The draft data empowerment and protection architecture was prepared by the NITI Aayog (the think-tank of the Government of India) in August 2020. The framework envisaged by the draft is ‘a secure consent-based data sharing framework to accelerate financial inclusion’. As per the draft, with the implementation of DEPA, India will be taking a historic step towards empowering individuals with control over their personal data, by operationalising an evolvable regulatory, institutional, and technology design for secure data sharing.

The Report firstly makes a case for the need of a suitable Data Empowerment and Protection Architecture in India. It builds from some statistics to emphasize how India has seen a radical shift towards a digital economy. These include:

·         The internet subscription base in India has grown from 200 million to over 687 million (which is an increase of 300%) in only a span of 5 years.

·         India has over 1.2 billion mobile subscribers.

·         Over 1.3 billion monetary transactions take place per month over UPI (Unified Payment Interface).

·         The number of registered businesses in India has grown from 6.5 million (in 2016) to 10 million (in 2020).

The Report states that with the vast amount of data being generated, there has recently been a global push towards data security and protection. The Report recognises that India has taken a step towards data protection through introduction of the Personal Data Protection Bill. It goes on to emphasize that with the digital transformation, the Indian population is increasingly becoming data rich and this data could be used for better access to services that could meaningfully improve people’s lives. Accordingly, a well-designed data governance framework would grant users control over data through a safe and seamless protocol to share data across institutions, leading to empowerment of the individuals.

The Report builds from this towards establishing a linkage between the objectives of strong data governance and financial inclusion. The architecture envisages that the next step in digital financial inclusion has to be towards access to formal financial products (such as insurance, saving instruments such as mutual funds, provident funds, access to capital markets, pensions and other investment opportunities) of the right size, at the right cost, and at the right points in an individual’s life.

As per the Report, India’s current data governance approach would not scale to achieve the envisaged outcome around financial well-being of the individuals. As the number of applications/systems holding our digital information keeps on increasing, the requirement to go to each data fiduciary to access/share data become a lengthy and tedious exercise. Further, when data is stored in different formats, the process of porting specific data to share with another service provider is not a standardised process, thereby compelling the individuals on a patchwork of workaround solutions to access data.

The Report envisages DEPA as a framework which will need to enable a non-uniform and scalable set of solutions for all to enable them to improve their financial well-being and at the same time ensuring that their right to privacy is not infringed.

The premise of this architecture seems to be a noble one viz. that the individuals will have the right to collect, share and access data pertaining to them in an accessible and easily understandable manner. It describes DEPA as a paradigm shift from the current organisation centric data sharing approach to an individual centric system. The DEPA seems to have been founded by some guiding principles including restoring agency and user control, informed consent, institutional and data controller accountability, accessibility and affordability, shared open infrastructure, incentive alignment, reciprocity, technology agnosticism & interoperability, data minimisation, enabling other data rights, evolvability, etc.

DEPA’s Institutional Architecture

Under this framework, a new class of institutions termed as ‘consent managers’ will be created which have economic incentives aligned with those of the users when it comes to the sharing of personal data. The interactions between an individual, a potential data user, and the data fiduciary (which will hold a user’s information) will be mediated through consent managers (who will be in the business of making sure individual data is not shared without user consent).

As per this model, the data principals (individuals or small businesses) are provided with seamless control over their personal data with a single view, even in the scenario when the data is created, stored, and processed by hundreds of different services. As regards data users, this model facilitates access to data and removes dependencies on specific data aggregators.

DEPA’s Technology Architecture

To enable a thriving data access fiduciary ecosystem, various digital public goods have been created:

1.  Electronic Consent Framework – A specification for a consent artefact managed by MeitY

2.  Data Sharing API Standards – To enable an encrypted flow of data between data providers and users

3.  Data Information Standard – For the sector-specific launch of DEPA

Electronic Consent Architecture as a Foundation of DEPA

As per the report, a shared specification to communicate consent is a critical foundation of the DEPA technology architecture. It has the following benefits:

1.  It provides a clear process for obtaining consent to share.

2.  It identifies why the data is being used in a particular context in standard form.

3.  It enables users to choose how long their data is shared for, specify consent for granular data elements and decide whether data can be shared further to third parties.

4.  It simplifies jargon on consent forms and allowing users to make meaningful comparisons between privacy policies of products.

APIs for Data Sharing

Institutions adopting DEPA APIs can provide data in a machine-readable format to all licensed consent managers. Resultantly, it would be possible to build a centralised dashboard where an individual may grant access and give or cancel permissions for multiple data sources and services. A standardised Consent Management architecture makes the accounts interoperable and allows individuals to easily switch operators.

DEPA for the Financial Sector

Account Aggregators (AAs) will act as Consent Managers for the financial sector, working with Financial Information Providers (FIPs) to share the data of an individual or small business with their consent to a Financial Information User (FIU). The Report further mentions that seven AAs have received in principle approval from RBI to begin operations and two have received operational licenses.

AAs are designed to be data blind viz. the data that flows through an AA is encrypted and can be processed only by the FIU intended by the user. Moreover, the AA regulations do not allow them to store user data, to minimise risk of data leaks and misuse.

To operationalise the AA framework quickly, market players have come together to create a new organisation to support the rollout of best practices for the AA ecosystem: a non-profit called ‘Sahamati’. Sahamati will educate new financial information providers, users, and potential AAs about the DEPA architecture, provide technical support for institutions to go live, design procedural guidelines and best practices to support the ecosystem.

Potential for Cash Flow Lending

Cash Flow Lending is a type of small ticket working capital loan which is not asset backed; instead, it provides credit based on the revenue generation and repayment capability. It creates a short and flexible tenure and repayment schedule based on incoming cash flows. It has not become a mainstream mode of credit, in part because trusted data about invoices that indicate a close-to-certain future cash flow is difficult to access. AA opens up access to many different types of data that could be shared to inform banks and NBFCs of cash flows and creditworthiness: GST data which is trusted information on turnover or future receivables, invoices on government procurement platforms such as GeM (Government eMarketplace), e-commerce invoices and transactions on private aggregators such as Flipkart or Amazon, or other kinds of digital sales records from trusted sources.

DEPA Implementation and Rollout

In the financial sector, the RBI has already taken major steps forward towards operationalising DEPA through adoption of the MeiTY Electronic Consent Framework and creation of a new entity – the NBFC Account Aggregator (NBFC-AA) – in its Master Directive of September 2016.

A full public launch which allows sharing of key financial sector data to access better credit products for individuals and MSMEs is planned for Fall 2020. Similarly, the National Health Authority has been tasked with implementing the National Digital Health Mission and is piloting the DEPA architecture for healthcare data in Fall 2020.

The Report also states that the telecom sector is also planning its adoption of DEPA. Telecom data is often the first digital footprint generated by a low-income household, and a steady history of on-time recharges could contribute to a budding credit history.

As per the Report, DEPA’s regulatory, institutional, and technology architecture will be a transformative data governance approach. This approach shows the new ‘India Way’ that is quite distinct from the other models around the world with respect to data protection, sharing, consent and privacy. The Indian approach is specially designed to inclusively cater to the needs of a developing economy, to be technologically cutting edge and innovative, to drive and stimulate economic and business value, and lastly to evolve over time to meet ever emerging “new” applications of data.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Introduction

A Committee of Experts (under the chairmanship of Mr. Kris Gopalakrishnan, Co-Founder Infosys) was constituted by the Ministry of Electronics & Information Technology (MeitY) to deliberate on a Data Governance Framework. The goals for the committee were to: (i) to study various issues relating to Non-Personal Data; and (ii) to make specific suggestions for consideration of the Central Government on regulation of Non-Personal Data. The Committee prepared and published a Report on Non-Personal Data Governance Framework and invited comments from the public.

The report covers several aspects pertaining to Non-Personal Data including providing for a definition of Non-Personal Data, elaboration on the concept of community data and the appropriate rights and privileges over this data. The Report also defines and elaborates on three categories of Non-Personal Data – Public, Community and Private. It has also introduced a concept of a new horizontal classification under which some businesses which would qualify as a Data Business. Further, the Report has also defined purposes for data sharing under sovereign, core public interest and economic purposes. The report finally recommends the establishment of a Non-Personal Data Regulatory Authority with an enabling role as well as enforcing role.

What is Non-Personal Data?

The Report firstly, on a general note, states that the data which is not ‘Personal Data’ [as defined under the Personal Data Protection (PDP) Bill], or the data is without any Personally Identifiable Information (PII), it is considered Non-Personal Data. Thereafter, the Report goes on to elaborate on the definition by stating that non-personal data would be:

1.  Data that never related to an identified or identifiable natural person; and

2.  Data which was initially personal data, but was later made anonymous.

Categories of Non-Personal Data

The Report provides for the following three categorisations of Non-Personal Data:

1.  Public Non-Personal Data – Non-Personal Data which is collected or generated by the governments, or by any agency of the governments, and includes data collected or generated in the course of execution of all publicly funded works. A few examples of these are anonymised data of land records, public health information, vehicle registration data, etc.

2.  Community Non-Personal Data – Non-Personal Data, including anonymised personal data, and non-personal data about inanimate and animate things or phenomena – whether natural, social or artefactual, whose source or subject pertains to a community of natural persons. A few examples of these are datasets collected by the municipal corporations and public electric utilities, etc.

3.  Private Non-Personal Data – Non-Personal Data collected or produced by persons or entities other than the governments, the source or subject of which relates to assets and processes that are privately-owned by such person or entity, and includes those aspects of derived and observed data that result from private effort.

Sensitivity of Non-Personal Data

The Report recognises that even if Personal Data is anonymised into Non-Personal Data, the possibility of harm to the original data subject(s) cannot be ruled since no anonymisation technique provides perfect irreversibility. The Report states that possibilities of such harm are obviously much higher if the original Personal Data is of a sensitive nature. In light of this, the Report recommends that the Non-Personal Data arising from such sensitive Personal Data may be considered as sensitive Non-Personal Data. The Report goes on to recommend that Non-Personal Data inherits the sensitivity characteristic of the underlying Personal Data from which the Non-Personal Data is derived.

Consent for Anonymised Data

Under the Personal Data Protection Bill, consent is necessary for the collection and processing of Personal Data. We cannot assume that consent provided for Personal Data applies automatically to Non-Personal Data. Accordingly, the Report recommends that the data principal should provide consent for anonymisation and usage of this anonymised data while providing consent for collection and usage of his/her Personal Data.

Key Non-Personal Data Roles

The Report mentions a set of roles/stakeholders and data infrastructures needs to be defined in order to develop and enable a robust Non-Personal Data ecosystem. It recommends the following roles:

1.  Data Principal – In case of Public Non-Personal Data, the data principal will be the corresponding entities (individuals, companies, communities) to whom the data relates. In case of Private Non-personal Data, the data principal will be the corresponding entities (individuals, companies, communities) to whom the data relates. In case of Community Non-Personal Data, a community, that is the source and/or subject of community data may be treated as the data principal

2.  Data Custodian – The data custodian undertakes collection, storage, processing, use, etc. of data in a manner that is in the best interest of the data principal. Data custodians have a ‘duty of care’ to the concerned community in relation to handling Non-Personal Data related to it.

3.  Data Trustees – The data principal group/community will exercise its data rights through an appropriate community data trustee. In the case of community data, unlike personal data where an individual can directly exercise control over her data, the concept of trustee for community data comes in, who would exercise such rights on the behalf of the community. The Report mentions that, in principle, it should be the closest and most appropriate representative body for the community concerned.

4.  Data Trusts – Data trusts are the institutional structures, comprising specific rules and protocols for containing and sharing a given set of data. Data trusts can contain data from multiple sources, custodians, etc. that is relevant to a particular sector, and required for providing a set of digital or data services. Such data trusts and infrastructures can be managed by public authorities or by new, neutral bodies, cooperatives, or industry associations, and so on.

Ownership of Data

The Report recommends that in case of Non-Personal Data derived from personal data of an individual, the data principal for personal data will continue to be the data principal for the Non-Personal Data, which should be utilized in the best interest of that individual. On the other hand, the rights over community Non-Personal Data collected in India should vest with the trustee of that community, with the community being the beneficial owner, and such data should be utilized in the best interest of that community. The Report adopts a notion of “beneficial ownership/interest” in ensuring that a Community’s interests are safeguarded regarding non-personal data over which there is an expectation of benefits being accrued to itself.

Concept of Data Business

The Report states that data business is not an independent industry sector. It is a horizontal classification cutting across different industry sectors. For example, companies in banking / finance, telecom, Internet-enabled services, transportation, consumer goods, travel, universities, private research labs, non-government organisations etc. may be classified as ‘Data Businesses’ based on a certain threshold of data collected / processed that will be defined by the regulatory authority.

The design principle for registration of and disclosures b data businesses is to be purely digital, lightweight and self-certified with a transparent framework written in code.

The data business would be required to submit meta-data about data user and community from which data is collected, with details such as classification, closest schema, volume, etc. This will be as per a directory of data classification and schema published by the Non-Personal Data Authority.

Indian citizens and India-based organizations will have open access to the meta-data about data collected by different data businesses including governments. Potential users may identify opportunities for combining data from multiple data businesses and/or governments to develop innovative solutions, products and services. Subsequently, data requests may be made for the detailed underlying data.

Data sharing and purposes of data sharing

The Report states that open-access to metadata and regulated access to the underlying data of data businesses will spur innovation and digital economy growth at an unprecedented scale in the country. The Report has also elaborated on the following 3 purposes of data sharing:

1.  Sovereign purpose – Data may be requested for national security, law enforcement, legal or regulatory purposes. For example, data requested for mapping security vulnerabilities and challenges, including people’s security, physical infrastructure security and cyber security, data required for crime mapping, devising anticipation and preventive measures, and for investigations and law enforcement.

2.  Core public interest purpose – Data may be requested for community uses / benefits or public goods, research and innovation, for policy development, better delivery of public-services, etc. The Report states that data held by the private sector when combined with public sector data or otherwise may be useful for policy making, improving public service, devising public programs, infrastructures, etc. and, in general, supporting a wide range of societal objectives including science, healthcare, urban planning etc.

3.  Data sharing for economic purposes – Data may be requested in order to encourage competition and provide a level playing field or encourage innovation through start-up activities (economic welfare purpose), or for a fair monetary consideration as part of a well-regulated data market, etc.

Startups / businesses would have access to the meta-data about data collected by different data businesses and governments. From the meta data, these startups/ businesses may identify opportunities for combining data from multiple data businesses and/or governments to develop innovative solutions, products and services.

Data Sharing mechanisms

The Report recommends that the Government should improve on existing Open Government Data initiatives, and should ensure that high-quality Public Non-Personal Datasets are available.

With respect to sharing of private data, only the raw / factual data pertaining to community data that is collected by a private organization need to be shared, subject to well-defined grounds at no remuneration. Where processing value-add is non-trivial with respect to the value or collective contribution of the original community data and

collective community resources used, data sharing may still be mandated but on FRAND (fair, reasonable and non-discriminatory) based remuneration. With increasing value-add it may just be required that the concerned data is brought to a well-regulated data market and price be allowed to be determined by market forces, within general frameworks of openness, fairness, etc.

Checks and balances

Among other safeguards (in the form of testing and probing tools, expert probing, contractual obligations, etc.), the Report recommends the following safeguards as regards location of storage and processing of data:

Sensitive non-personal data may be transferred outside India, but shall continue to be stored within India

 Critical non-personal data can only be stored and processed in India.

 General non-personal data may be stored and processed anywhere in the world.

Non-Personal Data Authority

The Report recommends creation of a regulatory authority which will focus on unlocking value in Non-Personal Data for India. This authority will be a proactive actor providing early and continued support for Indian digital industry and startups, and ensuring that necessary data is available for all the needed social, public and economic purposes. This authority must evaluate the nature of data sharing requests to avoid unfair or spurious requests which don’t serve social, public or economic purposes.

The authority will have two roles to play –

1.  Enabling role – Ensuring that data is shared for sovereign, social welfare, economic welfare and regulatory and competition purposes and thus spurring innovation in the country.

2.  Enforcing role – Ensuring all stakeholders follow the rules and regulations laid, provide data appropriately when data requests are made, undertaking ex ante evaluations of the risk of re-identification of anonymised personal data and so on.

The Non-Personal Data Authority will ensure a level playing field for all Indian actors to fulfil the objective of maximising Indian data’s value to the Indian economy.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Introduction

Copyright is a legal right provided to creators (authors) of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings. It is a bundle of rights that includes, inter alia, rights of reproduction, communication to the public, adaptation and translation of the work.[1]

Authors invest time and money in creating works which they also exploit for gain. There also exist people who without authorization misappropriate this work for their own personal gain causes losses to the authors.

Copyright protection ensures certain safeguards to the creators in respect of their works which not only safeguards their rights as against others but also helps foster creativity which is beneficial for the economic and social development of a society. Without protection, incentive to create works is lost. Such protection that penalizes also act as a deterrent to unscrupulous activities.

Relevant Provisions

In India, copyrights are governed by the Copyright Act, 1957 (“the Act”). The Act provides for civil remedies such as injunctions, damages, rendition of accounts, delivery, etc. as well as criminal remedies (such as imprisonment, fines, etc.) for the offence of copyright infringement.

Copyright infringement as a criminal offence has been provided for in Section 63 of the Act which states –

“63. Offence of infringement of copyright or other rights conferred by this Act.— Any person who knowingly infringes or abets the infringement of— (a) the copyright in a work, or (b) any other right conferred by this Act 1 [except the right conferred by section 53A], 2 [shall be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees]: Provided that 1 [where the infringement has not been made for gain in the course of trade or business] the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.] (emphasis added).

…”

The Code of Criminal Procedure, 1973 (“the Code”), the governing legislation for procedure for criminal trials, divides the spectrum of possible punishments for offences against other laws into three categories. On the basis of these categories, such offences are classified into two categories–

1. Cognizable – here a police officer has the power to make an arrest without a warrant and may also commence a preliminary investigation without the permission of a court; and

1. Non- Cognizable – for such offences a warrant is necessitated for a police officer to make an arrest and he/she may not commence an investigation without permission of the court.

The categories as identified by the Code is as follows:

S. No.	Offence	Cognizability
1.	If punishment with death, imprisonment for life, or imprisonment for more than 7 years	Cognizable & Non-Bailable
2.	If punishable with imprisonment for 3 years and upwards, but not more than 7 years	Cognizable & Non-Bailable
3.	If punishment with imprisonment for not more than 3 years	Non-Cognizable & Bailable

The conundrum of whether the offence of copyright infringement as provided by Section 63 of the Act is cognizable or not has been a long standing one. The issue of classification has arisen owing to the lack of the offence of copyright infringement (as provided under Section 63 of the Act) squarely falling in any of the three categories as laid down by the Code. The point of debate is whether the offence falls within the second category or the third.

Judicial Trends of various Courts in Classification of the Offence

There have been oscillating views on the classification of the offence of copyright infringement by different courts. While some courts have identified this offence as cognizable others have pegged it as non-cognizable.

In Abdul Sathar v. Nodal Officer, Anti-Piracy Cell, Kerala Crime Branch Office & Anr. [AIR 2007 Ker 212], a Single Judge Bench (R. Basant, J.) of the High Court  of Kerala took a similar view as Jithendra Prasad Singh v. State of Assam [2003 (26) PTC 486 (Gau)], and observed that the language of the provisions of Section 63 of the Act and the language of categories in Part II of the First Schedule of the Code clearly point to the conclusion that offences under the said Section 63 which are punishable with  imprisonment for a period of three years and with a fine, the same would fall within second category of offences. Thus, classifying them as cognizable & non-bailable.

In Amarnath Vyas v. State of Andhra Pradesh [2007 Cri LJ 2025], a Single Judge Bench (T. Ch. Surya Rao, J.) ofthe High Court of Andhra Pradesh in its order of December 2006, relying on the judgement of the Supreme Court of India in Rajeev Chaudhry v. State (NCT of Delhi) [AIR 2001 SC 2369], observed “…there has been no provision in the Act which makes offence clearly a ‘non-bailable’ …The expression “punishment for a term which may extend to three years” is certainly not similar to the expression “punishment for three years and upwards” and accordingly classified the offence under Section 63 of the Act as bailable and non-cognizable as it would be covered by the third category of offences.

In State Govt. of NCT of Delhi v. Naresh Kumar Garg[2013 (56) PTC 282 (Del)], a Single Bench (G.P. Mittal, J.) of the High Court of Delhi in March 2013, noted “In Avinash Bhosale v. Union of India, (2007) 14 SCC 325 the Supreme Court held that an offence punishable under Section 135 (1)(ii) of the Customs Act, 1962 (Act of 1962) would be bailable… the interpretation (of the Supreme Court in Avinash Bhosale) of the term imprisonment which may extend to three years or with fine or with both which is for an offence under Section 135(1)(ii) of the Act of 1962 will fully apply in case under Section 63 of the Act”. The Delhi High Court also stated “It would be fruitful to refer to the provision of Section 64 of the Act which empowers a police officer not below the rank of Sub-Inspector to seize the infringing copies of any work. If the offence had been cognizable and non-bailable, there was no necessity to specifically authorize the police officer with the power of seizure.”

Accordingly, applying the interpretation of the Supreme Court of India in Avinash Bhosale and the relevance of Section 64 of the Act, the offence of copyright infringement under Section 63 of the Act was recognized as non-cognizable and bailable. 

In Gurukrupa Mech Tech Pvt Ltd v. State of Gujarat and Ors [(2018) 4 GLR 3324], a Single Judge Bench (J.B. Pardiwala, J.) of the High Court of Gujarat in its order of August 2018, while discussing the decision in State of Andhra Pradesh v. Nagoti Venkataramana [(1996) 6 SCC 409] stated, “The important observations of the Supreme Court are that it is unnecessary for the prosecution to track on and trace out the owner of the copyright to come and adduce evidence of infringement of copyright. The absence thereof does not constitute lack of essential element of infringement of copyright. The observations of the Supreme Court gives a clear indication that the infringement of copyright is a cognizable offence and that the police must show a great deal of tolerance in collection of the evidence.” (emphasis added)

Recently in November 2019, in Anurag Sanghi v. State and Ors. [2020 II AD (Delhi) 314], a Single Judge Bench (Vibhu Bakhru, J.) of the  High Court of Delhi while relying upon the Supreme Court of India’s decision in Bhupinder Singh and Ors v. Jarnail Singh and Anr [AIR 2006 SC 2622] held “… the Supreme Court’s interpretation of the word “punishable” as explained in Bhupinder Singh (supra) is instructive and there is no cavil with the said view. Thus, in cases where an offence is punishable by a term of imprisonment that may extend to a specified period, the maximum term of sentence that can be imposed must be considered for the purposes of classification of the offences for the purposes of Part II of the First Schedule of the Cr.P.C. By applying the aforesaid rationale, there can be no doubt that the offence under Section 63 of Copyright Act would be a cognizable offence …” (emphasis added)

However, in view of the decisions in the aforementioned cases of Avinash Bhosale and Naresh Kumar Garg the single Judge allowed the petition claiming the offence under Section 63 of the Act to be non-cognizable while noting “although, in Avinash Bhosale (supra), the Supreme Court has not indicated any reasons for its conclusion/observation; … its decision is binding on this Court”.

In April 2020,a Single Judge Bench (Sandeep Mehta, J.) of the High Court of Rajasthan in Nathu Ram v. State of Rajasthan [SB Criminal Misc(Pet.) No. 5128/2019], opined that its previous decision in Pintu Dey v. State of Rajasthan & Anr. [2015(3) Cr.L.R. (Raj.) 1291] recognizing copyright infringement as non-bailable did not appear to be lawing down a correct proposition of law. Accordingly, the Court held “Therefore, the following question of law is framed and shall be placed before Hon’ble the Chief Justice for resolution thereof by the Larger Bench:

“What would be the nature of an offence (whether cognizable or non-cognizable) for which imprisonment “may extend to three years” is provided and no stipulation is made in the statute regarding it being cognizable/non-cognizable ?”

Conclusion

In today’s day and age where copyright infringement is rampant, it is imperative that the current catch 22 nature of classification of copyright infringement as cognizable and non-cognizable by different courts by brought to finality.

On one hand, determination of the offence as cognizable and non-bailable may cause panic and fear and consequently stifle creativity and expression owing to the harsher procedure as opposed to non-cognizable offences. There would be a constant fear of work being rendered as infringing. Furthermore, if deemed cognizable, parties may misuse the same for causing obstruction and hindrance in another’s business activities and also give unrestrained power to police officials. Bigger companies may also use this to dominate and remove smaller players from the market.

On the other hand, classification as cognizable may also be the needed harshness to act as a deterrent and dissuade unscrupulous activities by parties thereby reducing the current alarming rate of copyright infringement activities. 

For now, Courts continue to take dissenting views on the matter. It is to be seen when the Judiciary will resolve the inconsistent positions on the issue.

[1] Read more at: <https://copyright.gov.in/Documents/handbook.html>  

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Introduction

Celebrity Rights are a bundle of rights that inure to a person, by virtue of having created a distinct “identity”. Personality Rights or Image Rights inextricably linked with Right to Publicity and Right to Privacy may all be together referred to as Celebrity Rights.

“Personality” can be defined as the combination of characteristics or qualities that form an individual’s distinctive character[1]. The bundle of rights emanating from such characteristics or features of an individual are typically termed as “Personality Rights”. Right to Publicity is an individual’s right to commercially exploit her/his attributes. Right to Privacy, in simple terms, is an individual’s right to regulate what’s known to the world at large about him/her and what is not.

Protection and enforcement of Celebrity Rights vis-à-vis sportspersons and athletes gained momentum in Europe at least a decade back. As of today, with majority of the “famous” (or, G. O. A. T.s – as we often like to call them!) athletes and sportspersons being active on-field as well as off-field, the importance of diligently protecting and enforcing Celebrity Rights has become indispensable.

Celebrity Rights: What are they?

Celebrity Rights are not codified under a separate law, or defined under any legislation in India, and are thus per se not statutory rights. Recognition and enforcement is by way of tapping on the overlapping nature of these “bundle of rights” under the existing legislations and under the common law of passing off.[2]

Legislation(s) covering Celebrity Rights

Personality Rights can be said to broadly comprise two types of rights – Personality Rights and Right to Publicity thereof viz. commercial exploitation, and Right to Privacy.

The Right to Publicity aspect finds basis in various statutes in India – the Trade Marks Act, 1999, the Copyright Act, 1957, the Emblems and Names Prevention of Improper Use Act, 1950; and the Right to Privacy is now a recognized fundamental right in India.

The Trade Marks Act, 1999

The definition of a mark includes names, initials, signatures, sounds etc. All these aspects belonging to an individual and used in commerce as a means to signify a source, can thus be protected as trade marks, and their commercial exploitation be regulated. In the sporting world, athletes and sportsperson usually, either by themselves, or by collaborating with a sporting brand, come up with their own “lines” and brands. While starting a brand, some prefer retaining their name in plain words, others go for an artistic logo. Some even prefer using their signatures, or a signature “move” / “pose”.

For example, Sachin Tendulkar has registrations for his name as a trade mark in India[3] and Usain Bolt has numerous registered trademarks across (viz. in his name, initials, etc.) including in his “pose”[4].

The Copyright Act, 1957

Copyright Act defines “performers”, which may give some basis for enforcement vis-à-vis Celebrity Rights to athletes and sportspersons. Since Personality Rights are not defined, they are not “exhaustive” from the point of view of protection and enforcement. Thus, there may be other aspects vested in an individual’s persona that may deserve copyright protection.

The Constitution of India

Articles 19 and 21 of the Indian Constitution form the basis of Right to Privacy[5], an accepted aspect of Celebrity Rights.

Rights Vest in an Individual or in All Juristic Entities?

Athletes and sportspersons are often represented by agencies, who are responsible for managing the commercialization of the “brand” emanating from them. This may, in the absence of carefully drafted Agreements, lead to disputes, including ones challenging the very existence of these rights in the particular athlete or sportsperson.

In the case of ICC Development (International) Ltd. v. Arvee Enterprises and Ors.[ 2003 (26) PTC 245 (Del)], a Single Judge Bench (Surinder Kumar Aggarwal, J.) of the High Court of Delhi (“Court”) addressed an important question and made it clear that Personality Rights do not vest in non-living objects/corporations or other juristic entities. The Court held “In my considered view, the non-living entities are not entitled to the protection of publicity rights in an event, for more than one reasons. Firstly, the copyright law, trade-mark law, dilution law and unfair competition law provide full protection against all forms of appropriation of property to such legal entities…Secondly, it would be against the basic concept of “persona”. The “persona” is defined in Black’s Law Dictionary, seventh edition to mean “a person; an individual human being”…The right of publicity has evolved from the right of privacy and can inhere only in an individual or in any indicia of an individual’s personality like his name, personality trait, signature, voice, etc…Any effort to take away the right of publicity from the individuals, to the organiser {non-human entity} of the event would be vocative of Articles 19 and 21 of the Constitution of India. No persona can be monopolised. The right of Publicity vests in an individual and he alone is entitled to profit from it.”

The above, however, does not bar an athlete or a sportsperson from assigning aspects of its Celebrity Rights to a company created specifically to manage commoditizing of their persona. In fact, a lot of sportsperson usually do this for streamlining and better management of Celebrity Rights.

Merchandising Rights

Celebrities, including athletes and sportsperson in India, also enjoy the right to “merchandize” their “persona”.  Right to Merchandized was recognized by the High Court of Delhi in D. M. Entertainment Private Limited v. Baby Gift House & Ors. [CS(OS) 893/2002], where Daler Mehendi, a famous performer in India, had assigned his rights in his personality to a company, the plaintiff in this case. The case concerned “dolls” which were allegedly imitations of and identical to the likeness of Daler Mehendi and sang a few lines of the artists’ songs. As per the plaintiff, these dolls constituted an infringement of various aspects of Daler Mehendi’s personality rights. A Single Judge Bench (S. Ravindra Bhat, J.) of the Court decided in favour of the plaintiff and held “To avail the right against the infringement of right to publicity, the plaintiff must be “identifiable” from the defendant’s unauthorized use. In this instant case, the evidence on record very well establishes the primary requirement. As a secondary consideration, it is necessary to show that the use must be sufficient, adequate or substantial…”.

Domain name squatters

In the URDP Case of Mahendra Singh Dhoni and Rhiti Sports Management Private Limited v. David Hanley [Case No. D2016-1692], the famous Indian cricketer “captain cool” Mahendra Singh Dhoni filed a complaint against a squatter, concerning the domain name <msdhoni.com>. The Panel, deciding in favour of the complainants, held “…While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required….A trademark-equivalent basis has been found in the common law action of passing-off…Given the relevant facts (see above) the Panel finds that the Complainants have clearly established unregistered trademark rights in the name MS Dhoni…”.

Limitations/Defences to Personality Rights Claims

In the case of Gautam Gambhir v. D. A. P. & Co. and Ors. [CS (Comm.) 395/2017, IA Nos. 8432 and 6797/17], Gautam Gambhir, a famous Indian cricketer, sought to enforce the rights accrued in his name. The facts involved restaurants under the names inter alia “Blu Wavs by Gautam Gambhir” and “Play Reloaded by Gautam Gambhir” which, as per Gambhir, was violative of his personality rights. The defendant was incidentally name “Gautam Gambhir” as well. Deciding in favour of the defendant, a Single Judge Bench (S.P. Garg, J.) of the High Court of Delhi held “Celebrity status of the plaintiff is not disputed. However, there is no material on record to infer if any time in running the said restaurants with the tagline ‘by Gautam Gambhir’, the defendant ever represented to the public at large in any manner that the said restaurants were owned by the plaintiff or he was associated with them in any manner… he is entitled to carry on ‘his’ business in ‘his’ ‘own’ name”.

Case Studies and Precedents of Significance – International

The trend of proactively protecting and enforcing Celebrity Rights in India, particularly in the field of sports, is slowly but steadily catching up to international standards. Celebrity Rights, however, even in the international sphere, are still a niche and evolving concept. Sporting world is a globalized community – and even the international cases involving issues pertaining to Celebrity Rights serve as a lesson for athletes and sportspersons world over.

One of the most talked about cases is the 2010 case against the famous footballer Wayne Rooney[6]. This case concerned an Image Rights Representation Agreement (IRRA) signed between Rooney and his former management agency. While the case was eventually decided on the legal point of “restraint of trade”, a Queen’s Bench Division of England and Wales High Court (Judge Hegarty QC) defined image rights as “Image Rights means the right for any commercial or promotional purpose to use the Player’s name, nickname, slogan and signatures developed from time to time, image, likeness, voice, logos, get-ups, initials, team or squad number (as may be allocated to the Player from time to time), reputation, video or film portrayal, biographical information, graphical representation, electronic, animated or computer-generated representation and/or any other representation and/or right of association and/or any other right or quasi-right anywhere in the World of the Player in relation to his name, reputation, image, promotional services, and/or his performances together with the right to apply for registration of any such rights”.

Subsequently, we saw personality/image rights playing a crucial role in quite a few disputes, deals and transactions involving athletes and sportspersons. Image Rights were the culprit in the 2016 hold-up in Jose Mourinho’s taking over as Manchester United’s manager from Chelsea[7]. Everyone is familiar with Roger Federer’s woes in allowing Nike to register the famous logo, and subsequently shifting sponsorship to Uniqlo.[8] Lionel Messi fought an almost decade long battle in EUIPO to get a logo with his name registered as a trade mark.[9]

The above examples are lessons on what not to do while looking at protecting an aspect of Celebrity Rights, especially by an athlete or a sportsperson. The constant evolution and introduction of new elements and dimensions into the sporting world is making the issue of protection and enforcement of Celebrity Rights increasingly complex, strategic and diligence-heavy.      

Conclusion

Who is a celebrity? What are the essential ingredients needed to make a case concerning Celebrity Rights?

A Single Judge Bench (Manmohan Singh, J.) of the High Court of Delhi answered these questions in the case of Titan Industries Ltd. v. Ramkumar Jewellers [2012 (50) PTC 486 (Del)], wherein it observed that, “A celebrity is defined as a famous or a well-known person. A “celebrity” is merely a person who “many” people talk about or know about”. Therefore, the basic ingredients of (i) Validity; and (ii) Identifiability need to be established to make a case for infringement of Celebrity Rights.

[1] Definition provided by Oxford Languages on Google, < https://www.lexico.com/definition/personality>.

[2] In Shivaji Rao Gaikwad (aka Rajinikanth) v. Varsha Production, 2015 (62) PTC 351 (Mad), the High Court of Madras held that “…though there is no definition for the personality right under any statute in India, the Courts in India have recognized the personality right in the name, in various judgments”.

[3] Indian TM Registration No. 2008276, etc.

[4] US TM Registration No. 4177904.

[5] In R Rajagopal v. State of Tamil Nadu, AIR 1995 SC 264, the Supreme Court of India held that the right to privacy has two aspects “(1) the general law of privacy which affords a tort action for damages resulting from an unlawful invasion of privacy and (2) the constitutional recognition given to the right to privacy which protects personal privacy against unlawful governmental invasion”.

[6] Proactive Sports Management Ltd v. 1) Wayne Rooney, 2) Coleen Rooney (formerly McLoughlin), 3) Stoneygate 48 Limited, 4) Speed 9849 Limited, [2010] EWHC 1807 (QB).

[7] Read more at: <https://www.bbc.com/sport/football/36382637>.

[8] Read more at: <https://scroll.in/field/955787/two-years-after-moving-to-uniqlo-roger-federer-gets-rf-logo-back-from-nike-report>.

[9] Read more at: <https://www.business-standard.com/article/sports/barcelona-s-lionel-messi-wins-court-fight-over-trademark-of-his-logo-120091800088_1.html>.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Introduction

In India, trademarks are protected both under statutory law and common law. Even in the absence of a trademark registration, a trademark can be protected against similar marks if the reputation and goodwill vesting in it (owing to its use) result in consumers and public associating it exclusively with the proprietor. This is a well-established principle of trademark law and has evolved over the years to enable protection of trademarks which have acquired a reputation in the domestic market through their use in other jurisdictions. Such reputation, which has spilled over to a territory where the mark is not being commercially used, is called “trans-border reputation”. In the present digital age, the world is more connected than ever, and information flows freely from one country to the other. This means that recognition and reputation of a trademark is no longer restricted to its place of origin and commercial use. Accordingly, trans-border reputation is becoming an increasingly important aspect of trademark law. 

In any trademark dispute, while determining whether a trademark has acquired trans-border reputation in India, the courts primarily take into consideration the nature and extent of evidence submitted in support of it. This article explores and discusses the types of evidence taken into consideration by the courts for establishing trans-border reputation in India.

Early judicial decisions

In one of the earliest Indian judgments dealing comprehensively with trans-border reputation of trademarks – William Grant & Sons Ltd. v. Mcdowell & Company Ltd., [55 (1994) DLT 80], a Single Judge Bench (Mahinder Narain, J.) of the High Court of Delhi (“Delhi High Court”), while determining whether the plaintiff’s GLENFIDDICH whiskey had acquired trans-border reputation in India, considered evidence of sale through duty-free shops, advertisement in magazines and references in books to be sufficient and observed that, “Trans-border reputation of the plaintiff, has been…established sufficiently in this country by means of the fact that the sales of Glenfiddich takes place on duty free shops in India, by the fact that advertise-ment of Glenfiddich whisky are to be found in various magazines, like the In house magazine of Air India, and other foreign publications which are freely available in india, (some of which have been placed on record of this case), as a result of which, in my view, Glenfiddich whisky has a live reputation in India.

…not only Glenfiddich is carrying on business internationally, even books like Michael Jackson’s “Malt Whisky Companion”, regard it as the biggest selling Single MaltWhisky in the world. Another Book: “The Scotch Whisky Book” by Mark Skipworth, referred to by the defendant, at page 39, refers to Glenfiddich Whisky by saying “GLENFIDDICH is the world’s biggest selling Single Malt Whisky”.”

While the Delhi High Court did not lay down the evidentiary standards to be met for establishing trans-border reputation, its reliance on specific types of evidence acted as a useful guide.

The similar type of evidence was again considered sufficient by the Delhi High Court in Alfred Dunhill Limited v. Kartar Singh Makkar & Ors., [1999 PTC (19) 294 (Del)], wherein a Single Judge Bench (M.S.A Siddiqui, J.) ruled that mark DUNHILL has acquired sufficient trans-border reputation and observed that, “Transborder reputation of the trade mark and trade name DUNHILL has been… established in this country by means of the fact that plaintiff products are available on duty free shops in India, by the fact that advertisement of plaintiff’s goods under the trademark and trade name ‘DUNHILL’ are to be found in various magazines like the Newsweek, Time and the Asia Magazine, which are freely available in India. In this view of the matter, it can safely be inferred that plaintiff’s trademark and trade name DUNHILL has a live reputation in this country.”

Notably, in N.R. Dongre and others v. Whirlpool Corporation and Anr., [1996 AIR SCW 3514] a Division Bench (J. S. Verma and K. Venkataswami, JJ.) of the Supreme Court of India (“Supreme Court”) affirmed the Delhi High Court’s ruling with respect to trans-border reputation, that it is not necessary that the association of the plaintiff’s marks with his goods should be known all over the country or to every person in the area where it is known best. Accordingly, the trans-border reputation among the public need not be ubiquitous.

Evidentiary threshold for prima facie determination of trans-border reputation

The evidentiary threshold for establishing prima facie trans-border reputation for obtaining an interim injunction was elaborated upon by the Delhi High Court in Mac Personal Care Pvt. Ltd. and Ors. v. Laverana Gmbh & Co. KG. and Ors.,[2016 (65) PTC 357 (Del)]. A Division Bench (Pradeep Nandrajog and Mukta Gupta , JJ.) of the Delhi High Court held that in order to prove that a trademark has acquired trans-border reputation, it must be shown that – (i) there is international reputation inuring in the trademark in favour of the plaintiff on account of use made overseas; and (ii) that the reputation spills over to India. The court further stated that for a prima facie satisfaction of the first condition, anything done at a commercial level should suffice unless it can be called de minimis or trivial. The factors to be considered for a prima facie determination of trans-border reputation were then laid down by the court as follows:

“…the trademark is registered in favour of the plaintiff in a jurisdiction abroad…as against a single registration, registrations in multiple jurisdictions create an even stronger presumption that reputation inures in favour of the trademark.

If international magazines, journals and publications including books have referred to the trademark, then such publications, depending upon their renown can be taken as valuable of reputation, even if they are few.

Volume of sales is also valuable evidence of reputation to form a prima-facie opinion.

This is not an exhaustive enumeration of the factors which a Court can take into account, but are a few factors which are certainly relevant as showing the probability of the reputation existing internationally and thereby guiding the Court in forming a prima facie view.”

The Prius judgment

The Supreme Court comprehensively dealt with issues related to trans-border reputation in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and Ors., [AIR 2018 SC 167]. Toyota had obtained an injunction at the High Court, based on the trans-border reputation of its mark PRIUS in India. In the appeal, the Supreme Court had to determine if the mark PRIUS had acquired a trans-border reputation in India at the relevant time, viz. year 2001. A Division Bench (Ranjan Gogoi and Navin Sinha, JJ.) of the Supreme Court held that Toyota failed to establish reputation/goodwill of its mark PRIUS in India and in respect of which it observed that, “…there must be adequate evidence to show that the Plaintiff had acquired a substantial goodwill for its car under the brand name ‘Prius’ in the Indian market also. The car itself was introduced in the Indian market in the year 2009-2010. The advertisements in automobile magazines, international business magazines; availability of data in information-disseminating portals like Wikipedia and online Britannica dictionary and the information on the internet, even if accepted, will not be a safe basis to hold the existence of the necessary goodwill and reputation of the product in the Indian market at the relevant point of time, particularly having regard to the limited online exposure at that point of time, i.e., in the year 2001. The news items relating to the launching of the product in Japan isolatedly and singularly in the Economic Times (Issues dated 27.03.1997 and 15.12.1997) also do not firmly establish the acquisition and existence of goodwill and reputation of the brand name in the Indian market.” (emphasis supplied).

This is an important ruling on the requirements for establishing trans-border reputation as it also highlights the importance of evaluating the evidence in the context of the relevant time at which the reputation has been claimed to have been acquired. Since Toyota’s evidence was primarily based on online materials, the Supreme Court did not consider it to be sufficient owing to limited accessibility of the internet in India in the year 2001. Isolated references in Indian publications prior to the year 2001 were also held to be insufficient.

Conclusion

From an analysis of the cases discussed above, it can be seen that the concept of trans-border reputation has evolved considerably in India. Courts have, to a great degree, clarified the nature and extent of evidence required to establish the trans-border reputation of a trademark in India. Advertisements, mentions and references in publications circulated or accessible in India; figures of international sales and advertising expenditure; online presence of the trademark and the goods or services provided thereunder; trademark registrations across various jurisdictions, etc. have all been held to be useful types of evidence for establishing trans-border reputation in India.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.