RESEARCH address the challenges posed by digitization, though

RESEARCH
PROJECT SUBMISSION

 

INTELLECTUAL
PROPERTY RIGHTS

 

“AN
ANALYSIS OF THE COPYRIGHT (AMENDMENT) ACT 2012”

 

 

 

Submitted
to: Prof. V.K. Ahuja,

Professor
of Law,

Delhi
University

Submitted
by: Aayush Tripathi

 

 

INTRODUCTION

The
Copyright Amendment Act (hereinafter, referred to as ‘The Act’) enacted in the
year 1957 is the oldest piece of legislation in India on Intellectual Property
Right. Like many other Indian legislations, the Act when initially enacted had
a tone of colonial hangover to it as it was heavily borrowed from the Copyright
Act of 1956 of United Kingdom.1 It has been amended six
times in total to meet various national and international guidelines, most
recently being 2012. The Amendment in 2012 was affected primarily due to two
reasons; the first reason being the incessant lobbying by the Indian film
industry to protect the authors of underlying works incorporated in Indian
cinematographic films such as lyricists, music composers, screenwriters etc.2 The process for initiating
this amendment started in the year 2006 itself when an initial draft was posted
on Copyright Office website. Subsequently, a press release on the 24th
of December 2009 was posted by the government on the website of Press
Information Bureau which stated the objectives of the Amendment. It stated
that-

“Amendment is proposed to give independent
rights to authors of literary and musical works in cinematograph films, which
were hitherto denied and wrongfully exploited, by the producers and music
companies. An amendment is proposed to ensure that the authors retain their
right to receive royalties and the benefits enjoyed through the copyright
societies. Another amendment ensures that the authors of the works,
particularly songs included in the cinematograph film or sound recordings,
receive royalty for the commercial exploitation of such work.”3

The
second reason as to why this treaty was brought in was to comply with WIPO
Performers and Phonograms Treaty of 1996 (WPPT) and WIPO Copyright Treaty of
1996 (WCT).4
5 The Internet Treaties were
brought about to address the wave of digitization that had swept across the
globe. The coming of the Internet or the World Wide Web posed significant
challenges to the concept of Copyright and Intellectual Property as various
forms of literary and musical works became easily accessible to the public at
large.6 Also, the definitions of
‘literary, musical and dramatic’ needed to be broadened since Internet had
broadened the various forms of Intellectual Property. It was under this
backdrop that the WIPO Internet Treaties were enacted in the year 1996.

India,
on the other hand, enacted two amendments to the Act during this period, one in
the year 1994 to address the challenges posed by digitization, though it was
able to do so only partially.7 Further, in 1999, the Act
was amended to comply with the provisions of the TRIPS Agreement.

The
author here in this paper will deal with the analysis of major amendments
brought about by the 2012 Amendment Act. This paper will be divided into 5
chapters. The first chapter will deal the amendments related to the authors of
literary, musical and dramatic works incorporated in cinematograph films. The
second chapter will deal with amendment provisions dealing with Compulsory and
Statutory Licensing. The third and the fourth chapters will delve into the
provisions relating to Digital Rights Management and Technological measures
brought about for compliance with the WIPO Internet Treaties. The fifth and the
final chapter will deal various miscellaneous but important amendment
provisions incorporated by the 2012 Act.

 

RIGHTS CONFERRED UPON THE
AUTHORS OF WORKS IN CINEMATOGRAPHIC FILM

The
term cinematograph film as defined in Section 2(f) of the Copyright Act is-

“Any
work of visual recording and includes a sound recording accompanying such
visual recording and “cinematograph” shall be construed as including any
produced by any process analogous to cinematography including video films.”8

Indian
film industry is the largest producer of cinematographic films in the world. A
multi billion order industry, battling the plague of piracy since a long time,
has a complex set up.9 A film is made not just by
directors and actors but by different participants who render their services at
specific points during the making like screenwriters, composers, lyricists,
cinematographers, makeup, costume and set designer etc. After the film is shot
by the director, everything is brought together by the producer who acts as the
captain of the ship. The people behind the entire process of film making can be
categorized into two categories; performers, that include screenwriters,
lyricists, composers, sound recorders, cinematographers etc and secondly, the
people who put money behind the project like the producers, distributors and
financers.10
Historically, the convention has been to pay the performers a lump sum amount
in advance based on their reputation as artistes and their success in the
recent past. The profits made by the film are not shared amongst these
performers.11
Moreover, this convention has led to exploitation of authors of literary,
artistic and dramatic work by the producers where they have not been paid
adequately. Further, to add to their misery, they have to assign their work in
the cinematographic film to the producer without being eligible for royalties
arising out of that particular work in the future as a result of its subsequent
use. The profits made on those works accrue to the producer of the film due to
the work being assigned as a part of a contract made prior to the publication
of the work or as in this case, the release of the film of the work is a part
of.

Further,
in the case of IPRS v. Eastern Indian
Motion Pictures Association and Ors12
it was held that it is the producer of the cinematograph film with whom the
copyright of the work incorporated in the film subsists and not the author of
the literary, musical or dramatic work until and unless there is an agreement
to the contrary. In this particular case, the Copyright Board gave the decision
in favor of the authors and ruled that the authors of the work incorporated in
a cinematograph film will sustain the copyright of their work. The High Court,
later set aside the ruling of the Board by interpreting clauses (b) and (c) of
Section 17 of the Act read with Section 13(4) that the copyright of the work
incorporated in a cinematograph film rests with the producer of the
cinematograph film since it is a work made in course of employment under a
contract of service.1314 Therefore, once a
lyricist or music composer or a writer sanctions the producer to incorporate
his or her work in the film, he cannot later claim infringement of his rights
by the producer. The provision in question here was clause (c) of Section 17 of
the Act which clearly authorized the producer of being the owner of copyright
in case of a cinematographic film.15 This, read with Section
1816 provided an impetus to
the producers to exploit the authors of literary, dramatic and musical works by
paying a onetime lump sum amount and keeping the royalties accruing out the
said work. It was due to the clout enjoyed by these handful numbers of
producers in the industry. A new entrant trying to make his or her mark would
part away with his or her rights just in the expectation of being
recognized.   

The
2012 amendments, a well intentioned piece of legislation was brought forth by
the Parliament after a lot of debate and deliberations. It is pertinent to
mention a Parliamentary Standing Committee Report on the proposed amendments
which took into account points from both the parties. The report titled as the
227th Parliamentary Standing Committee Report on the Copyright Bill
2010 stated the objections raised by various music company associations and
Producer guild associations. One of the objections as raised by South India Music Companies Association
was that the said amendments are in
violation of Article 19(1)(g) of the Constitution of India as they take away
any scope reserved for private negotiations with respect to assignment for the
right to exploit in the future.17  RPG Enterprises-Saregama raised the issue that such amendments if
put into effect would nullify all the existing contracts from the pre-Amendment
era and would threaten the very survival of the entire Indian Music Industry.18 Further, it was the
contention Indian Performers Rights
Society that in an era where technology is growing at a rapid rate, it was
impossible for copyright owners to deduce or know as to what the chief modes of
exploitation would be in the next five to ten years time.19

The
Parliament rejected these contentions and as a result of intense lobbying by
the author’s society the Copyright Amendment Act was brought in the year 2012.
The Act added two provisos in Section 18 of the Act.20 The first proviso states
that the author of literary or musical work shall not waive his or her right to
receive royalties accruing out of their work which is incorporated in a
cinematographic film to the assignee of the copyright other than for
communication of the work to the public.21 Further, the fourth
proviso to the section was incorporated according to which the author of a
literary or musical work which was part of the sound recording but not
incorporated in the cinematographic film shall not assign or waive his or her
right to receive royalties to be shared on an equal basis with the assignee.22 Also, a proviso was added
in Section 17 of the Act which rendered the authors of the literary and
dramatic work incorporated in a film as the first owner of the copyright.23 

  

 

 

 

 

 

COMPULSARY AND STATUTORY
LICENSES

Copyright
licenses have been categorized into voluntary and non-voluntarily. In the former,
the owner voluntarily enters into an agreement as the licensor and in the
latter, it is imposed on him. The latter is also called a compulsory license or
a statutory license. The amendments of 2012 inserted certain new kinds of
non-voluntary licenses which were absent in Act.24

Earlier,
four provisions dealt with compulsory licenses among which, the scope of
Sections 31 and 31A have been widened. Additionally new non-voluntary licenses
have been inserted in the following areas:

·     
Creation of cover versions25

·     
Broadcasting26

·     
Making accessible copies of
copyrighted works for the benefit of disabled persons27

These
were earlier mentioned in the 2010 Bill but the provision on creation of cover
versions is the only provision which has been retained as in the 2010 Bill.
Compulsory licenses which were present in the earlier Act mirrored the
provisions in the Appendix of the Paris Act of the Berne Convention. Therefore,
speculations were made regarding the amendments leading to violation of India’s
obligations under the Berne Convention. However, Article 9(2) provides a wide
scope for States to adopt domestic legislation which allow reproduction in
certain special cases where the reproduction does not

      i.        
Conflict with a normal
exploitation of the work

     ii.        
Unreasonably prejudice the
legitimate interests of the author

Section
31 was earlier a restricting section whereby, a copyright owner could put a
blanket prohibition on the republication or performance of her/ his work unless
a charge was paid. Complaints could be filed against these withheld works to
the Copyright Board wherein, the Board could decide issues on the
reasonableness of the price charged by the owner for broadcasting the same.
However, the amendment to this provision made two sweeping changes to this
provision:

      i.        
A compulsory licence could be
granted under Section 31 not only in respect of Indian work but also in works
of other jurisdictions; and

     ii.        
The grant of compulsory licence
is allowed under the Section not only to the complainant but to any other
person(s), who, as per the opinion of the Copyright Board, were or are
qualified to publish the work.

Section
31A discusses the grant of compulsory license with respect to unpublished
Indian works. The amendment to this Section widens the ambit of the Section to
Indian and foreign unpublished works which can be granted compulsory licenses.

In
contemporary times, creation of cover versions of parts of movies has gained
traction. A well-thought out non-voluntary license was created with respect to
this. A statutory license has been created relating to this by Section 31C
similar to the license under Section 52(1)(j) of the earlier Act.

Section
52(1)(j) which existed earlier, was deleted with the amendment since the number
of litigations relating to creation of cover versions only went on to highlight
the ambiguity in the impending provision. While, it seemed like the Section
allowed the creation of cover versions without the consent of the copyright
owner, this was not the intention of the legislature.

Section
31C clarifies this by seeking to provide statutory license to persons who wish
to make cover versions of sound recordings of literary, dramatic or musical
works. This is with respect to works that have been made with or by the consent
of the copyright owner of the work in the same medium as the last recording.
The medium can be changed if the medium of the last recording is no longer an
existing commercial use.

Section
52(1)(j) was in the form of an exception while Section 31C is a creation of a
statutory license. 31C also requires the creator of the cover versions to keep
a full account of the existing stock which may be inspected by the copyright
owner.

A CL
has also been created for the benefit of disabled persons. Works may be made
available under compulsory license for the benefit of disabled persons. This is
facilitated by an application by an eligible organization with the Copyright
Board for the aforementioned purpose. This must be disposed expeditiously, and
the Board must consciously attempt to dispose it within two months from the
date of application after conducting an inquiry into the good faith and
credentials of the applicant. The copyright owner must also be given a fair
chance to be heard before deciding on the matter.

On the
subjective satisfaction of the Board as to the requirement of issuing of the
license for the benefit of the disabled persons, the licensee must specify the
means and format of publication the period for which the license may be
utilized and if it is a case of issue of copies, the number of copies which may
be issued. The Board may specify the number of copies that may be made without
payment of royalty and fix the rate of royalty for the remaining copies. The
Board also has the power to extend the period of such licensed and to allow
issue of more copies.

WIPO AND WPPT

·     
Performer’s
Right

The
Amendment Act has added a proviso to the definition of a ‘performer’ in Section
2(qq) and thereby modifying the concept of performer with respect to the Act.
According to it, any person whose performance in a cinematographic film is
incidental or casual to the film and his or her name isn’t included in the
credits of the film will not be considered a performer with respect to that
particular cinematographic film.28 Further, a new provision
has been added29
according to which a performer has a right over his performance with respect
to- 

“(a) To make a sound recording or a visual recording of the
performance, including-

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

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

(iii) Communication
of it to the public;

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

(b) To
broadcast or communicate the performance to the public except where the
performance is already broadcast.” 30

 

·     
Moral
Rights

The
Amendment Act has provided for moral rights of the authors in two places;
namely Article 38B and Article 57 of the Act. Under the former, even if a
performer has assigned the copyright of his performance to someone else, he or
she can “claim to be identified as the performer of his performance except
where the omission is dictated by the manner of use of his performance.”31 Further, under clause
(b), the performer has the right against distortion of his work whereby he or
she can claim damages in case if his performance has been mutilated which will
be detrimental to his or her reputation as a performer.32 The latter provision has
been amended to comply with Article 5 of the WPPT33 whereby moral rights have
been given to the author due to the threat of digitization which can lead to
alteration of their work. However, the explanation of the section gives freedom
to the editors to do their without any hassle.34 Further, the rights
provided under this section can be claimed even by the legal representatives of
the author.35

 

 

 

 

 

 

 


Anand Nair, Royalties and Right sharing in Film Industry in India Post
Copyright Amendment Act 2012- Impact on Contractual Freedom : A Comparative
Study with the US and the UK Copyright Regime, https://poseidon01.ssrn.com/delivery.php?ID=024094113006076083067094083093004102099074018037042059108092069004025002107091097074121060123119021098114122084002090083103117027080071064004076004082113006081110059087060118019010093115117114088031121117026089091124085007124072123003118095088029124&EXT=pdf (Last accessed on 15th
November, 2018 at 12:30 P.M.)

2 Nandini Saikia, Film Music and Indian
Copyright Law (2010 to 2012) (Available on https://poseidon01.ssrn.com/delivery.php?ID=333026086024085029030080028069124093053092066027063087014082077064068075100107098006097025058123057012116084116120094095078071122015029086009004081004000120080092119090058007100015099090124112127014026069107123066107086104004007019112122004122027022105&EXT=pdf) (Last accessed on 12th
November, 2018 at 11:55 P.M.)

3 Ibid

4 Also known as WIPO Internet Treaties.

5 Zakir Thomas, Overview of the changes
to the Indian Copyright Law, Journal
of Intellectual Property Rights, Vol 17, July 2012, pp 324-334 at page 324.

6 Ibid

7 Ibid

8 Section 2(f), The Copyright Act, 1957.

9 Supra, note 1 at page 6.

10 Supra, note 1 at page 6.

11 Though this is not entirely true since
big actors like Aamir Khan, Shahrukh Khan, Salman Khan, Akshay Kumar etc. join
the film not just as actors but also as producers and take a share in profits
of the film. However, it is the background performers like lyricists, composers
and screenwriters who are the actual sufferers since they have to part with
their copyright on their works by way of assignment and thereby get no access
to the royalties accruing out of their work incorporated in the film in the
future.

12 IPRS v. Eastern Indian Motion
Pictures Association and Ors 1977 AIR 1443.

13 Section 17(c), The Copyright Act,
1957 (Pre 2012 Amendment).

14 In a ‘Contract of Service’, the employer
enjoys a master-servant relationship with the employee as unlike a ‘Contract
for Service’ where the employee is treated as a mere independent contractor.

15 Supra, note 12.

16 Section 18 of the Act deals with the
assignment of copyright. It is under this section that the lyricists,
screenwriters and music composers assigned their copyright to the producer.

17 Department Related Parliamentary
Standing Committee on Human Resource Development, Two Hundred Twenty Seventh
Report on The Copyright (Amendment) Bill, 2010, November 2010 on Page 23.

18 Ibid at Page 24.

19 Ibid at Page 24.

20 Proviso 3 and 4, Section 18(1), The
Copyright Act, 1957.

21 Proviso 3, Section 18(1), The
Copyright Act, 1957.

22 Proviso 4, Section 18(1), The
Copyright Act, 1957.

23 Section 17, The Copyright Act, 1957.

24 Supra note 2, at page 33.

25 Ibid.

26 Ibid.                          

27 Ibid.

28 Proviso to Section 2(qq), The Copyright
Act, 1957.

29 Section 38A, The Copyright Act, 1957.

30 Section 38A, The Copyright Act, 1957.  

31 Section 38B(a), The Copyright Act,
1957.

32 Section 38B(b), The Copyright Act,
1957.

33 Section 5 of WPPT contains Moral Rights
of Performers.

34 Section 57, The Copyright Act,
1957.

35 Ibid.