Citation: Banerjee A. (2019) Contemporary Challenges of Online Copyright Enforcement in India. In: Liu KC., Racherla U. (eds) Innovation, Economic Development, and Intellectual Property in India and China. ARCIALA Series on Intellectual Assets and Law in Asia. Springer, Singapore. <https://doi.org/10.1007/978-981-13-8102-7_8 >

Introduction:

Written by Arpan Banerjee, affiliated with Jindal Global Law School, Sonipat and University of New South Wales, Sydney, the book chapter, the text under review, discusses the challenges faced by and online enforcement strategies available to copyright holders in India, especially in the film industry.

The text outlines how increasing accessibility to the internet has seen a directly proportionate increase in online piracy. According to the writer, the law, as it stands, is arguably sufficient to cover almost all kinds of online infringement, and it is global scale of internet usage that is making it nearly impossible to identify and curb infringement.

Landscape of Piracy:

The writer deduces that there are three major issues that plague the possibility of online copyright enforcement, viz. prevalence of physical piracy, hosting of pirated content in servers outside India, and infrastructure of the justice system. The writer notes that the motive for piracy could be either financial or non-financial. A 2009 report by the Committee on Piracy, Ministry of Information & Broadcasting[1] is cited by the writer describing piracy as a “high-reward’ business and stated that a significant amount of piracy is motivated by financial gain.

The writer mentions that there are now many options for legitimate consumption of content online, such as online streaming platforms like Netflix, Amazon Prime, etc. What the writer fails to consider is how ingrained the movie culture is in India, and while piracy could be stemming from sources that are financially motivated, for the average Indian consumer, it is the lack of access to theatres and online streaming services that drives them to pirated content. The writer also fails to take into account the financial status of the average Indian consumer and how these supposedly ‘nominal’ subscription fees are beyond their budgets. 

Graduated Response Proposal:

The writer proposes a graduated response model that targets end users. This model proposes to loop in Internet Service Providers (ISPs) and have them take action such as issuing warnings, suspension of services to eventual termination of services (extending to other ISPs as well). While the writer rightly points out that the law in India requires ISPs to inform users not to host or upload any information that infringes copyright, there is little evidence to show that in the absence of court orders, ISPs ever voluntarily disconnect/terminate users who upload pirated content.

What has also not been considered is the sheer size of India’s population. If an end-user who routinely indulges in downloading pirated content is blocked by one ISP, it is nearly impossible for other ISPs to be aware of the same, and to not provide a connection, not to mention the lack of motivation on the part of ISPs to slow down bandwidth let alone block a user, which the writer has also talked about. The effectiveness of this model, if ever implemented, is therefore questionable.

Website blocking injunctions:

The text delves into, what now appears to be the most lucrative solution to online piracy, viz. website blocking injunctions. Over the years, courts in India have developed largely effective strategy to deal with online piracy. The latest being dynamic injunctions[2]. This form of injunction gives rights-holders the option to simply approach the administrative section of a Court to extend an existing injunction against a website, to similar ‘mirror/redirect/alphanumeric’ websites which hosts the same content as the original.

This, as the writer rightly points also presents its fair share of issues. One such major issue is with the implementation of orders and unintentional blocking of legitimate websites. 

 Ad-Supported Piracy:

An interesting aspect of online piracy that the writer chose to deal with is ad-supported piracy through discussing a study conducted by the Federation of Indian Chambers of Commerce and Industry (FICCI) and Strategic IP Information (SIPI) in 2017[3]. The study found that on torrent and other online piracy mediums, 46% of the advertisements concerned pornography, gambling, etc. and the remaining 54% concerned products from automobiles, entertainment, and retail industries. The study, intriguingly, blamed this ad-supported piracy on the functioning of digital advertising. As per the study, a small portion of ad budget is usually funnelled to “ad networks that provide cheap and efficiency driven media campaigns” which include entities such as Google AdSense, PopAds, etc. These websites place ads depending on the traffic to a particular webpage.

While Google has taken the defence that it takes online piracy seriously and has terminated several thousand AdSense accounts, the FICCI-SIPI study showed that this shutdown has not even remotely affected ad-supported piracy, which continues to flourish.

Conclusion:

The text outlines the problems faced by copyright owners in light of rampant digital quite thoroughly, however, some assumptions as to the socio-economic landscape of India was given a miss at certain points. Having said so, the text lays down the realities of dissemination of pirated content through the internet and the limitations on right holders in curbing such rampant infringement, which is not owing to a ‘law-lag’ as is often misconceived but owing to the dynamic nature of the internet.

End Notes:

1. Ministry of Information & Broadcasting. (2009). Report of the Committee on Piracy.
2. UTV Software Communication Ltd. v. 1337x.to [CS(COMM) 724/2017 and Ors.]
3. Federation of Indian Chambers of Commerce (FICCI) and Industry & Strategic IP Information (SIPI) (2017). Badversiting. http://verisiteglobal.com/Badvertising_Report.pdf.

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

Securitisation may be defined as a process by which a company pools the rights to receive future payments for certain assets and sells that right in the form of securities. With IP becoming one of the most invaluable assets of businesses, this concept was extended in that direction, and WIPO, among others, describes the securitisation of IP assets as a “new trend” [1]. This began with securitisation of royalties, the first-ever being the Bowie bonds, which were music royalties. In 1993, Calvin Klein raised US $58 million with the securitization of royalties on perfume brands, arising from the exclusive right to use its trade mark on existing and future products; and the practice continued since [2].

The numbers associated with IP securitisation are a testament to the growth and applicability of this trend. For instance, the number of patents pledged as collateral grew from less than 10,000 in 1995 to nearly 50,000 in 2013. According to an IP merchant bank, Ocean Tomo, intangible assets as a percent of market value are at an all-time high of 84% for S&P 500 companies. Additionally, since 1980, 16% of all U.S. patents have been pledged as collateral before their expiration, and by 2013, 40% of all firms with patents outstanding had pledged their patents as collateral at some point.[3]

Indian Position

The United Nations Commission on International Trade Law (UNCITRAL), to which India is a signatory, has undertaken an elaborate exercise to prepare a legislative guide on secured transactions along with a supplement on security rights in IP. The objective of the guide with respect to IP is to promote secured credit for businesses that own or have the right to use IP, by permitting them to use rights pertaining to intellectual property as encumbered assets without interfering with the legitimate rights of the owners, licensors and licensees of the intangible property. UNCITRAL has also approved a model Law on Secured Transactions, applicable to all secured lenders, for adoption by the member countries, though India is yet to consider its enactment.

Judicial Interpretation

There has been only one recent case that has dealt with the issue specifically. In the case of Canara Bank vs NG Subbaraya Setty (AIR 2018 SC 3395) [4], the Supreme Court [Adarsh Kumar Goel and Rohinton Fali Nariman, JJ] held that assignment of a trademark “EENADU,” as a security for a loan outstanding is against Section 45 of the Trade Marks Act of 1999 and Sections 6, 8 and 46(4) of the Banking Regulation Act, 1949. In reference to the former, the Court stated that any unregistered assignment cannot be presented as evidence in court of law. Since the assignment deed between the parties was never registered and the IP had not been attached as security or collateral at the time of entering into the loan agreement, it was held that subsequent attachment does not justify securitisation. Reference to provisions under Banking law was itself interpretive, and the ambiguity does not draw conclusion to the issue itself. It is also interesting to note that the Court didn’t discern the question in general, but limited its reasoning and application to the matter at hand.

Legislative Interpretation

The National Intellectual Property Rights Policy, 2016 [5] proposes the securitisation of innovation rights, allowing them to be used as collateral to raise funds for their commercial development. The Policy does allow for an IP to be attached as a security, and also suggests financial support for developing intellectual property assets through banks, venture capital and angel funds and crowdfunding mechanisms. The more recent legislations attempt to include intangible assets in the loop of legal procedure and substance. For instance, Section 2(1)(t) of the Securitisation and Reconstruction of Financial Assets and Enforcement of Security Interest Act, 2002 (SARFAESI Act) [6], defines the expression property and specifically includes intangible assets being knowhow, trademark, copyright, licence or franchise. Section 2(1)(zf) of the 2002 Act defines “security interest” as a right, title or interest of any kind upon property created in favour of secured creditor and includes such right title or interest in intangible assets. Further, the expression secured creditor is defined to include any bank or financial institution holding any right, title or interest upon any tangible asset or intangible asset as a secured creditor. Even Section 6(1)(f) & (g) of the Banking Regulation Act, 1949 [7] clearly provides for dealing with any property or any right, title or interest in such property which forms the security for the loan.

Conclusion

While Indian jurisprudence on IP securitisation is limited and remains unresolved, with the global development of the trend of IP securitisation, and foreseeable acceptance under the Indian regime, it is safe to hope that the practise will be incorporated in commercial transactions. The risk that financial institutions are apprehensive of are fair, but post the initial dubiety, IP securitisation will be a boon for businesses, especially for start-ups and smaller businesses who may not have a lot to offer otherwise. This will also encourage IP registrations, thereby simultaneously strengthening the commercial and IP regime of India in the long run.

REFERENCES:

[1] https://www.wipo.int/edocs/mdocs/sme/en/wipo_wasme_ipr_ge_03/wipo_wasme_ipr_ge_03_17.pdf,  last accessed on February 15, 2021.

[2] https://www.google.com/url?sa=t&rct=j&q=&esrc=s&source,  last accessed on February 15, 2021.

[3] https://www.itcilo.org/sites/default/files/inline-files/Erdenechimeg.pdf , last accessed on February 17, 2021.

[4] Canara Bank vs NG Subbaraya Setty, AIR 2018 SC 3395.

[5] https://dipp.gov.in/sites/default/files/National_IPR_Policy_English.pdf,  last accessed on February 17, 2021.

[6] https://www.indiacode.nic.in/handle/123456789/2006?view_type=search,  last accessed on February 18, 2021.

[7] https://rbidocs.rbi.org.in/rdocs/Publications/PDFs/BANKI15122014.pdf,  last accessed on February 18, 2021

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 the age of internet and online shopping, for most businesses, the importance of owning a website has increased so much that it can almost be termed as a prerequisite. Websites and web-based marketing are crucial in increasing and maintaining customers. More likely than not, customers search for the relevant information using keywords in search engines like Google, Yahoo, etc. Further, customers are likely to visit the webpages reflected on the first page of search results. Therefore, using relevant and suitable meta tags becomes key in attracting footfall to a webpage. The question that arises here is that does use of third-party trademarks as meta tags amount to trademark infringement?

What are Meta Tags and why are they Important?

Meta tags are snippets of text that describe and index a webpage’s content and they form a part of the HTML code. Meta tags are not visible on the webpage per se; however, they can be found in the page’s source code. These can be of different types and not all have the same function or importance, such as “Title Tag” which forms the “title” of a webpage, “Meta Description Attribute” which reflects as a brief description of the contents of the page in the search results, etc.

Use of Third-Party Trademarks

Section 29 of the Trade Marks Act, 1999 (“Act”) deals with infringement of a trademark. Particularizing therefrom, Section 29 (8) of the Act states inter alia that a registered trademark is infringed by any advertisement of that trademark if such advertising takes unfair advantage of and is contrary to honest practices in industrial or commercial matters.

If a trademark is used as a meta tag, the website comes up whenever a customer searches for that trademark. Therefore, if business owners incorporate their competitors’ marks as their own meta tags, they can draw business away from their competitors’ websites. Since meta tags are not visible on the webpage itself, the question arises whether use of a third-party trademarks as a meta tag amounts to infringement under Section 29 of the Act.

While internationally there has not been a uniform answer to this question, in India, the Courts have answered in affirmative. For instance, in the landmark case of Kapil Wadhwa v. Samsung Electronics Co. Ltd. [194 (2012) DLT 23], a Division Bench [Pradeep Nandrajog, J. and Siddharth Mridul, J.] of the High Court of Delhi upheld the Single Judge Bench’s decision which discussed meta tagging in detail. It was held that use of third-party marks as a meta tag is illegal as it enables the defendant to ride on the reputation of the plaintiff. The trade mark used in the code as a keyword is invisible to the end-user or customer. Such use, though invisible to the customer, was held to be illegal.

Another such case is People Interactive (I) Pvt. Ltd. v. Gaurav Jerry [MIPR 2014 (3) 101], before a Single Judge Bench [G.S. Patel, J] of the High Court of Bombay, wherein the plaintiff – owner of the website Shaadi.com, approached the High Court of Bombay to restrain the defendant from using the domain name and mark ‘ShaadiHiShaadi.com’ for identical service. The Court observed that the defendant was using the plaintiff’s proprietary mark ‘shaadi.com’ and its domain name <www.shaadi.com> as part of its “meta tags”. While highlighting the role of meta tags the Court observed, “Dishonesty is writ large on the actions of the 1st Defendant. He has used the Plaintiffs’ mark shaadi.com as a suffix to another expression. He has attempted to misappropriate the Plaintiffs’ mark…He has, plainly, hijacked Internet traffic from the Plaintiffs’ site by a thoroughly dishonest and mala fide use of the Plaintiffs’ mark and name in the meta tags of his own rival website. The distinctive character of the Plaintiffs’ mark is thus diluted and compromised by the actions of the Defendant. The 1st Defendant’s action is nothing but online piracy. It cannot be permitted to continue.”

Conclusion 

From analysis of above cases, it is clear that use of a third-party’s marks as meta tags amount to infringement of such marks and the Courts have restrained such use. The Courts have also noted that such use will be mala fide use of a third-party’s marks and will lead to consumer confusion. Thereby, even though use of third-party’s marks as meta tags is invisible per se, one should be careful as it may lead to an infringement or a passing-off action.

References:

1.                  Kapil Wadhwa v. Samsung Electronics Co. Ltd., [194 (2012) DLT 23].

2.                  People Interactive (I) Pvt. Ltd. v. Gaurav Jerry, [MIPR 2014 (3) 101].

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

Licensing is an essential means of monetising one’s copyright, especially in sound recordings and cinematographic films. To streamline this process, the Copyright Act, 1957 (“the Act”) provides for registered Copyright Societies to grant such licenses. In addition to such Copyright Societies, there exists un-registered third-party licensing companies who also grant such licences. This article analyses such companies’ legal ability to issue licences under the Act.

Copyright Licensing by third-party companies

At present, third-party licensing companies’ issue licenses either by (i) claiming themselves to be the owner of the copyrighted works by virtue of assignment under Section 18(2) of the Act; or (ii) claiming to be an authorised agent of the copyright owner under Section 30 of the Act, which provides that an authorised agent can grant licenses on behalf of the owner of the copyrighted work.

Section 33 (1) of the Act provides for Copyright Societies, it states that “…No person or association of persons shall…commence or, carry on the business of issuing or granting licences in respect of any work in which copyright subsists or in respect of any other rights conferred by this Act except under or in accordance with the registration granted under sub-section (3)…”. A bare reading of this provision gives the impression that only a registered Copyright Society can grant licenses. Further, the first proviso to Section 33(1) provides that in addition to the registered Copyright Societies, an owner of the copyrighted work will continue to have the right to grant licenses of its work.

The first proviso of Section 33(1) leads to the question whether third-party licensing companies can grant licenses by virtue of Section 18 and 30 read with first proviso of Section 33(1) of the Act.

Judicial Interpretation

One of the major judgements on this issue came from the High Court of Bombay in Leopold Café Stores v. Novex Communications Pvt. Ltd. [2014 (59) PTC 505 (Bom)], where the defendant claimed to grant license as an authorised agent under Section 30 of the Act. While forbidding the defendant from carrying on its business for want of proof of agency, a Single Judge Bench [G.S. Patel, J.], expressed the need to harmonise Sections 30 and 33 of the Act and held “…What Section 33 forbids is an engagement in the “business of issuing and granting” licenses in works in which copyright subsists. This cannot mean that a copyright owner cannot appoint an agent to grant any interest on behalf of the copyright owner. That is something that Section 30 in terms permits. The express permission in Section 30 cannot be occluded by an extension of the express prohibition in Section 33. All that the two sections, read together, require is that the factum of agency must be disclosed…The minute the principal is undisclosed and the license is issued and granted in the agent’s own name, the prohibition in Section 33 comes into play”. This case legitimised the business of third-party licensing companies if they issued licenses in the name of the copyright owner and not in their own name.

However, subsequently in M/S Event and Entertainment Management Association (EEMA) v. Union of India and Ors. [2017 SCC OnLine Del 12740], a Single Judge Bench [Vibhu Bakhru, J.] of the High Court of Delhi held that “…Since PPL, IPRS and Novex are not registered as copyright societies, they are by virtue of Section 33(1) of the Act – proscribed from carrying on the business of issuing or granting licences”. Therefore, this judgement prohibited third-party licensing companies from granting licenses irrespective of whether they can show assignment under Section 18 read with the first proviso to Section 33(1) of the Act.

Further, this issue came up before the High Court of Delhi in Novex Communication Pvt. Ltd. v. Lemon Tree Hotels Ltd. and Ors [2019 IIAD (Delhi) 644], wherein a Single Judge Bench [Valmiki J. Mehta, J.] held that “…it is not as if that the second Proviso to Section 33(1) says that so far as sound recording is concerned, the same cannot be licensed except by a copyright society. Obviously, if this interpretation is given, the same will nullify or render otiose the first Proviso to Section 33(1)…”. The Court explicitly stated that “…a copyright society need not legally be the only one exclusive authorised entity/person to give out licenses…”. 

Conclusion

Currently, the latest judgment on the issue allows and favours licensing by third-party companies like Novex. However, different High Courts have given different interpretations with some legitimising such companies’ business, and others forbidding it. Since all the judgements mentioned above come from coordinate benches, the question of third-party licensing remains open for consideration. Thereby, this issue should be further examined and addressed by a larger bench of the High Courts or the Supreme Court of India

References-

1. Leopold Café Stores v. Novex Communications Pvt. Ltd., [2014 (59) PTC 505 (Bom)].
2. M/S Event and Entertainment Management Association (EEMA) v. Union of India and Ors., [2017 SCC OnLine Del 12740].
3. Novex Communication Pvt. Ltd. v. Lemon Tree Hotels Ltd. and Ors., [2019 IIAD (Delhi) 644].

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

Consumer laws and arbitration laws in the country seek to provide speedy dispute resolution mechanisms. However, the question that arises is that if a consumer dispute arises out of an agreement having an arbitration clause, would the consumer forum have jurisdiction to decide the matter, or would the matter be referred to arbitration?

Relevant provisions of Arbitration and Consumer Protection Laws

According to Section 8 of the Arbitration and Conciliation Act, 1996 (“Arbitration Act”), when a matter which is the subject of an arbitration agreement is brought before a judicial authority, then the judicial authority shall mandatorily refer the matter to arbitration. Section 2(3) of the Arbitration Act clarifies that Part I of the Arbitration Act does not affect any other law which bars any dispute from being referred to arbitration.

Sections 3 and 100 of the Consumer Protection Act, 1986 (“1986 Act”) and Consumer Protection Act, 2019, respectively state that the Consumer Protection Acts are not in derogation of any other law in force.

Since there is no express bar in the Consumer Protection Acts on consumer disputes being referred to arbitration, and the Acts are not in derogation of any other law in force, a plain reading of the aforesaid provisions may lead one to conclude that a consumer dispute arising out of an agreement containing arbitration clause would have to mandatorily be referred to arbitration. 

This issue came up before the Supreme Court of India in M/s. Emaar MGF Land Limited v. Aftab Singh [Review Petition (C) Nos. 2629-2630 of 2018 in Civil Appeal Nos. 23512-23513 of 2017] (“Emaar MGF”). 

Factual Matrix, Observations and Decision in Emaar MGF

In Emaar MGF, the appellant, a real estate developer, who was sued on account of its failure to deliver possession of a villa to the respondent, challenged the National Consumer Disputes Redressal Commission’s (“NCDRC”) order which held that consumer disputes are non-arbitrable, before the Supreme Court. The NCDRC was of the view that disputes governed by laws which sub-serve a public policy are not arbitrable.

However, the appellant’s appeal was dismissed by the Supreme Court. Consequently, the Appellant filed a review petition before the Court.

The appellant contended that the NCDRC being a judicial authority could not have refused to refer the matter to arbitration in light of Section 8 of the Arbitration Act. Whereas, the respondent contended that the 1986 Act provides for an additional beneficial remedy to consumers which cannot be taken away by Section 8 of the Arbitration Act.

Accepting the respondent’s contentions, the Supreme Court observed, “…the legislature intended to provide a remedy in addition to the consentient arbitration….Section 34 of the Act does not confer an automatic right…on the exercise of the power by the judicial authority under the Act. It is a matter of discretion….though the District Forum, State Commission and National Commission are judicial authorities…in view of the object of the Act and by operation of Section 3 thereof….it would be appropriate that these forums created under the Act are at liberty to proceed with the matters in accordance with the provisions of the Act rather than relegating the parties to an arbitration proceedings….The reason is that the Act intends to relieve the consumers of the cumbersome arbitration proceedings or civil action unless the forums on their own…come to the conclusion that the appropriate forum for adjudication of the disputes would be otherwise those given in the Act.”

The Court also observed, “Every civil or commercial dispute…which can be decided by a court, is in principle capable of being adjudicated and resolved by arbitration unless the jurisdiction of the Arbitral Tribunals is excluded either expressly or by necessary implication.” (emphasis supplied)

The Court further added that, “…in the event a person entitled to seek an additional special remedy provided under the statutes does not opt for the additional/special remedy and he is a party to an arbitration agreement, there is no inhibition in disputes being proceeded in arbitration.”

Conclusion

A consumer has the choice to either refer the matter to arbitration or seek remedy before the appropriate consumer forum. However, there is an implied bar on a matter being referred to arbitration if the consumer wishes to pursue the matter before a consumer court.

Such a liberal interpretation of the provisions of arbitration and consumer laws seems to rightly protect the interests of those consumers who may not have the requisite resources for seeking relief through arbitration. Moreover, given that the consumer protection laws aim at providing a simpler and cheaper mechanism for dispute resolution, consumers should not be precluded from availing the benefits of the special law, merely on account of presence of an arbitration clause in an agreement.

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