Plaintiff – Super Cassettes Industries Ltd.
Respondents – Myspace Inc. & Another
Decided On: 29.07.2011
- Civil Procedure Code, 1908
- Information Technology Act, 2000
- Copyright Act, 1957
- Super Cassette Industries Ltd. v. Nirulas Corner House (P) Ltd. (2008) DLT 487
- Entertainment Network (India) Ltd. v. Super Cassettes Industries 2008 (9) SCALE 69
- State of Maharashtra v. Praful B. Desai (Dr.) (2003) 4 SCC 601
- Exphar SA & Anr v. Eupharma Laboratories Ltd. & Anr. (2004) 3 SCC 688
- Gujrat and Anr. v. Gujarat Kishan Mazdoor Panchayat and Ors. (2003) 2 SCR 799
- Kesavananda Bharati v. State of Kerala (1973) 4 SCC 225
- The Plaintiff claims to be the owner of repertoire of songs, cinematograph films, and recordings, etc with over 20000 Hindi Non film songs and around 50000 songs in regional languages.
- A suit is filed against Myspace which is a social networking platform for infringement of copyright of Plaintiff as the platform of Myspace allowed the users to upload and share files which were under the authorisation of plaintiff.
- The suit was filed for infringement under section 51(a)(i) and section 51(a)(ii) of the Copyright Act, 1957.
- The plaintiff claims that in year 2007 there was a non-disclosure agreement signed between the plaintiff and the defendants, following which there were discussions with regard to the defendants procuring a license from the plaintiff to display the plaintiff’s copyrighted material.
- However, there arose a dispute between the parties and the material of Plaintiff continued to be on the website of the Defendant even without any licence.
- A legal notice was sent by the Plaintiff to the defendant to take down the material to which the reply received by the Defendant provided that the material has been taken down.
- A few months later, the Plaintiff found that the material was not taken down despite the assurance from the Defendants.
- Dissatisfied with the assurances of the defendants the plaintiff filed the present suit before the Delhi High Court; the plaintiff also sought interim relief before the same court.
- Whether the act of the defendants of publishing the plaintiff’s copyrighted work on its website without any license or authority would amount to infringement under Section 51 (a) (i) the Copyright Act, 1957?
- Whether the act of the defendants of providing a place for its users to communicate work to the public for its own profit would amount to allowing the place to be used for infringement under Section 51 (a) (ii) of the Act?
Contentions by Parties-
- The first argument advanced by the Plaintiff was that the act of the Defendant of using the copyrighted works of the Plaintiff without licence or authority was in violation of Section 51(a)(i) of the Copyright Act, 1957. He further stated that there is no royalty paid and hence there is a loss to the owner of the work being communicated to the public.
- The other argument provided that the act was in infringement of section 51(a)(ii) as it provided the users with the webspace amounting to a ‘place’, making communication to public and making profit out of such infringement.
- The act of Defendant was explained as a commercial model by the Plaintiff as the act of the defendants were reaping them profits from all the advertisements made by them alongside the sound recordings and the cinematographs works of the plaintiff.
- The Plaintiff submitted that the act of the Defendant does not fall within the ambit of exception of Section 51 (a) (ii) of the Act as the defendants are doing the infringement with knowledge and also, they have a reason to believe that such acts would amount to infringement of copyright.
- The act of the Defendant was further provided to be infringing the right of the Plaintiff guaranteed under section 14 of the Copyright Act, as the work communicated to the public at large by the Defendant without any authorization from the owner of the work i.e. the Plaintiff.
- They further submitted that the “notice and take down” alternative which has been suggested by the defendants do not mitigate the wrongs of the defendants and is not a sufficient safeguard for an infringement which occurs on day to day basis.
- The Plaintiff further denied the argument of the Defendant made with regards the safe harbor provisions and provided that the matter needs to be decided upon the existing legal position and the law of the land and not as per the US Digital Millennium Copyright Act.
- The first argument of the Defendant was that the court lacks necessary territorial and personal jurisdiction to entertain and try the proceedings against the defendants who are carrying on business, residing and personally works for gain in the United States of America.
- The Defendants stated that the arguments raised by the Plaintiff by stating that the plaintiff is seeking the general kind of injunction which is impermissible in law as there must be specific acts complained of for infringement to happen as the act for which infringement is provided has not been committed and was to come into future after authorization.
- It was argued against the contention of the Plaintiff that there is a difference between the infringement of the copyright happening in the physical form or the tangible form and the acts which are done in the virtual world of the internet which are not available in the physical form.
- The counsel further argued that the Defendants online space to the subscribers enabling them to share media online is acting as an intermediary within the meaning of Section 79 of the Information Technology Act, which are not illegal as there existed no specific knowledge that such act would amount to infringement.
- It was further argued that the court should interpret the provisions of the Copyright Act and information technology Act harmoniously wherein the IT Act will come into play in the same manner as that of the safe harbor provisions of US statute which saves the liability of the defendants.
- The defendants provided that the platform on which the material was uploaded was a global platform and it is not possible to monitor each and every activity on the platform and hence, the Defendants cannot be held liable for the impossibility of monitoring each and every content.
- It was further provided that there were no monetary benefits which were gained by the Defendants from the user generated content.
- The Defendants provided that no doubt for such act of communication, the defendants take licence from the user to use, add, delete from or publicly perform or publicly display, publicly perform, reproduce and distribute the said content for the purposes of the website, to avoid any kind of objection, and hence it does not make taking licence for such communication compulsory for the Defendants.
- The Defendant further argued that they have already ensured that its website has measures to remove or prevent copyright infringements.
The Delhi Court bench through MANMOHAN SINGH, J, (2011) 47 PTC 1 (Del) held the following:
- The court found in favor of the plaintiff with regard to infringement under Section 51 (a) (ii), it said that the defendant’s acts could be considered to be prima facie infringement with regard to this provision of law.
- With respect to the defendant’s role of authorizing infringement under Section 51 (a) (i) the court held that this issue was not clear from the matter presented before it, however, there was clear knowledge on the part of the defendants of what they were communicating.
- The court also stated that when the plaintiff informed the defendants about its copyrighted material, the defendants became aware not only of the mode of infringement but also the rights of the plaintiff, and the defendants cannot after becoming aware continue to do the same acts in relation to the work for which no permission has been given to it. If the defendants fail to do what is necessary then they will be placed in the position of an ordinary infringer under Section 51 (a) (i).
- The court passed an interim direction and order, restraining the defendants, agents, representatives, servants, officers or any other persons on the defendants behalf from modifying the plaintiffs work, by adding advertisements, logos, sponsorship to the plaintiffs work and making any profits in any manner, by uploading the same to their webpage without any inquiry into the ownership of such work.
- The Defendants were further ordered not to make such work available to the public on their webpage.
- With regard to future work of the plaintiff being uploaded on the defendants space by those persons other than those mentioned earlier, the court held that, as and when it comes to the plaintiffs notice that any of its copyrighted material is available on the defendants website, the plaintiff shall give the defendants a detailed list of the songs and films available on its website and the defendants shall take action to remove the same within one week from the date of such communication.
- The court also ordered the defendants to take action to check the ownership and updations in the work of the plaintiff through its own efforts and to remove any infringing material or offending content once it gains knowledge of such work being available on its website.
Rule of Law
The provisions of law which was under scrutiny by the Hon’ble court was with respect to the infringement of the right of copyright guaranteed under section 14 of the Copyright Act, by the act of infringement provided under section 51(a)(i) and 51(a)(ii).
It can be concluded that this case is best example to understand that for communication of copyrighted work to the public, it is important to have authorization and licence or else such a communication amounts to infringement of copyright.