agreement‘.

(B)3.5 INJUNCTIONS HOW MUCH SUCCESSFULL IN SUCH CASES?

It can be observed from above mentioned cases that ‗injunction‘ as remedy is

discretionary and so, variety of factors contribute to it. For example in above

mentioned case of Sundial Communications Vs Zee Telefilms118 ,at the interim stage

‗injunction‘ was issued on the alleged infringement ,the Bombay High Court

maintained the injunction issued by Single Judge of the Bombay High Court in the

Division bench also. Following factors were considered-

1-Sundial‘s business prospect and goodwill could have seriously suffered .

2-Proofs adduced by ‗Sundial Communications‘ as to ownership in the ‗alleged idea‘

thus expressed.

3-Irreparable harm or injury thus, caused.119

119 See Anant Padmanabhan ―Intellectual Property Rights-Infringement and Remedies‖2012,p.301 ,1st para

71 So, it can be concluded that whether it is a dispute pertaining to

infringement of a ‗ literary copyrighted work‘ or any other work pertaining to theft of

idea and its expression ,what courts looks into is more or less same in fact all the

cases i.e the irreparable harm or injury expected to be caused balance of

convenience/inconvenience is in favour of which party, what effect will be caused to

business prospect and goodwill of the parties. 120

120 See Raman Mittal ―Intellectual Property Rights and Global Vision‖,2003 p.221-223

72 3.6 INJUNCTIONS –A REMEDY?IN CASES OF INFRINGEMENTS OF RIGHTS

OF PERFORMERS AND OTHER INFRINGEMENTS OF „CINEMATOGRAPH

INDUSTRY‟-

The provisions as to the rights of the people working in the ‗Cinematograph industry‘ are covered under section 13 and 14 of the act, the term ‗cinematograph film‘ means any work of visual recording on any medium produced through a process from which a moving image may be produced by any means and includes a sound recording accompanying such visual recording and the term ‗cinematograph‘ shall be construed as including any work produced by any process analogous to cinematograph including video films‘.121

The author of a cinematograph film is a producer who has invested his resources into it. The amendments of 2012 have made some significant changes which provide clarity as about the rights subsisting in an artistic works, cinematograph films and sound recordings, the issues addressed by these amendments were important in nature as the technological issues of variant category were dealt by them, though in situations not mandated by WCT or WPPT.

PERFORMER‟S RIGHT‟s INFRINGEMENT AND INJUNCTIONS-

The Copyright (Amendment)Act of 1994 has introduced an important section in the Act in place of s.37 which deals with the broadcasting reproduction rights ,further the amendment provided certain special rights to the performers ,which are known as ‗performer‘s rights‘

The section says-― That every Broadcasting organization will have a special right which is known a the ―Broadcast Reproduction Rights‖ in respect of its broadcasts, this right will

121 Section 2(f) of the Indian Copyright Act 1957

73 further subsist for 25 years from the year of broadcasts, during this period if anybody does the following acts ,without license from the owner of the right, such person will be deemed to have infringed the broadcast reproduction right, following are the lists of acts which are

‗infringing ‗ in nature122-

1-Reproductions the broadcast;

2-causes the broadcast to be heard or seen by the public on payment of any charges;

3-makes any sound recording or visual recording of the broadcast;

4-makes any reproduction of such sound recording or visual recording where such initial recording was done without license or where it was licensed for any purpose not envisaged by such license; or

5-sells or hires to the public or offers for sale or hire, any such sound recording or visual recording referred to in clause (c) or (d) of the section.123

There was a big lacuna prior to the amendment Act of 1994 regarding the rights of performers, as for the first time a set of ‘special rights‘ was given to the performers, such as actors, dancers, jugglers, musicians, acrobats and so on..these rights were seen on similar lines to those of ‗broadcast reproduction rights‘. The protection thus, accorded is for 50 years

.‘Performance‘ in relation to a ‗performer‘s rights‘ means any visual or acoustic presentation made live by one or more performers.124

122 P.Narayan ―Intellectual Property Rights‖4 Ed 2007 p.no.152

123 S.37 of the Indian Copyright Act 1957 124 S.2(q) of the Act.

74 WHO IS A PERFORMER?

A performer as per the India n Copyright Act includes ―an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance‖.

Provided that in a cinematograph film a person whose performance is casual or incidental in nature and, in the normal course of the practice of the industry, is not acknowledged anywhere including in the credits of the film shall not be treated as a performer except for the purpose of clause (b) of section 38B of the Indian Copyright Act 1957.125

Rights provided to the ‗performers ‘are provided under section 38,38 A and 38 B of the

Indian Copyright Act. The amendment as to recognition of moral rights of performers was carried out in the year 2012 so, there are not many cases on the issues related to infringement and injunctions, still in some of the recent cases question arose as to infringement of perfomer‘s right and also moral rights of performer by producers by backdating the contract prior to the date of amendment. Such as in the case of –

Ram Sampath v Rajesh Roshan 126the question arose as to where the work is a copy pr plagiarism of the former ,then how to differentiate between the two. If on hearing the latter musical work the listener is able to be reminded of the original work, then it can be a true test to ascertain the same.Here the songs of the movie ―KRAZZY 4‖ ,were held to be copied from the album ―The Thump‖ of the plaintiff and as the movie was already released damages were held to be an appropriate remedy for the same.

125 S.2(qq) of the Act. 126 Ram Sampath v Rajesh Roshan 2009(40)PTC 78

75 One of the most contentious issues arising in respect of infringement of performer‘s right pertaining to musical works is as to whether a license ought to be taken from the music composer when the musical work has become a part of a sound recording and so, a valid license shall also be obtained from the sound recording label too,this issue arose where radio broadcasting FM stations had taken a license from the ‗Phonographic

Performannce Ltd.(PPL)127,copyright society which administers the royalties of the performer members i.e music composers and lyricists.128It was held by the Hon‘ble Supreme Court that there is no need to obtain a separate license from IPRS as though there seem to appear a prima-facie conflict between section 13(4) and section 14(1) a(iii)on one hand and section

14(1)(c)(ii) on the other , a close scrutiny and a harmonious and a rational construction of these provisions would lead to an irresistible conclusion and that is, that once the author of a lyric or a musical work parted with a portion of his copyright by authorising a film producer to make a cinematograph film in respect of his work and thereafter gets his work incorporated in the film, the right thus, acquired by the producer id to cause it to be seen in public and to be heard in public too, so the exercise of this right did not require any further permission from the author of the lyric or musical work. However, the Supreme court clarified that the composer of a lyric or a musical work would retain the right of performing such work in public for profit otherwise than as a part of cinematograph film.129

127 Indian Performing Rights Society v Eastern India Motion Pictures Association AIR 1977 SC 1443 128 Also see Indian Performing Rights Society v Aditya Pandey MIPR 2011(3) 19, Indian Performing Rights Society v Eastern India Motion Pictures Association AIR 1977 SC 1443 129 See Anant Padmanabhan ―Intellectual Property Rights-Infringement and Remedies‖2012,p.313 , Also See Raman Mittal ―Intellectual Property Rights and Global Vision‖,2003 p.231-34

76 3.7 TOP BOLLYWOOD CONTROVERSIES = INJUNCTIONS AND DAMAGES?

We all know that the Copyright Act was amended in 2012 and it has brought with itself, a ripple to the functioning of the entertainment industry. 2013 has just carried on the trend and increased the intensity of these ripples, not just with the Copyright Act but with matters surrounding other IP issues too. Bollywood has become more aware of its IP rights and this is just the beginning.

Here are some of the famous Bollywood copyright disputes related to grant of ‗injunctions‘ and in some cases ‗damages‘-

The famous Band Baaja Baaraat – Jabardast case

Yash Raj Films gained the limelight once again, just before making history with Dhoom-3, when they successfully restrained producers of the Telugu movie ―Jabardast‖ on grounds of copyright violation.130 YRF successfully gained an interim order in their favor from the Delhi

High Court after convincing them that ―Jabardast‖, the Telugu movie was nothing more than a blatant copy of the popular movie ―Band Baaja Baaraat‖. While the makers of ―Jabardast‖ planned to release a Tamil version of the movie, YRF also successfully restrained them from such a release claiming that they were due to release their own Tamil version of the popular romantic comedy. While the fate of the case is yet to be sealed, YRF rides high on its victory of the first battle.

130 Yashraj Films Pvt Ltd v Blue Ray Entertainment media Ltd(2009) 42 PTC 31

77 “Jai Ho” – Do song titles enjoy trademark protection?

Sohail Khan‘s movie titled ―Jai Ho‖ has landed itself in the middle of a legal controversy for trademark infringement. The title ―Jai Ho‖ is also the title for the hugely popular song ‗Jai

Ho‘ that helped A.R. Rahman land an Oscar, also for which Mr. Rahman has trademark protection.While the matter is rumored to be settled out of Court, the question as to whether song titles can obtain trademark protection based on the concept of ―secondary meaning‖, remains unanswered and so, no injunction was granted.131

“Kitne format they?” (SHOLAY CASE)

Ramesh Sippy‘s company filed a case claiming that he was a partner in the M/s Sippy

Films that had financed the movie Sholay, the all-time popular movie. Being the owner of the movie he claimed that the making of Sholay 3D by the Respondent without his consent, was infringement under the Copyright Act. When Mr. Sippy retired from the firm just before the release of the movie, the firm was re-instituted and he joined back as partner. Later, due to other reasons, the partnership firm dissolved. After 2 years SMEPL was incorporated. A gift deed was executed granting all copyrights in Sholay to SMEPL. The Respondent argued that it was the work of G.P. Sippy, the Appellant‘s father and not of the Appellant. The Appellant had just directed the film and he was remunerated for the same, and thus did not hold a copyright. The Respondent also argued that the right was vested with SMEPL, not with the

Appellant. The Court held that in the past 40 years, the Appellant had never raised any objection regarding Sholay. Even when asked in an interview about the 3D film, he still didn‘t raise any objection. Thus the Appellant was very much aware of the 3D production of

Sholay before the said suit was filed in the Delhi High Court and had not objected then. The

Authorship of work comes when the film is released but Mr. Sippy retired before it. The

131 See supra note 81

78 Court held that the Appellant could not make out a prima facie case of copyright infringement in the instant case. The Appellant was also unable to show that he would suffer irretrievable harm or injury. Injunction was not granted.132

1.5 crore Knock out

A case continuing since 2010, is the one where 20th Century Fox filed a suit against the

Indian producer of film ‗Knock Out‘133 alleging that Indian producers had infringed Fox‘s copyright in the script for the movie ‗Phone Booth‘. Plaintiff contended that, in its script, a person gets trapped in a phone booth in a hostage situation and comes clean about his extra- martial affair and in the Defendant‘s film, a person gets trapped in a phone booth but the movie revolves around politicians. The Defendant argued that the copyright could not be claimed over an idea of the film. The issue before the Court was whether there was copyright over an idea in the first place. The Single Judge of High Court granted the interim injunction.

Later, it was vacated by a Division Bench of High Court. The Court recorded that the suit was being disposed in terms of the ‗Minutes of the Order‘ submitted to the court by both the parties. In 2013, this case, that was lying low for the past couple of years, ended up being a landmark case, making history when the court awarded 1.5 crore as compensation to 20th

Century Fox, the highest penalty/damages ever granted in India for such a dispute.

The famous „ Zanjeer‟ case

This is an instance of a case that has gathered much limelight and made a lot of noise when

Salim Khan and Javed Akhtar, filed a suit for injunction against the Defendants Sumeet

Mehra and others (Prakash Mehra‘s heirs), to restrain them from releasing the remake of

132 Ramesh Sippy v SMPEL Ltd 182(2011)DLT226, 133 Twenty First Century Entertainment Ltd. V Sohail Maklai Ent. Pvt Ltd 2010 Bom LJ 325

79 ―Zanjeer‖. The Plaintiff claimed that the movie was written by the Plaintiffs, and that Prakash

Mehra had never remunerated them. They claimed that they had granted a one-time permission to Prakash Mehra to make the movie, thus the permission remained granted only till 1973 and didn‘t extend beyond it. The Plaintiffs argued that as per Sections 18 and 19 of the Copyright Act the right to remake the movie continued to remain with the Plaintiffs and the film could not be remade without the written consent of the Plaintiffs. The question was whether the consent of the writers was required to remake the movie. The Court held that since the Plaintiffs were paid Rs 55,000 each by Prakash Mehra and the Defendants were his heirs, the same right to remake would be enjoyed by them. No injunction order was passed.

Later, an appeal was filed before the Division Bench, which was withdrawn by the Plaintiff, as the parties reached a settlement.134

The IPRS regime

The biggest bang in 2013 was created by the Indian Performing Right Society (IPRS), which has become a crackdown expert in relation to use of copyrighted works of artists. From hotels to pubs, discotheques to business entities, armed with the Copyright Act and an army of musicians and lyricists, the IPRS has transformed into a ruthless knight in shining armor, confiscating due payment on behalf of artists. A few popular instances include, the crack down on singer Arijit Singh‘s performance in Jaipur for not obtaining a valid license for the live performance, the introduction of tax for broadcasting musical works in hotels and so on.

A relentless guardian nevertheless, the show will go on…135

A cinematograph film is ordinarily based on some literary, musical , or any artistic work in which copyright may subsist. One has to see various things

134 Salim Khan and Javed Akhtar vPuneet Prakash Mehra nd Ors C.S No. 112 of 2013 Bom 135 From www.BananaIP.com

80 such as whether the film is infringing copyright of other works or is it in the list of exception as provided under s.52(1),however if such work is used for any research work ,or any private study, any criticism ,review etc. it will not amount to infringement in the other situation an

‗injunction‘ is always ready to be issued. A Cinematograph film is a subject –matter for protection under the copyright act .A ‗cinematograph film ‘ includes the sound track, also a

‗cinematograph‘ includes any work produced by any process analogous to cinematography136There was no such reference to video films in the original definition of

‗cinematograph film‘ but after the amendment act of 1984 ,an explanation was added which

‗video-films‘ also a part of it.

It was in Entertaining Enterprises v State of Tamil Nadu AIR 1984

Mad 278 at p. 290 ,it was held that-―As a result of the inclusive definition of cinematograph film under s. 2(f) of the act, including any work produced by any process analogous to cinematograph ,so the exhibition of a film in a television through any of the video tapes in which such film is recorded is also within the definition of a cinematograph film.137

In Restaurant Lee v State of Madhya Pradesh ,AIR 1983 MO 146,it was held in this case that ―The exhibition of movies by playing back a pre-recorded cassettes in restaurants will also fall within the ambit of the term ‗cinemas‘ under the Madhya Pradesh

Cinema Regulations, Act of 1952 and it was also stated that when a video cassette recorder is used for playing a pre-recorded cassettes of movies on even on a television screen ,it is certainly used as an apparatus for the representation of moving pictures or series of pictures and then it comes within the definition of cinematograph as defined by the very act ,further

136 S. 2(f)now it includes a ‗video-film ‗ also. 137 P.Narayan‖Intellectual Property Rights‖ 4thed.2007 p.80-81

81 this definition was approved and was also followed in Hanumanprasad Tiwari v State of

Maharashtra 138,it was held in this case-

‗A VCR is well within the meaning of a mode playing a pre- recorded cassettes of movies on the television screen as this apparatus is within the definition of a ‗cinematograph‘139and so,

‗injunction‘ was granted .

3.8 INJUNCTIONS IN INFRINGEMENT OF BROADCASTING RIGHTS-

The section says-― That every Broadcasting organization will have a special right which is known as the ―Broadcast Reproduction Rights‖ in respect of its broadcasts, this right will further subsist for 25 years from the year of broadcasts, during this period if anybody does the following acts ,without license from the owner of the right, such person will be deemed to have infringed the broadcast reproduction right, following are the lists of acts which are

‗infringing ‗ in nature140-

1-Reproductions the broadcast;

2-causes the broadcast to be heard or seen by the public on payment of any charges;

3-makes any sound recording or visual recording of the broadcast;

138 Hanumanprasad Tiwari v State of Maharashtra AIR 1984 Bom 34 139 P.Narayan ―Intellelectual Property Rights‖4thEd.2007 p.no.82 140 Supra p.no.152

82 4-makes any reproduction of such sound recording or visual recording where such initial recording was done without license or where it was licensed for any purpose not envisaged by such license; or

5-sells or hires to the public or offers for sale or hire, any such sound recording or visual recording referred to in clause (c) or (d) of the section.141

In Music Broadcast Pvt. Ltd v IPRS142,suit was filed by FM Radio broadcaster seeking refund of the license paid to the IPRS as it did not had broadcasting rights and further injunction was sought from the action taken in against the broadcaster‘s .The Bombay High

Court however upheld the right of the IPRS for granting licenses on the part of its members.143

IS TELEVISION BOROADCAST ALSO WITHIN ITS AMBIT?

The term ‗television ‗does not appear in the Act ,however the definition of broadcast is sufficiently wide enough to include a television broadcast also ,the term ‗television‘ is defined as to be ‗a system for reproducing actual or recorded scene at a distance on a screen etc. by radio transmission ,usually with an appropriate application of sound ,vision of distant objects obtained thus, television programmes‘.144

The owner of a copyright in a musical work has the very exclusive right to perform such work in public,but such work may be performed in private without license provided the

141 S.37 of the Indian Copyright Act 1957 142 Music Broadcast Pvt. Ltd v IPRS 2011(47) PTC 587,2011(113)Bom LR 3153 143 See also Gramophone Company of India Ltd. v. D.B. Pandey [(1984) 2 SCC 534 144 P.Narayan ―Intellectual Property Rights‖4th Ed 2007 p.no.153

83 receiving end is not the ‗public ‗ in the other case it will amount to ‗infringement‘ and thus, making it a prima-facie case for issuance of injunction.

TAPE–RECORDING OF A „BROADCAST PROGRAMME‟ and INJUNCTION?

If a person has made a sound recording of a broadcast via radio, such person will not be infringing the broadcasting right if such recording is used by him for private use or if it is used for the purpose of academics or research but where the act does not fall within the ambit of statutory exceptions, ‗injunction‘ is ready to be issued. 145

IF REALLY „INJUNCTIONS‟ AVAILABLE AS EASILY AS IN OTHER CASES OF

Injunctions in cases where there is copyright infringement of a cinematographic work are granted primarily taking into the law the way it is, court‘ s generally refrain from adding any additional perspective and in some cases they deter addition of any required principle as observed in the IPRS case146,Supreme Court adopted a very unfortunate view and rights of performers of IPRS were seen to be defeated due to inconsistency found between the provisions of section 13(4) and s. 14(1)(a)(iii) alongwith s.14(1)(c)(ii), and thus, where the question arises as to performer‘s enforcing their right through IPRS and even personally in regard to seeking injunction or any other remedy against any person or organization who has obtained license from the producer but has not paid royalty to the performer,what shall be the fate of such a suit or action, as there are different views of different High Courts and the one of Supreme Court is completely inconsistent ,then in such situation a relief of injunction or damages can be and also can not be granted ,thus giving rise to huge ambiguity.

145 Hanumanprasad Tiwari v State of Maharashtra AIR 1984 Bom 34

146 See Supra note 106

84 3.9 INJUNCTIONS FOR “ASSIGNMENT AND LICENSING RELATED

INFRINGEMENTS OF COPYRIGHTS IN „INDIAN CINEMATOGRAPH

INDUSTRY”?-

Assignment and Licensing

The provisions relating assignment and licensing are contained in section 17,18,19,19A

,30,30A ,31,31 A ,32,32 A,32 A and 32B.

Assignment is provided under the Indian Copyright Act as a mode to monetise the copyrighted work , the owner is given the right to assign the existing or the prospective work, wholly or in part but the assignment related to the ‗future work‘ can be done only when the work comes into existence. The expression ‗assignee‘ includes legal representative of the assignee. The mode of assignment is also provided in the Indian copyright Act ,which prescribes that the assignment should be in writing or duly authorised by agent.

Licensing ,alike assignment is the right or say privilege given to the one having a ‗copyrighted work‘ ,is given in respect to a work wholly or in part and in the way similar to that of assignment i.e in writing and duly authorized by the agent.

WHY NOT INJUNCTIONS FOR „ASSIGNMENT INFRINGEMENT‟?-

In a recent controversy took place relating to ‗assignment ‗ of rights in a song of a movies of

1980‘s i.e ‗Lawaris‘, the song‘s title was ‗Apni to Jaise Taise‘ was a very hit song and this song was re-recorded and picturised in the movie ‗Housefull‘

85 Facts of the case are as follows-

Three suits were filed in respect of the re-recording and picturisation of a song which was composed by ‗Anand ji‘ a renowned music composer of Bollywood. the issue came up in respect of the authorship rights and the terms of the agreements which were entered into in the years 1981 and 2010.In the first suit,Mr Anandji of the famous duo ‗Anand –Kalyan Ji‘ raised issue as to his ‗authorship rights‘ in the song and further seeked for perpetual injunction as relief thereby restraining M/S Nadiawala Grandson Entertainment Ltd from reproducing the musical work,the contention was that since the composer being the ‗author‘ of the musical composition ,is regarded as the exclusive owner of the copyright and thus,also has the exclusive right to exploit the same .The contention however on the part of the claimants was that the music rights were merged in the movie and do not stand independent,but to this the plaintiff‘s arguement was that the rights were restricted to that movie itself and were not extended to any other film.

Provisions of copyright relating to ‗authorship‘ were also cited such as section 57 of the Copyright Act 1957 talks about ‗special rights‘ of the Author which further corroborated with the assertion of the plaintiff and it was also contended that as there

No contract of employment also the rights were existent for the ‗sound recording‘ and not for other ‗musical works‘ so technically no rights were prevailing with the defendants.

In the second suit147 however the contention was raised by the heirs of the song-write Mr. Prakash Mehra that the author‘s special rights are affectd by such reproduction ,also a decree of perpetual injunction was granted to restrain Nadiawala from reproducing the literary or any of the musical work embodied in the song,such reproduction

147 Puneet Prakash Mehra nd Ors v Nadiawala Grandson C.S No. 112 of 2010 Cal.

86 was alleged to cause distortion and mutilation to the original work of the author and thereby resulting into the infringement of copyright of the author.

In the third suit which was filed by the ‗Saregama‘148,in this suit injunction was sought by the plaintiff company from restraining the defendant and other parties as to their claim on the rights so alleged i.e ownership on the disputed song.As the agreement was entered into in the year 1981 ,and at that time the assignment of copyright for making of records of all contract works,title and interest in the literary,musical and dramatic works,performing ,neighbouring rights was made and in pursuance of that only they executed an agreement in the year 2010 and along with this it was also asserted that the company possessed an exclusive right to adapt such works.

In response it was contended by Prakash Mehra that the agreement of the year 1981 ,had assigned only the rights related to sound recordings,however the copyright registration for it was acquired in the year 2000 only and so, the plaintiff company did not possess the rights to exploit the aforementioned rights in the movie ‗Housefull‘ in such scenario.

In the case of Anandji v Nadiawala Grandsons,the court held that as the composers were paid valuable consideration for the work so they were not entitled for the same. In the second suit the court looked into the term i.e ‘other rights‘ of the agreement,the court further held that the right available to ‗Saregama‘ was literary,musical and dramatic works and this right did not extend to any other film so,in this case an injunction was granted disallowing the use of the song by the ‗Nadiawala Grandson Company‘.

148 Saregama India Ltd v Puneet Prakash Mehra and Ors. C.S No. 101 of 2010 Cal.

87 Also, in the case of Saregama India td v Puneet Prakash Mehra149 it was held that -

–―As the agreement was tri-partite and the right as to re-record the same song existed in the song but that was only for the same movie and not to be used in the other movie and so, in this condition the assumption that such right extended to other movie is baseless and would also be totally against the very terms agreed between the parties.

In one another very famous assignment related dispute case of the movie‘Khosla Ka

Ghosla‘,here many important issues were raised as to arbitration and copyright, though due to an interim application made under s.8So importance was seen to be given to the various copyright aspects such as ‗assignment of copyright‘ along with reference being made to arbitration.

Facts of the case are as follows-

The plaintiff were the producers of the hit movie ‗Khosla Ka Ghosla‘ who worked together in collaboration together and held all the intellectual property rights of the movie.Now they entered into an agreement of licensing the exclusive rights of the musical works and accompanying lyrics along with the sound recordings embodied in the sound track to a company called ‗Living Media‘ ,which is one of the defendants for a period of 5 years, executed as agreement 1.

Further ,the plaintiff/producer entered into one another agreement of ‗Licence to exclusive rights wherein they excluded music rights in the film to

‗UTV‘ for a period of 15 years, executed as agreement 2,after the movie became a blockbuster hit ,UTV entered into a Tamil remake of the movie, titled ―Poi Solla Porom‖., but this was objected by the plaintiff/producer as they contended that this was the infringement of the music of their film, also they claimed for the infringement of the

149 Supranote 126

88 copyright in the literature and dramatic works alongwith the infringement of the special rights of the author of the film ‗Khosla Ka Ghosla‘.The case was reffered for arbitration by

J.Murlidhar.

The decision however failed to acknowledge few of the potential legal questions such as-

1-Whether ‗moral rights‘ available to first owner as against the author.

2-Do ‗musical rights; and ‗dramatic works‘ have independent subsistence in the underlying cinematograph film, and is there any difference ?

The decision was sketchy in different areas as Murlidhar J. Reffered the matter for arbitration as the arbitration clause were present and the matters stands pending for arbitration.

INJUNCTIONS FOR „LICENSING INFRINGEMENTS‟ -

Recently the ‗super cassettes ‗ Industries Ltd, popularly known as T-series created a turmoil in the market by cancelling the broadcasting license given to the radio stations ‘92.7 BIG

FM‘ and ‗RADIO MANTRA‘, since the termination took place in purview of the ‗royalty issues‘ which was the bone of contention for quite a long time between the parties and the

Hon‘ble Delhi Court and the Copyright Board is looking into the issue. Entertainment

Network Ltd. Vs Super cassettes Industries Ltd.150, it was held by the Hon‘ble Supreme Court

―It is not necessary that an injunction may be prima-facie granted in case of infringement ,it was further held while considering the general principle for the grant of injunctions that an owner may exercise to exploit his proprietary right by licensing but in some situations he may not, he is also at the liberty to charge whatever amount he wants to but this is not the situation

150 Entertainment Network Ltd. Vs Supercassettes Industries Ltd AIR 2008 5114

89 in India, this in a way answered the question that the courts have the independence to exercise ‗discretionary jurisdiction‘ even in such cases. The plaintiff sought injunction on the practice of unreasonable royalty, was ready for grant of license provided it is on reasonable amount, the court directed‘ Supercassettes‘ to grant compulsory license and directed copyright board to settle the issue in light of the order, as preliminary injunction was already granted and it felt no use of granting perpetual injunction.

Injunctions as a remedy do hold special importance specially in such cases where the need of the hour is to restrain the ‗infringing act‘ immediately ,however damages also hold no lesser importance but the reason for preference for injunctions lies in the fact that they outrightly restrain the infringing act ,its a different issue that both of the remedies can co-exist so,t here is no actual need to create demarcation between the two. We shall analyse following cases to draw conclusions as to while dispensing justice Hon‘ble Courts have preferred which approach and what remedy.

SUPREME COURT‟S RULING ON PRELIMINARY INJUNCTIONS IN IP

LAWSUITS-

The Hon‘ble Supreme Court of India off late came up with a ruling which will no doubt help copyright,trademark and other I.P rights holders in obtaining speedy injunctions against the so called ‗alleged infringers‘.The Court in case of Midas Hygiene Industries Vs Sudhir

Bhatia151 . held that ―Delay in filing legal action does not necessarily warrant the denial of injunction and so an interim injunction was granted at the initial hearing but thereafter on appeal it was thrown out ,finally Hon‘ble Supreme Court has reinstated it and held that any delay in filing does not warrant any denial of injunction also it advocated for issuance for

151 2004 (73) DRJ 647, 2004 (28) PTC 121 SC, 2004 (2) SCALE 231, (2004) 3 SCC 90

90 injunction ,if ‗infringement ‗ is apparent on the face‖.152In this case , the court‘s approach was to expediate the remedy of ‗injunction‘ where it should be granted and infringement is apparent on the face of record .So, here the importance is given to immediate issuance of the remedy asked and it doesn‘t matter that what shall be the best relief/remedy ,which can be given ,what is important is that ‗If really infringement had occurred‘?

3.10 INJUNCTIONS IN CASE OF „FAIR-USE „ AS A DEFENCE

The very objective of copyright law is to encourage novel kinds of expressions, while seeing the standards of novelty ,few other things are to be considered such as-

1-No one should be able to monopolize an idea simpliciter and this give rise to discussion on the very famous ‗idea-expression‘ dichotomy debate .153Also legitimate use of any work should not be hampered and thus, the large public interest has to be kept in mind too.

Section 52 of the Indian copyright act provides provisions of ‗fair-use‘ where if the use of the copyright protected work is such that it amounts to a private or personal use which is inclusive of research or is for reporting of current events ,current affairs including public lectures or criticism or review of such work,then such of these acts will not amount to infringement. If the copyright law allowed to over exceed the legitimate protection,it will undoubtedly result in the suffocation of public interest ,hence this section acts as a balancing measure.Apart from the provisions as laid down in section 52 of the act, there are some genuine cases which though do not fall under section 52 but not of the cases of infringement either. It was in the case of The University of

Oxford v Narendra Pubishing House154,in this case the plaintiff was the publisher of various text books used by school ,it started publishing question bank based on the book which was

152 2004 (73) DRJ 647, 2004 (28) PTC 121 SC, 2004 (2) SCALE 231, (2004) 3 SCC 90 153 From Ananth Padmanabhan ―Principles of Intellectual Property ,Infringement and remedie‖p.330 154 2008(38)PTC 385

91 authored by Dr A.K Roy, now as the defendants came out with some guidebooks where the questions as provided by the plaintiff were solved by ‗step by step‘ solution, now there were two very broad issues which were to be decided at the stage of grant of ‗interim injunctions‘ and they were-

1-If the plaintiff was entitled to copyright protection over his own work, which is a ‗question bank‘?

2-Whether the defendant‘s work was exempted from infringement under the ‗fair use doctrine‘?155

Now, as the copyright protection extends to any original, literary and dramatic work so question banks are covered within this protection where they are piece of original work and as regard to the second question, the Delhi High Court referred to the decision of the United

States Supreme Court in Campbell v. Accuff-Rose Music156,following factors were considered in this case-

1-What is the purpose and character of such use?

2-What is the nature of the copyrighted work.?

3-What is the amount of portion used of the copyrighted work as a whole ,if it is substantial then how much substantial?

4-What effect will it cause on the potential market for or value of the copyrighted work.157

All these factors are to be considered together and not in isolation. Coming to Indian law at this matter it is important to point the observation of

155 From Ananth Padmanabhan ―Intellectual Property Laws –Infringement and Remedies‖p.331-333 156 Campbell v. Accuff-Rose Music 510 US 569(1994) 157 Supra note 136

92 Supreme Court in R.G Anand v Delux Films158,the court dealt with the issue of infringement as well as of fair dealing, the surest test it was held was to see whether the reader, spectator, viewer after having read or seen both the works, was clearly of the opinion and gets an unmistakable impression that the subsequent work was the copy of the original, the court also held that since section 52 of the Act only detailed the broad heads, use under which will not amount to an infringement ,in such condition resort must be made to the principles laid down by the courts to identify what is ‗fair use‘ in each case.

Also ,in ESPN Star Sports v Global Broadcast News Ltd.159,In this case the question arose that whether some clippings taken from a cinematograph film qualifies for infringement or unfair dealing it was held that ―fair dealing was purely a question of fact which could of necessity be decided only on a case basis, there is no such universal standard of uniform application and this has to be decided case to case basis. And this defence was not sustainable in this case.160

Further, in Super cassette Industries Ltd. V Hamar Television

Network Pvt. Ltd.161in this case principles of ‗fair-use exception‘ were summarised after taking review of several judgements of U.S and U.K courts, following principles were enumerated-

1-What is ‗fair use or fair dealing‘ cannot be exactly defined.

2-It is nothing but a question of impression, of degree and the manner in which it is carried out.

3-While examining this defence of fair dealing ,the length and the extent of the copyrighted work which is made use of is important

4-The motive of the user also pays an important role in deciding such cases.

158 R.G Anand v Delux Films (1978)4SCC 118 159 ESPN Star Sports v Global Broadcast News Ltd 2008(38) PTC 477 160 From Ananth Padmanabhan ―Intellectual Property Laws –Infringement and Remedies‖p.336-37 161 Super cassette Industries Ltd. V Hamar Television Network Pvt. Ltd 2011(45)PTC 70(Del)

93 However, the defence of ‗fair-dealing‘ was rejected in this case. Lastly, In Super

Cassettes Industries v Chintamani Rao162It was finally held in this case that ‗fair-use‘ defence under section 52(1)(a) would only apply to a literary ,musical, dramatic or artistic work and not to a cinematograph film or sound recording as such works involve much higher financial investment ,so differential treatment is very much required for such cases. However, this observation have now been negated by the amendment to section 52(1)(a) as introduced by the Copyright Amendment Act ,2012.163

JOHN DOE CHRONICLES-

For issuance of John Doe order under the Indian law, there should be an actionable wrong previously committed or done and only the identity of the wrong doer would be undetermined. Under the provisions of the CPC, the suit can be instituted against the identified and named defendants and that the present suit is ex-facie not maintainable. 164

The media business has been enforcing such ‗John Doe‘ orders to curb uncontrolled piracy rampant in the trade. Production houses of a range of Bollywood films like

―Singham,‖ ―Bodyguard,‖ ―Don 2‖ and ―Speedy Singhs‖ have been triumphant in obtaining ex-parte injunctions for their copyright in opposition to anonymous Defendants, which has cut piracy levels by up to 40%.

One of the most recent John Doe orders, in which the decision is still pending, is

Idream Production v. Hathway Cable & Data & Another, contested before the Bombay High

Court, wherein the Plaintiff filed a suit against Hathway Cable & Data and other unknown

Defendant to pin them down from broadcasting the movie ―Fire,‖ which has been banned in

India.

162 2012(49)PTC 1(Del). 163 See Ananth Padmanabhan ―Intellectual Property Laws –Infringement and Remedies‖p.340-41 164 C.S.No.208 Of 2012 Was Filed By ... vs Unknown on 30 October, 2012

94 CONCLUSION

Also, the approach of courts in ‗idea- expression‘ disputes is more reasonable , though the courts generally resort to the ‗principles‘ as laid down in ‗R.G Anand case‘ .The courts generally resort to consider the ‗4 factor test‘ though not expressly mentioning it but the factors thus, laid are made part of the judgements.

165 See Supra note 106 166 In Super Cassettes Industries v Chintamani Rao 2012(49)PTC 1 (DeL)

95 CHAPTER-4

INJUNCTIONS OR DAMAGES?

4.1 INJUNCTION IS CENTRAL TO PROPERTY RULE

The right to exclude has for long been considered a central component of property. In focusing on the element of exclusion, courts and scholars have paid little attention to what it means for an owner to have a ‗ right to exclude‘ and the forms in which this right might manifest itself in actual property practice. For some time now, the right to exclude has come to be understood as nothing but an entitlement to injunctive relief that whenever an owner successfully establishes title and an interference with the same, an injunction will automatically follow.167

167 See Shyamkrishna Balganesh‖ Demystifying the Right to Exclude: Of Property, Inviolability, and Automatic Injunctions‖ 31 HARV. J.L. & PUB. POL‗Y ( 2008)

96 THEORY OF PROPERTY AND THE RIGHT TO EXCLUDE

―The notion of property consists in the right to exclude others from interference with the more or less free doing with it as one wills‖. Justice Holmes in White-Smith Publishing Co. v. Apollo Co. (1908)168

―The power to exclude has traditionally been considered one of the most treasured strands in an owner‗s bundle of property rights‖, as held by Justice Marshal in Loretto v.

Teleprompter Manhattan CATV Corp169 . But the trend is seen to have changed post ‗e-bay case‘170-

―The creation of a right [to exclude] is distinct from the provision of remedies for violations of that right.‖Justice Thomas in eBay, Inc. v. MercExchange, LLC (2006).

Blackstone defined property as ―sole and despotic dominion of exercise over external things in the total exclusion of the right of any other.171He is clearly seen to be

168 White-Smith Publishing Co. v. Apollo Co. (1908). 2ELR 342 169 . Loretto v. Teleprompter Manhattan CATV Corp (1982) 2E.LLR 170 eBay, Inc. v. MercExchange (2006)547 U.S 388 171 2 WILLIAM BLACKSTONE, COMMENTARIES *2 (emphasis supplied). For elaborations on Blackstone‗s definition see Carol Rose, Canons of Property Talk, Or, Blackstone‗s Anxiety, 108 YALE L.J. 601 (1998); Robert P. Burns, Blackstone‗s Theory of the ―Absolute‖ Rights of Property, See also, Merrill, note 6, at 754 (―Property means the right to exclude others from valuable resources, no more and no less.‖). Others have argued equally persuasively that the right to exclude is an ―essential but insufficient‖ component of what property means. See Mossoff, supra note __. I bracket this question here and focus on disaggregating the idea. One of the earliest known expositions on the nature of rights in the English-speaking world was that of Jeremy Bentham. See H.L.A. Hart, Bentham on Legal Rights, in Oxford essays on jurisprudence: second series 171 (a.w.b.

97 purporting that there should be strong deterrence in case one infringes with one‘s right to his property, but this concept of ‗excluding all others‘ has become a debatable issue for quite a long time, no doubt there are huge judgements, scholarly articles advocating for the same as this right to exclude others remains same for tangible and intangible property with no difference but the approach of U.S court in ‗e-bay case ‗ speaks a different line of thinking getting generated wherein my right to exclusion of other‘s has to be considered in the light of the right of others and as held in this case that ‗injunctive relief‘ is not automatic in case of infringement does highlight this diversion from the traditional approach.172

C ,this right is inclusive or say bundle of various privileges, one such being to have an ownership and to exclude other‘s where there is any disturbance in the ownership ,so the judgement given by the U.S Supreme court in ‗e-bay case‘173holds no good for those advocating the importance of ‗rights‘ and the privileges associated with it as the judgement in the crux means to ―take the money and forget about one‘s right and a clear direction to the violator to again and violate the patent(right).

Simpson ed. 1973). For a history of the development of rights see Alan M. Dershowitz, Rights from wrongs: a secular theory of the origin of rights (2004). see also Carl Wellman, ―The proliferation of rights: moral progress or empty rhetoric ―(1999). 172 See Shyamkrishna Balganesh ―Demystifying the Right to exclude: of property,inviolability and automatic injunctions‖ 31 HARV. J.L. & PUB. POL‗Y ( 2008) 173 Supra

98 PROPERTY AND LIABILITY RULES-

One of the most famous distinctions in contemporary legal theory was made popular by

Guido Calabresi & A. Douglas Melamed s famous article, Property Rules, Liability Rules, and Inalienability: One View of the Cathedral. The core idea is simple. Legal rules that create private causes of actions (or claims for relief) can be sorted into two kinds. Kind one consists of rules that entitle the claimant to an injunction. Kind two consists of rules that entitle the claimant to damages. The first kind of rule is associated with property rights-- hence, we can call the first kind "property rules." The second kind of rule is associated with tort liability or contractual liability--hence, we can call the second kind "liability rules. The distinction between property rules and liability rules is important, because injunctions and damages have different effects on future behaviour and on negotiated settlements to claims.174

An entitlement is protected by a property rule to the extent that someone who wishes to remove the entitlement from its holder must buy it from him in a voluntary transaction in which the value of the entitlement is agreed upon by the seller. It is the form of entitlement which gives rise to the least amount of state intervention: once the original entitlement is decided upon, the state does not try to decide its value. It lets each of the parties say how much the entitlement is worth to him, and gives the seller a veto if the buyer does not offer enough. Property rules involve a collective decision as to who is to be given an initial entitlement but not as to the value of the entitlement.

174 See Ian Ayres & J.M. Balkin, Legal Entitlements as Auctions: Property Rules, Liability Rules, and Beyond, 106 Yale L.J. 703 (1996),Guido Calabresi, The Cost of Accidents: A Legal and Economic Analysis (Yale University Press, 1970). Guido Calabresi & A. Douglas Melamed, Property Rules, Liability Rules, and Inalienability: One View of the Cathedral, 85 Harv. L. Rev. 1089 (1972). Louis Kaplow & Steven Shavell, Property Rules versus Liability Rules: An Economic Analysis, 109 Harv. L. Rev. 713 (1996)

99 Whenever someone may destroy the initial entitlement if he is willing to pay an objectively determined value for it, an entitlement is protected by a liability rule. This value may be what it is thought the original holder of the entitlement would have sold it for. But the holder's complaint that he would have demanded more will not avail him once the objectively determined value is set. Obviously, liability rules involve an additional stage of state intervention: not only are entitlements protected, but their transfer or destruction is allowed on the basis of a value determined by some organ of the state rather than by the parties themselves. An entitlement is inalienable to the extent that its transfer is not permitted between a willing buyer and a willing seller. The state intervenes not only to determine who is initially entitled and to determine the compensation that must be paid if the entitlement is taken or destroyed, but also to forbid its sale under some or all circumstances. Inalienability rules are thus quite different from property and liability rules. Unlike those rules, rules of inalienability not only "protect" the entitlement; they may also be viewed as limiting or regulating the grant of the entitlement itself.175

There is a lot packed into this short package. First, we get the basic distinction between enforcement by injunction and enforcement by liability for damages. Second, we get the distinction between rights that are alienable and those which cannot be bought and sold and hence are "inalienable." Third, we get an argument that alienable rights that can be enforced by injunctions require less state intervention than do inalienable rights that are only enforceable by damage awards. These three ideas were the conceptual core of Calabresi and

Melamed's distinction between property rules and liability rules.176

Even if you have never encountered the distinction between property rules and liability rules before, you probably have already thought to yourself that the world is not quite as black and

175 See Guido Calabresi & A. Douglas Melamed, Property Rules, Liability Rules, and Inalienability: One View of the Cathedral, 85 Harv. L. Rev. 1089 (1972). 176 Supra

100 white as the distinction implies. The same underlying "primary right"--such as the right to security of property--may be enforced by both injunction and damages and involve both alienable and inalienable aspects. That is, there are "mixed rules" as Calabresi and Melamed themselves noted:

It should be clear that most entitlements to most goods are mixed. Taney's house may be protected by a property rule in situations where Marshall wishes to purchase it, by a liability rule where the government decides to take it by eminent domain, and by a rule of inalienability in situations where Taney is drunk or incompetent.

Why should the law choose property rules for some situations and liability rules for others? That's a very large and complex question. Here are some of considerations that bear on an answer--recognizing that these are only starting points:

The Possibility of Bargaining--It might be argued that property rules are better suited to situations where the parties can bargain over the transfer of rights. So the possessory interest in real estate or chattels might be protected by property rights, because the transfer of possession is something over which the parties can bargain. An injunction against involuntary transfer forces the parties to agree on terms for a voluntary transfer. On the other hand, it might be argued that liability rules are better suited to situations in which bargaining is impossible (or to be more precise, very costly). For example, it would be difficult to bargain over an automobile accident--the parties may be strangers, the accident is unanticipated, and so forth. In that situation, a damage award rather than an injunction seems like the only feasible mechanism for protecting the right.177

177 See Louis Kaplow & Steven Shavell, Property Rules versus Liability Rules: An Economic Analysis, 109 Harv. L. Rev. 713 (1996)

101 Existence or Measurement of Damages--Sometimes it is very difficult to measure damages.

For example, in copyright law, it may be difficult to prove that my copying of portions of you book had the consequence of hurting your sales. (It's possible my copying even helped your sales.) When damages either don't exist or can't be measured, then liability rules may be ineffective. But if the copyright holder--to continue the example--has the right to an injunction, this will force the infringer to pay for the right to continue the infringing activity.

Administrative Costs--Liability rules require the system to measure damages and that may be costly. Evidence on the extent of damages must be gathered, processed, and evaluated by a finder of fact. Property rules do not involve these costs. 178

4.2 IN WHAT SITUATIONS COURT WILL AND SHALL NOT GRANT

„INJUNCTIONS‟

Courts generally refrain from granting injunctions in cases where an alternative remedy such as damages etc.179 Can suffice also, in situations where there is delay, laches in approaching the court, the courts however do not out rightly reject the claims for injunctions where there is delay but then in such situations they want a proper and reasonable explanation for the same.180The decision in Silicon Graphics Inc v Indigo Systems(UK)181in this case it was clearly illustrated how delay by the plaintiffs in filing for injunction can lead to the balance of convenience tilting in favour of the defendants. Also, there should be a strong ground of causal of irrecoverable harm and injury ,where the plaintiff fails to prove the same, no injunction can be granted and courts generally do away with awarding damages.182

178 See See Ian Ayres & J.M. Balkin, Legal Entitlements as Auctions: Property Rules, Liability Rules, and Beyond. 179 As held in Law Society of England and Wales v Society of Lawyers(1996) FSR 739 180 Supra 181 Silicon Graphics Inc v Indigo Systems(UK)(1991)FSR 739 182 E-bay Inc v Merc exchange 547 U.S. 388 (2006)

102 Apart from this the courts while granting injunctions analyse the factor of ‗balance of convenience‘ at the interim stage as it being a status quo factor, it was articulated in the ‗American Cynamid case‘183so, where there is a prima-facie case of infringement ,injunction will be granted and where the plaintiff fails to prove so, it will not be granted. If we talk copyright infringement cases of entertainment industry in particular such as those cases related to infringement of cinematographic work comprising ‗idea –expression disputes‘ of the famous R.G Anand v Delux Films Ltd. it can be inferred that generally injunctions are not denied where they make a prima-facie case of infringement.

Also, in cases where a performer‘s right is infringed ,court‘s have to tackle many complex question as the controversy as to ownership of performer‘s work embodied in the movie is with the producer but S.38 of the Act provides that a performer has an exclusive right in his performance which itself is a bundle of rights and as the situation arises ,giving rise to controversy as originated in ENL case184,the court‘s refrain from granting injunctions .The other situations comprise of infringement related cases where

‗compulsory license‘ of the copyrighted work is sought and the copyright owner alleges infringement and claims high or unreasonable amount of royalty fees, in this situation the court denies injunction on preliminary stage as courts in India also resort to the traditional

‗four-factor test‘ where needed.

185The strategy thus, adopted differs for different cases and injunction though being discretionary remedy but as given place in IPR statues is now no lesser than any statutory remedy. But in cases where there are frivolous litigations for injunction before a day prior to release of a movie ,in such cases as the suits are tool for

183 American Cynamide Co v Ethicon Ltd.(1975)1 ALL ER 504 184 Infra note 165 185 See Entertainment Network Ltd. Vs Super cassettes Industries Ltd AIR 2008 5114

103 extracting best bargain so, injunctions should be avoided in such cases .The strategy however adopted by courts in such cases are not satisfactory as they go by the traditional line of thinking that ‗ where there is a prima- facie case of infringement, injunctions should be granted ,so e-bay judgement which has been criticised from all corners ,throws light on some positive aspects also as to where there is proof of ownership of the right and infringement ,its not necessary that an automatic injunction will follow. So, this view should be seen in a broader perspective as it seems fit to be applied in cases of frivolous litigations prior to a day or two release of the movies in entertainment industry of India.

4.3 DAMAGES-IF MORE APPROPRIATE REMEDY?

Damages as an award, typically of money, are paid to a person as compensation for loss or injury. The rules for damages can and frequently do vary based on the type of claim which is presented and the jurisdiction. Common law, damages are categorized into compensatory

(or actual) damages and punitive damages. Compensatory damages are further categorized into special damages, which are economic losses such as loss of earnings, property damage and medical expenses, and general damages, which are noneconomic damages such as pain and suffering and emotional distress.

The point of discussing damages here is that in many intellectual property rights cases of copyright and patent infringement particularly, they are granted in those situations where injunctions are either not possible or damages suffice as a remedy. We have observed in all of the cases discussed in the previous chapters that damages are no lesser important as a remedy and countless authorities characterise the object of damages as restitution in integrum i.e the reparation of loss resulting from the breach of

104 obligation.186So, it can be observed that the role of damages comes into play only when injunction as a relief is not claimed i.e in cases where infringement has already occurred and stopped ,or where injunction will not suffice as a remedy.187So, the question of appropriateness varies from situation to situation ,in some cases where damages will suffice and the infringement has occurred in past ,courts provide damages in the other situations preference is given to ‗injunctions‘ as granting injunctions re-enshrines the central idea of right to ownership188 which is the result of an individual‘s hard work and resources and he has the basic right to exclude others in case of infringement of such right.189

CONCLUSION

The nature of injunctive relief is to restrict the infringer or the one causing breach of such right is out rightly restricted to cause such infringement and the approach of courts in granting it have been to consider that whether it makes a prima –facie case i.e is there likelihood of the plaintiff to prove his evidences and if such deterrence is issued in his favour

,then is there any possibility that it will affect any right of the defendant ,also if damages or any other remedy more suitable to be issued and lastly if there any ‗ public interest‘ affected.

So, the nature of the remedy is being ‗restrictive‘ ,is to be considered together with other factors as discussed in the previous chapters.

186 Prof A Tettenbon ―Law of Damages‖2007 p. 1.33 187 See R.G Anand v Delux Films (1978) 4SCC 118 188 See Daniel A. Crane ―The Ongoing Confusion Over Ongoing Royalties‖ Tex. L. Rev. 253, 256‐57 (2009) 189 See Shyamkrishna Balganesh ―Demystifying the Right to exclude: of property, inviolability and automatic injunctions‖ 31 HARV. J.L. & PUB. POL‗Y ( 2008)

105 addition of any required principle as observed in the IPRS case190,Supreme Court adopted a very unfortunate view and rights of performers of IPRS were seen to be defeated due to inconsistency found between the provisions of section 13(4) and s. 14(1)(a)(iii) along with s.14(1)(c)(ii) and we have divergent views of various High Courts on this issue but there is a need to address this issue as in the absence of this, there is uncertainty as to granting injunctions in alike situation, the approach of courts in ‗idea-expression‘ disputes is more reasonable , though the courts generally resort to the ‗principles‘ as laid down in ‗R.D Anand case‘ .The courts generally resort to consider the ‗4 factor test‘ though not expressly mentioning it but the factors thus, laid are made part of the judgements.

And in matters pertaining to ‗assignment and licensing‘ infringements ,court adopt a more lenient view as often there is controversy as to the amount of royalty fees which becomes a issue of parties inter se and so, courts refrain from issuing preliminary injunctions unless it makes a prima-facie case of infringement. Lastly ,in matters of copyright infringements of ‗cinematographic work‘, where ‗fair-use defence‘ is taken courts generally don‘t mingle it with other kinds of copyright infringements and a prima-facie injunctions are granted as the work has a very different nature from other kinds of work ,so this defence has not been of much success in such cases.191 Where litigations are cropped a day prior to release of a film, ‗injunctive relief‘ asked for which is generally ‗temporary injunction‘ is a strategy to get a hefty amount in settlement ,which is the first thing which the film-makers will be ready and thus, it is seen that there is a blatant abuse of this relief.

Prior to the TRIPS Agreement there was no such concrete mechanism infact there was a total absence of any such enforcement provision of intellectual property rights due to which there was frequent violations of IP rights and the IP rights

190 See Supra note 106 191 In Super Cassettes Industries v Chintamani Rao 2012(49)PTC 1 (DeL)

106 owners had to struggle a lot in order to get it enforced as different country had different enforcement norms which gave rise to huge ambiguity , ‗injunctions‘ as an enforcement remedy were recognized at par with other remedies and in some countries they were not

.Member states however exercise discretion in granting the kind of injunctions but as injunctions being recognised as an enforcement remedy under Article 44 so, the member states are required to desist from the infringement, as the language of the provision says and also to prevent the entry of such goods into the channel of commerce of their jurisdiction, and where the remedy of ‗injunction‘ is not possible ,a clear direction for grant of damages is provided.192 damages here is that in many intellectual property rights cases of copyright and patent infringement particularly, they are granted in those situations where injunctions are either not possible or damages suffice as a remedy. We have observed in all of the cases discussed in the previous chapters that damages are no lesser important as a remedy and countless authorities characterise the object of damages as restitution in integrum i.e the reparation of loss resulting from the breach of obligation.193So, it can be observed that the role of damages comes into play only when injunction as a relief is not claimed i.e in cases where infringement has already occurred and stopped ,or where injunction will not suffice as a remedy.194So, the question of appropriateness varies from situation to situation ,in some cases where damages will suffice and the infringement has occurred in past ,courts provide damages in the other situations preference is given to ‗injunctions‘ as granting injunctions re- enshrines the central idea of right to ownership ,this right being bundled with several others, important among them being the right to exclude others from one‘s property. So, in a prima – facie case of infringement where injunction is possible and is claimed ,the Courts whether in

India or in U.K and U.S prefer issuing ‗injunctions‘.

192 See Article 44,45 of ‗TRIPS‘ as signed in 1994 193 Prof A Tettenbon ―Law of Damages‖2007 p. 1.33 194 See R.G Anand v Delux Films (1978) 4SCC 118

107 And as regard to question that if there is any difference in judgements of the foreign courts(U.S and U.K) in considering the ‗four –factor ‗ test it can be observed from the first portion of the chapter in which a detailed analysis of the judgements of the U.S and U.K courts have been done that the whether the courts stick to the traditional four factor test or there is variance in deciding copyright infringements and granting injunctions, it can be concluded from the various case –discussions that there is generally no difference in granting the same .195However in U.S, the factors to be satisfied for grant of preliminary injunction i.e an injunction pending litigation are not substantially different from those in the United Kingdom, though U.S has more settlement oriented legal system, the grant or refusal of an injunction weighs heavily in settlement discourse and due to this reason courts have recognized it to be an ‗extra ordinary remedy‘.196

Lastly, the approach of U.S and U.K courts post ‗American cynamid case and canye case controversy and reconciliation‘197appears to be same and Indian courts have also resorted to the similar approach though the ‗traditional four-factor‘ test is acknowledged in the intellectual property cases in India too, the factors are considered though there can be difference in ‗the exact words and phrases‘ used in the test. Prior to ‗Supercassette case‘198,the term ‗public interest‘ was not very favourite among the Indian Judiciary in copyright infringement cases as they were considered to be issues ‗parties inter se‘ but J.

Sinha gets all credit for acknowledging its importance and re-enshrining it into copyright infringement issues.

195 See Von Lewinski ―International Copyright Law and Policy‖2010,p 386-87

196 See Schwinn Bicycle Co. v Ross Bicycles ,Inc. 870 F.2d1176 197 American Cynamide Co v Ethicon Ltd.(1975)1 ALL ER 504 198 See Supra note 165

108 SUGGESTIONS FOR BETTER ENFORCEMENT OF „INJUNCTIONS‟-AN

EXTRAORDINARY RELIEF-

Copyright is a negative right as it restrains the other person than the owner to reproduce the work and or monetize it ,its origin is not new as it was present in the olden times too though not structured or codified .Almost more than half of the global fraternity is acknowledging its importance and have made it part of their municipal laws but the problems which are to be tackled are also as serious as its importance .

The famous „ R.G Anand v Delux Films case ‗-

The judgement given in R.G Anand v Delux Films case199 where principles were laid down as to idea-expression disputes was landmark in way and is seen as an authority in deciding such cases but it‘s failure to incorporate the principles of ‗merger doctrine‘, explanation of the doctrine of ‗scene a faire‘ and its application in Indian scenario was something which our

Indian Judiciary missed .So, there is scope of adding and concretising this principles as part of the dictum or at least have an authority in this regard.

Also, the concept of ‗public interest‘ is very extensively talked about in foreign authorities but not generally in copyright infringement cases as in the absence of any clear dictum ,it stand‘s ambiguous as to what shall be relied upon ,though the recent judgement given in ‗Super cassette industries case‘200has set new standards J.Sinha dealt with the importance of ‗public interest in copyright cases‘ and considered it to be an important factor to be watched upon. But still what number of population in any given geographical area shall be considered for considering this factor is something which needs to be concretised . The court also considered that though copyright is a negative right but while

199 (1978)4 SCC 118 200 AIR 2008 5114

109 granting ‗injunctions‘ a wide perspective of the issue has to be looked into and so, it‘s no wonder if the courts consider ‗public interest‘ as an important factor,in any issue relating to assignment and license violation, courts generally go for ‗ad-interim injunction‘ prima-facie

,however the situation can be complex as seen in the ‗super cassette case‘ that there are sometimes demand of unreasonable royalty fees by the copyright owner and it is where courts are suggested to opt for decoding the issue with the exercises of discretion and adoption of the traditional ‗four-factor test‘ and not just treating copyright infringement issues with lesser impact on public and just a commercial matter of two parties. So, we look up to our Indian

Courts to interpret in the best-possible way that what generally specifies ‗public interest‘ in such infringement cases and also resort to the interpretations laid down in ‗e-bay case‘ ,where required. Apart from this the problem is also where the artists/performer‘s are required to enter into contracts by back-dating it prior to the date of amendment, the purpose of amendment gets defeated in such scenario as in case of infringement they cannot resort to injunctions, courts are suggested to look beyond the curtain while deciding such issues as related to waiver of ‗performer‘s right‘.

Also a serious cause of concern is the number of frivolous litigations arising just a day or two prior to release of a movie thereby defeating the very purpose of ‗injunctions‘ as in majority of cases the litigant‘s after grant of preliminary injunction and thereafter best possible negotiation ,do not pursue the proceedings ,making it a tool to extract money thus, courts are suggested to stringent grant of injunctions in such cases and try to look into the colourable intentions of the litigants. Also while awarding copyright statutory damages courts shall consider awarding the reduced minimum damages authorized for ―innocent‖ infringements in close fair use cases or in other cases where the non-infringement claim was strong, even if ultimately not compelling.

110 -Also, Section 55 of the Indian Copyright Act which provides list of civil remedies provided in case of copyright infringement ,it leaves scope of huge ambiguity with the ‗proviso‘ that

―where the defendant in case of infringement was not aware and had no reasonable ground for believing that copyright subsisted in the work, the plaintiff shall not be entitled to any remedy other than ‗injunction‘ in respect of the infringement and a decree for the whole or part of the profits made by the defendant by the sale of the infringing copies as the court may in circumstances deem reasonable‖.201Thus, the proviso itself needs a proper explanation as to when and what situations does this ‗innocent infringement‘ occurs ,as this itself is a very debatable issue and courts have to come up with a set of principles deciding the same or we need to add such in the statute itself ,like the way in ‗Indian Penal Code of 1860‘.

201 S. 55 of the Indian Copyright Act 1957

111 BIBLIOGRAPHY

For reference following books, journals, statutes and websites have been referred to-

(A)PRIMARY SOURCES-

(a)STATUTES-

1-INDIAN COPYRIGHT ACT OF 1957

2-SPECIFIC RELIEF ACT OF 1963

3-CODE OF CIVIL PROCEDURE ,1900

4-CRIMINAL PROCEDURE CODE, 1973

5-THE CABLE TELEVISION NETWORKS(REGULATION) ACT,1995

6-INDIAN PENAL CODE ,1860

7-U.S COPYRIGHT ACT OF 1976

8-U.K COPYRIGHT ACT OF 1956

(b) BOOKS-

1- BASI.HARIQBAL 2010. "INDIANIZING HOLLYWOOD: THE DEBATE OVER

BOLLYWOOD'S COPYRIGHT INFRINGEMENT"

2- BEAN,DAVID PARRY ISABEL―INJUNCTIONS‖,2009SWEET AND

MASWELL,11TH ED.

3- BENTLY LIONEL ,JENNIFER DAVIS ET.AL ED.2010‖COPYRIGHT AND

PIRACY

4- BLAKENEY MICHAEL,2011, ―INTELLECTUAL PROPERTY

ENFORCEMENT‖OXFORD UNIVERSITY PRESS .

112 5- CORNISH W,R ―INTELLECTUAL PROPERTY LAW‖,2008,UNIVERSAL LAW

PUBLISHING CO. PVT LTD.

6- DAVIS ALPIN 2010―INTELLECTUAL PROPERTY LAWS‖ LEXISNEXIS

BUTTERWORTHS.

7- GOPALKRISHNANN.S AND AGITHA T.G ,2009―PRINCIPLES OF

INTELLECTUAL PROPERTY‖,EASTERN BOOK COMPANY,1ST ED.

8- HELFER LUERENCE ED.2010 ―INTELLECTUAL PROPERTY RIGHTS AND

HUMAN RIGHTS‖.

9- HIROKO YAMANE,2011 ―INTERPRETING TRIPS‖ .

10- IYENGAR,2008 ‗THE COPYRIGHT ACT 1957‘6ED .

11- KARKI M.M .S ,2009 ―-INTELLECTUAL PROPERTY RIGHTS‖ ,ATLANTIC

PUBLISHERS .

12- LEWINSKI VON ,2008―INTERNATIONAL COPYRIGHT AND POLICY‖

OXFORD UNIVERSITYPRESS .

13- MIRA T. SUNDRARAJAN,‖MORAL RIGHTS‖.2011,OXFORD UNIVERSITY

PRESS.

14- NARAYANAN P.S ―INTELLECTUAL PROPERTY LAW IN INDIA‖

2008GOGIA LAW AGENCY.

15- NARAYANAN P―INTELLECTUAL PROPERTY LAW‖,2007EASTERN LAW

HOUSE 3RD ED.

16- ORIO EDWARD ,2012―SPECIFIC PERFORMANCE AND

INJUNCTIONS‖,WOLTERS KLUWER.

17- PADMANABHAN ANANTH,2012 ―INTELLECTUAL PROPERTY RIGHTS-

INFRINGEMENT AND REMEDIES‖LEXIS NEXIS BUTTERWORTHS

113 18- PAL DR.PRANKKRISHNA,2008 ―INTELLECTUAL PROPERTY RIGHTS IN

INDIA‖ REGAL PUBLICATIONS

19- PALMER CHARLES A. DOUGHERTY F, JAY ,2012 ―ENTERTAINMENT LAW‖

20- RICHARDSON MEGAN AND THOMAS JULIAN,2012―FASHIONING

INTELLECTUAL PROPERTY‖ CAMBRIDGE UNIVERSITY PRESS .

21- SINGH DR. RAGHUBIR 2012 ―LAW RELATING TO INTELLECTUAL

PROPERTY‖ ,UNIVERSAL LAW PUBLISHING,2ND ED.

22- SIMENSKY MELVIN, D. SELZ THOMAS AND C. LIND ROBERT 2013,

―ENTERTAINMENT LAW‖.

23- TSHIMANGA KONGOLO ,2013―UNSETTLED INTERNATIONAL

INTELLECTUAL PROPERTY ISSUES‖KLUWER LAW INTERNATIONAL.

24- VERMA S.K AND MITTAL RAMAN,2004―INTELLECTUAL PROPERTY

RIGHTS‖,INDIAN LAW INSTITUTE PRESS.

25- VRINS OLIVER AND SCHNEIDER MARIUS ED.2006 ―ENFORCEMENT OF

INTELLECTUAL PROPERTY RIGHTS THROUGH BORDER

MEASURES‖OXFORD UNIVERSITY PRESS.

114 26- WESTKAMP GUIEDO ED.,2010,―EMERGING ISSUES IN INTELLECTUAL

PROPERTY‖.

27- VERMA S.K AND MITTAL RAMAN,2003,―INTELLECTUAL PROPERTY

RIGHTS‖,INDIAN LAW INSTITUTE PRESS.

(B)SECONDARY SOURCES-

(a) ARTICLES,JOURNALS AND MAGAZINES-

1- D.Archibugi and Filippetti, A. (2010) ‗The Globalisation of Intellectual Property Rights:

Four Learned Lessons and Four Theses‘, Global Policy, 1, 2, 137-149.

2- A. Crane ―The Ongoing Confusion Over Ongoing Royalties‖(2009) Tex. L. Rev. 253,

256‐57

3-I.E-Botov, (2004) ‗From the Paris Convention to the TRIPS Agreement: A One-Hundred- and-Twelve-Year Transitional Period for the Industrialized Countries‘, Journal of World

Intellectual Property, 7, 1, 115-130.

4-Carl Shapiro and Mark A. Lamley (2005) ―Probabilistic Patents‖ Journal of Economic

Perspectives—Volume 19, Number 2.

5- H.J Chang,. (2001) Intellectual Property Rights and Economic Development – Historical

Lessons and Emerging Issues. Third World Network: Penang.

6- P.Drahos (2002) ‗Developing Countries and International Intellectual Property Standard-

Setting‘, Journal of World Intellectual Property, 5, 5, 765-789.

115 7- Elizabeth F. Judge and Daniel Gervais (2009) ―Of Silos and Constellations: Comparing

Notions of Originality in Copyright Law",pages 75-98

8- Mark J. Feldstein (2009) ―Permanent Injunctons and Running Royalties in Post E.bay

World‖.Finnegan Publishing Journal.Sept 1st .

9- Shyamkrishna Balganesh ―Demystifying Property Law and Right to Exclusion and automatic Injunctions‖,31 Harv,J.L Pub Policy(2008)

(b) WEBSITES AND WEBSTORES-

1-www.bananaip.com

2-www.copyrightoffice.org

3-www.copyrightoffice.in

4-www.ebcwebstore.com

5-www.heinonline.com

6-www.jstor.com

7-www.lawisgreek.com

8-www.law.scu.edu

9-www.manupatra.com

10-www.practicallawyer.in

116 11-www.repository.law.indiana.edu

12-www.spicyip.com

13-ww.ucla.edu.com

117