Categories
Copyright Media

How Can News Publishers Best Protect Their Content? The US Copyright Office Explores Options

This past October, the US Copyright Office (USCO) announced it would be undertaking “a public study to evaluate the effectiveness of current copyright protections for publishers in the United States, with a focus on press publishers.” The study, announced in the Federal Register, included a request for written submissions along with inviting stakeholders to participate in a virtual roundtable to be organized by the USCO. That roundtable was held last week, on December 9.  The inquiry was triggered by a Congressional request in response to ongoing financial challenges facing the news industry (over the past decade, a decline in the number of newsroom employees by 40 percent and the closing of one in five newspapers in the US), while at the same time online news aggregators have come to dominate the market for digital news consumers while controlling the digital ad market.

One of the concerns of news publishers is that, for many readers, the aggregators such as Google News provide a substitute for the publisher’s websites. Consumers can get sufficient information to satisfy their needs from the high-level excerpts posted by the aggregators without clicking through to the original source material. This creates a situation whereby those who invest the time, effort, and money to produce the news–not just reporting on facts but the storytelling that requires knowledge, expression and editorial decisions–derive only limited benefit while the lion’s share of audience attention, and thus ad revenue, goes to the aggregators. In effect, these platforms get a free ride. (The aggregators don’t view it that way, claiming they are providing a service to news providers by making their content more discoverable and that content providers can opt out of aggregation at any time).

While noting that current US copyright law provides several means by which news publications can protect their content, the USCO “Notice of Inquiry” reviews developments outside the United States with respect to the problem of free-riding by news aggregators. These actions fall into two categories. The first is ancillary copyright where news publishers have been given additional “neighbouring” rights, such as the exclusive right to make their work available to the public for commercial purposes. This is in addition to whatever other rights publishers may already hold under copyright such as rights to articles written by journalists, or photographs, where rights have been assigned. The press publication right is intended to provide the publishers with additional leverage in their negotiations with online platforms over the use of news content.  The poster child for ancillary rights is Article 15 of the EU Copyright Directive that provides news publishers with the right to authorize (or prohibit) reproduction of their content for two years following the date of publication. There are exceptions built into Article 15 such as non-commercial use, linking without reproduction, and limits on substantiality; individual words or very short extracts are exempt. EU member states are required to implement Article 15 in national law by mid-2022.

France was the first EU country to do so, and it is not coincidental that it is in France where a major struggle took place between news producers and Google. France backed up the provision of ancillary rights to news publishers with the application of competition law. Google was required to negotiate “in good faith” with French news providers and despite reaching agreement in January 2021 with some French publishers to pay for content, it was fined €500 million for its negotiating tactics. (Google is appealing). Recently it signed a five year deal with Agence France Press (AFP), one of the holdouts from the January deal.

The second international development noted by the US Copyright Office is the use of competition law to require negotiations between the dominant platforms and news producers. Australia is the most prominent example of a successful outcome using this approach. Both Google and Facebook dragged their feet and played chicken with the Australian competition regulator, the Australian Competition and Consumer Commission (ACCC), before finally beating a strategic retreat and reaching content deals with the majority of Australian media providers, both small and large. (For more on this saga, see here, here and here). Australia’s approach is not copyright based but it has been effective. Canada has stated that it will soon introduce legislation along the lines of the Australian model to deal with the news media/digital platform imbalance.

The USCO roundtable on December 9 brought together the “usual suspects” (aka key stakeholders) to explore the issues outlined in the Notice of Inquiry and to respond to questions posed by Copyright Office moderators. Among those represented were the News Media Alliance, Google, the Copyright AlliancePublic KnowledgeNational Writers Union, representatives of the computer and telecommunications industry, academics, library representatives and legal experts. The roundtable examined a number of questions, including whether news content “scraped” by the platforms, such as headlines and snippets, was protectable under US copyright law, and if so, how fair use would apply.

Google took the position that news snippets are excluded from copyright protection, based on the “words and short phrases” doctrine spelled out in an interpretive bulletin issued by the USCO. However, Columbia law professor Jane C. Ginsburg, a noted copyright expert, demurred, arguing that the doctrine hinges on originality, not brevity. She pointed out that not only are photos, which are often included with news snippets, protected but that headlines can also be protected because of their originality. Examples were given of the same news story headlined in a number of different ways, using creativity and originality to catch reader attention. As to whether use of such snippets constituted fair use, there was considerable disagreement over how the four fair use factors would apply to such content. For those who don’t follow US copyright law, the four factors used in judging whether or not a use is fair are; the purpose and character of the use; the nature of the copyrighted work; the amount (substantiality) of the portion used; and the effect of the use on the potential market for, or value of, the work. With respect to the third factor (substantiality), both quantity and quality are considerations to take into account. As for the question of impact on the market, News Media Alliance argued there was substantial revenue diversion.

Considering that a substantial element of the USCO’s study is to examine the potential applicability of Europe’s ancillary copyright regime to the US, there was surprisingly little appetite for such a solution even from the principal potential beneficiary, the news content industry as represented by the News Media Alliance (NMA). In response to questions as to how the new press publishers right is working in Europe, the NMA’s response was that it is too early to tell. That said, it would not object if the right were extended to US content producers in Europe. At present, the new benefit is applicable only on a reciprocal basis and as a result, EU member states will not extend the press publication right to US content providers unless the US enacts a similar law. One solution proposed by the NMA is for the US to try to bring the right under national treatment if and when a US-EU trade agreement is ever negotiated. This would give US content providers the benefit of the European law even if the US failed to offer a similar provision. Any negotiations are a long way off, however.

Instead of pushing for additional ancillary rights, NMA is advocating primarily for greater ability to enforce existing copyright law as well as for an anti-trust exemption that would allow newspaper owners to be able to bargain collectively with big online platforms like Google. This exemption is currently before Congress in the form of draft legislation, the Journalism Competition and Preservation Act. If news industry to platform negotiations were to take place, they could involve not just payment for use of content but also access to audience data relevant to advertising, another concern of the publishers. With respect to existing copyright law, one area that could be improved for news publishers would be easier registration of “dynamic webpages”. Dynamic pages are the norm for news providers today, as news is continuously updated throughout the news cycle. While registration is not required to establish copyright, in the US registration is required for US citizens if they wish to bring legal action for infringement of a US work, thus difficulty in registering impedes enforcement action.

Regarding Google’s argument that news providers can opt-out of its content aggregation services, NMA’s position is that its members have neither authorized nor consented to the scraping of content by Google but opting-out is not really a choice because of the dominance of the platform. The ability to opt-out is a “Hobson’s choice”, an illusory rather than an actual choice. Either the content is buried and not found by readers, or else it is found by readers on an aggregation site but little or no benefit accrues to the content provider.

This is only a partial summation of the arguments pro and con but gives a flavour of the debate. The challenge facing news providers is complex, and likely no single remedy will suffice. There is also a wide disparity of views with–generally speaking–the internet platforms and tech companies on one side and content providers and the copyright community on the other, with other players taking various positions along the spectrum. All seem to agree that a healthy news and journalistic sector is vital to the preservation of democracy; debate centres around the source of the problems facing journalism and the solutions.

What happens next? Another round of written submissions to the USCO has been called for, due in early January 2022. After that, presumably the Office will report back to Congress with its conclusions. While the solution is not clear, judging by the submissions received so far and the discussion at the roundtable, it will likely not include establishment of a new ancillary copyright for press publishers in the US. What is clear, however, is that there are major challenges when it comes to the continued economic sustainability of professionally created and curated news sources, and the unlicensed use of news content by online aggregators is a significant part of that problem. Solutions are required. Given the ongoing efforts to come to grips with this issue in a number of countries, (and the ability of the quasi-monopoly platforms to comply when they find they have to), I find it hard to believe that the US will not be able to find a satisfactory way to ensure that news providers are dealt with fairly when it comes to the use of their content by dominant internet platform aggregators.

 

This article was first published on Hugh Stephens Blog

Categories
Copyright

COPYRIGHT AND THE “BUSINESS OF ISSUING LICENSES”: IP’S LEVIATHAN FROM INDIA- Analysis of the Madras HC judgment in Novex Communications Pvt. Ltd. v. DXC Technology and ors.

In a very interesting precedent from the Madras High Court, M/s Novex Communications Pvt. Ltd., a company which sometimes acts as an “agent” and sometimes “owner” of the right to “on ground performances” of the catalogues of several music labels (contracts available on its website here), has lost its motion for infringement against defendants who were alleged to have not obtained licenses from Novex. The Madras HC has held, as a preliminary issue in a suit for permanent injunction, that the entire cause of action in the suits are misconceived since Novex has no rights to issue such licenses, given the statutory bar stipulated under Section 33 of the Copyright Act. For more on the background and the facts of the dispute, see part 1 of the post here.

It is important to firstly note the ‘rights’ which Novex claims to own and act upon. The main right, that Novex claims arises from section 14(e)(iii), i.e., the right to communicate a sound recording to the public. Assignment agreements and agency contracts on its website, indicate that various recording companies, who own such “master” rights have assigned/authorized the same to Novex, in return of a consideration, to handle “collections” through the on-ground performance/communication of its catalogue.

The main statutory provisions which came up for consideration while deciding whether Novex actually does have the statutory ability to issue such licenses, and who are the stakeholders that need to be taken care of in respect thereof are – Sections 18, 30, 33 and 35 of the Copyright Act. The Madras High Court has primarily focused its interpretation on Section 33 of the Act, however, has notably referred to these other provisions in arriving at its conclusion on the lis. 

However, before getting into Section 33, it is essential to analyze the purport of Section 30 of the Act. Section 30 provides that the “owner” of copyright in any existing work can issue licenses to use/reproduce/communicate the work in writing, themselves, or through “its agent”. This is important, as most of the labels have either appointed Novex as “authorized agents” under this section (see contract with YRF) or have assigned these set of rights (in relation to on ground performances) in the favour of Novex for some consideration (see contract with EROS). The whole idea is for these labels/ master right holders to avoid the hassles of individually issuing licenses, and rather approaching an agency which is “in the business” of issuing licenses, for a more de-centralized specialized system, based on a contractual relationship.

Now, here comes Section 33. Section 33, in its statutory language, deals with the Registration of Copyright Societies with the Central Government. The intent of this section, as can be seen from a perusal of Section 33(3) and Section 33(4), is clearly regulatory, and a step away from the lassez faire setup. The Parliament, conscious of the pitfalls of allowing private “collections” in the domain of copyright revenues and given the varied number of stakeholders involved in the communication of one song/one copyrighted work, has taken a step back from free market economics and consciously attempted to regulate the business of “issuing licenses” and tracking revenues that are received from copyrighted works. At this stage, it may seem that this comes out as a violation of the “fundamental right to trade and profession” in respect of one’s “property” (often analogized with Intellectual property, these days, albeit wrongly), however, it needs to be made clear that this fundamental right is not absolute (in the context of Copyright, see ENIL v. Super Cassettes (SC)). It is subject to regulatory constraints on business in the “interests of the general public” which would include the economic interests of the author class as well as the interests of the general public to “experience” the works, at a reasonable rate, which is “overseen” by the Central Government, in pursuance of Chapter VII of the Copyright Act.

Even in the Copyright Amendment Bill 1992, which resulted in the incorporation of Chapter VII, the Statement of Object and Reasons clearly show the regulatory intent in the “interests of the general public” which is a reasonable restriction, as per Article 19(6) of the Constitution on the fundamental rights of trade and business in Article 19(1)(g) of the Constitution. Even the “notes to clauses” to the said amendment clearly shows the following:

This clause seeks to substitute new provisions for Chapter VII to make provisions for copyright societies in respect of any kind of right and to make adequate general provision of the registration and management of such societies in the interests both of authors and of other copyright owners for whom it would be impracticable or uneconomical to license the use of their work individually to all users, or to collect fees from them, and also in the interests of general public and particularly of users of rights who may not conveniently be able to obtain licenses from individual authors or copyright holders; and thus to improve the enforcement of copyright which benefits both to the holders of rights and to general public.”

Finally, such a regulatory attitude towards works which are definitive for culture and are regulated by Copyright can even be traced to the 1957 Copyright debates, where as a justification of governmental regulation in free market exploitation of Copyright, analogies were drawn by the parliamentarians to restricting business rights in the following way:

“I may point out that in the case of property, we do not permit people to charge any rent they like; in the case of any industry, we do not permit the industrialists to make any profit they like. We restrict them. In society, the right of every individual is restricted, and likewise, the right of authors, and the rights of musicians should also be restricted.” 

Perusing Section 33 of the Act also shows that the Central Government, has statutorily, been given the responsibility to oversee the manner in which licenses are issued, and as to whether they are in consonance with the interests of the authors, owners and the general public or not. There is also a requirement for people, registered as a copyright society, responsible for issuing licenses and collecting “collections” thereto, as a sole activity – to publish their tariff schemes, and there are remedies for those who have issues with the same (tariffs), in accordance with law. The Copyright Rules also provide responsibilities qua transparency for these societies which are to issue licenses en masse.

This is where the “oversee” intent of the statute come in. The statute also provides the ability for courts to fix license rates, which again shows the regulatory intent. Finally, the manner of distribution of fees and tariffs received, is also provided and overseen, in accordance with the requirement under Section 36 of the Act to submit reports and returns, to analyze the fairness in functioning in the interest of copyright stakeholders as well as the general public.

To further buttress this intent, Section 33, sub section (1) starts with the phrase- no person or association of persons shall commence or, carry on the business of issuing or granting licenses in respect of any work in which copyright subsists, unless registered in accordance with Section 33(3). The important features here are:

1. Bar to conducting “business of issuing licenses” – a conscious regulatory bar and curb on the right under Article 19(1)(g), in the interest of authors/owners and the general public – as can be ascertained from a perusal of notes to clauses as well as drafting history.

2. “In respect of any work” – a conscious inclusion of all works protected by Copyright, irrespective of them being works with all rights under 14 or only with neighboring copyrights under 14(d) and 14(e).

3. Except under or in accordance with registration granted under sub-section (3)- clear regulatory overlay- wherein no one who is unregistered is to not be recognized

The website of the Plaintiff- Novex, to the contrary clearly says that it is engaged in “the business of giving public performance rights in sound recordings”. How is this legally tenable? Here come the provisos.

Novex communications, as its business model has crafted a very interesting strategy, which may even qualify the literal interpretation test of the statute. What Novex does is that it gets  what it calls-  assignments of the rights essential to issuing such licenses, in its favour, or becomes an authorized agent, triggering the protection under Section 30 of the Act, as well as the first proviso to Section 33(1) of the Act which says that the owner of the Copyright shall, in his individual capacity, continue to have the right to grant licenses in respect of his own works consistent with his obligations as a member of the registered copyright society. By using what it calls assignments in its favour, or agency contracts from multiple copyright owners, Novex is a prime example of using the “individuated autonomy” granted in favour of copyright holders (to continue to operate in 2 ways- through a society and individually) to issue licenses, as its business, bereft of the regulatory oversight by Central Government.  The Madras High Court has held that this squarely goes against the intent and purport of the statute, which aims to consciously control the tariffs, and “oversee”, in the general interests of the public, the functioning of en masse issue of licenses of works.

In any case, whether these agreements purportedly transferring “ownership” rights in favour of Novex, are in fact assignment agreements under Section 18 and 19 of the Act, should have been deeply analysed by the Court. Merely because Novex calls it so, and so do the Copyright owners, it would not really qualify as an assignment of the right to communicate the sound recording to the public. The Court should have gone deeper into the question as to whether these agreements which Novex relies upon are assignment agreements, in terms of the requirements of Section 19 of the Act or not.

This judgment of the Madras HC is however not settled law. Importantly, there are various orders in favour of Novex, wherein it has been recognized by Courts as a legal entity. The primary reliance that Novex places to justify its business is on the judgment of the Delhi High Court, through J. Valmiki Mehta, in Novex v. Lemon Tree Hotels, where it was held, placing reliance on the amended second proviso to Section 33, which was brought in 2012, that the restriction of issuing licenses only through Copyright societies is only qua underlying works in a sound recording and not on the sound recording itself. Further, if owners are prohibited from issuing assignments/agency contracts, in favour of Novex for issuing licenses, it is a violation of the first proviso. Even recently in a case titled PPL v. Canvas Communication, J. Harishankar of the Delhi HC, has in his prima facie view, upheld this precedent, and disagreed with the judgment of the Madras HC, it being one from a coordinate bench of the same court. This, however, is a prima facie view, and can only be relied for prima facie reliefs, like interim orders.

My Opinion

In my opinion, the clear statutory intent which comes out of these provisions referred above is governmental regulation, as against conduct of business of issuing licenses in a free market setup. But for the existence of a copyright society in all classes of works in the Act, no company can in fact do business in issuing licenses. There are only two ways of issuing licenses- either through a registered copyright society in terms of the Act, or by the owner, in his individual capacity, i.e., not as a license issuing business on behalf of many owners. Any other entity, which is not registered in terms of Section 33, and is doing the business of issuing licenses, is in the purport and intent of the Act, in my opinion- illegal. The reason for this, from a perusal of the debates, seems to be “general interests of public”, wherein exorbitant license fee cannot be charged by license holders through their businesses, for access to copyrighted works. A question might seem apposite here- why will someone do business if there are so many hassles. Well, it’s not just monopoly holders that do business. The intent of the Act, which provides a complete monopoly in its subject matter, is to regulate the same, in a manner conducive to the interests of the general public. Monopoly is a step away from the idea of free market economics itself, and hence defending its operation completely using free market logics, is an oxymoron.

In my opinion, the opinion in Novex v. Lemon Tree of the Delhi HC, misses two important aspects of interpretation, which the Madras HC has gotten right. In relation to the second proviso, the interpretation of the Delhi HC ignores the use of the word “all works” in Section 33, which clearly shows the intent that all businesses of issuing licenses, ought to be registered in terms of the Act, irrespective of whichever work it is for. Further, the second proviso in my opinion is merely a clarification in the 2012 amendments, wherein for the first time, in Sections 17 and 18, a statutory difference was established between underlying rights in works incorporated in sound recordings. It is merely a clarification that even in cases of underlying musical, artistic, literary works incorporated in a sound recording, licenses can only be issued through a registered society and not otherwise. It is not, in my opinion, the intent of the drafters, to completely erode the value of the word “all” in Section 33, by restricting its application to underlying works and by keeping sound recordings away from the requirement of registration. The amendment in 1992, which brought in the idea of a registered society, was not just for the benefit of underlying work authors, but rather in the general interests of the public, where access to copyrighted content cannot be held at the mercy of the rates fixed by monopoly holders, who are in fact conferred a monopoly by the statute itself.

Secondly, in relation to the first proviso, in my opinion such use/interpretation of the first proviso is clearly in ignorance of the use of the phrase “in its individual capacity” and is an interesting use of the drafting of the statute by Novex to bypass the (intended) regulatory interference in the right to conduct business of issuing licenses.

All faults however cannot really be attributed to Novex.

The Central Government has been extremely lackadaisical in approving copyright society registrations, specifically in respect of societies in the realm of sound recordings. RMPL is the only society existing and was registered after 9 years of the Amendment to the Act (see more here),  and PPL has been fighting long standing litigations for revival and legitimacy in its existence (see here). In such a situation, where there is clear regulatory lethargy, the regulatory purport “in the interest of general public” has almost led to a situation where it is these interests which are in fact sacrificed, specifically qua owners of sound recordings/ master rights who inject substantial investment in their works, and are, in effect, forced to individually manage the licensing of their own catalogue due to this regulatory incompetence.

Copyright owners are now found in an uncertain situation where they don’t really know what to do. The government is not really processing applications for registrations of societies, the Courts are divergent in their views, and everyone is confused as to how to go ahead issuing licenses, without it being a hassle to their business of owning master rights and investing in music production. Pointedly however, it is trite to be noted that they can still individually issue licenses – though it may be inconvenient.

It’s a situation similar to the leviathan that Amy Kapczynski spoke of here:

“Can we conceive  of—even  if  we  cannot  easily  achieve—a  state  that  is  capable  of  constraining  the  proliferation  of  exclusion  rights  in  information  and  that  can  support  social  ordering  beyond  markets?  Is it  possible  to  imagine  a  state that could temper the tendencies of certain market formations to promote ghastly  inequality,  environmental  collapse,  and  political  corruption  of  the  first  rank?  If the  answer  is  no,  then  we  should  fear  grievously  for  our  collective  future.  In that  case,  the  market  and  the  commons  will  not  be  able  to  save  us  from the neoliberal Leviathan, and the future of ideas will be bleak indeed.”

Therefore, I believe, that although legally sound and a step in the right direction, this judgment of the Madras High Court could have done much more and is therefore disjuncted from reality. Hopefully the Bombay HC, which has recently issued notice in a case concerning a similar issue (PPL v. The Royal Fusion Café and Lounge and ors.), address these issues.

 

This article was first published on IPRMENTLAW

Categories
Copyright

Some Copyright Highlights in 2021-Around the World and in Canada

It seems as if it was only a few weeks ago that I was writing a similar summary for 2020, the “annus horribilis” when COVID first hit us, but in fact it was 51 weeks ago yet many of the same pandemic and copyright-related issues that I wrote about last year are still with us, albeit in somewhat modified form.  This time last year, creative industries were just starting to come out of a series of lockdowns that decimated many genres, especially those involving live performances. Others were making the transition to “virtual” performances and delivering content online. The early rollout of vaccinations gave hope that 2021 would be a better year, one where we turned the corner on the pandemic. That seemed to be generally the case until the Omicron variant reared its head in late November and now, at the time of writing, we seem to be going backwards again.

There is no doubt that 2021 was a challenging year for creators, although there were some bright spots. At the end of December 2020, in the United States the CASE Act became law. This legislation finally provides a simple means for individual rights-holders to enforce their rights in the US without necessarily resorting to litigation. A three person tribunal, the Copyright Claims Board (CCB), will be established within the US Copyright Office to deal with small copyright claims, potentially avoiding costly and lengthy litigation, assuming both parties agree. That’s the good news. The not-so-good news is that establishment of the CCB has been delayed beyond the expected date of implementation, December of this year, to 2022, in order to ensure that all runs smoothly. Still, a few months delay for this alternative dispute resolution forum for small copyright claims will be worth the wait.

Online Platforms vs News Media Providers

Australia

One of the big stories in 2021, echoing developments a year earlier, was the issue of payment to news providers for use of their content (snippets, headlines and small excerpts) by online news aggregators and social media platforms. While the issue is still unfolding in several countries, there were significant developments on this file in 2021 in both France and Australia, despite both Google and Facebook fighting long and hard against any obligation to license content from news providers. In Australia in particular, this pushback took the form of attempts to mobilize Australian public support against the Australian government, forcing it to back away from legislation that would give the competition regulator, the Australian Competition and Consumer Commission (ACCC), power to enforce new regulations under the News Media Bargaining Code. This code requires Google and Facebook (and only them because of their market dominance) to license Australian news content that they use in their search or social media offerings. While the threat of legislation finally got Google to start negotiations with some Australian media providers, its dominant position made it difficult for news providers to negotiate reasonable terms. The Australian legislation, therefore, threatened to impose “final offer” arbitration.

Google went ballistic, but its pressure campaign failed spectacularly. Likewise, its attempt to enlist the support of the US government flopped when Microsoft stepped in and stated it would be happy to comply with Australia’s terms. In the end, determined government action resulted in an outcome that both the Australian government, Australian media and apparently Google can live with. Facebook tried its own pressure tactics, blocking all Australian news on its newsfeed in Australia. The result, which I detailed in my blog posting (“Facebook in Australia: READY, FIRE, AIM”), was a classic climb-down. Facebook retreated, restored newsfeeds, and entered into talks with the Australian government. Miraculously, they were also suddenly able to strike content deals with Australian media.

France

Likewise in France, strong government action to enforce the new neighbouring right for press publishers established by Article 15 of the EU Copyright Directive, has achieved what earlier proved impossible in both Spain and Germany. In those countries, Google either shut down or threatened to shut down Google News and kick off the platform any news providers who objected to Google’s unlicensed use of their content. In France, the Competition Bureau stepped in, fining Google €500 million for failing to bargain with news providers “in good faith”. With this “encouragement”, Google has managed to reach content deals with many French publishers, the most recent being with press agency Agence France Press (AFP) just last month.

Canada

These content deals provide an important demonstration effect for other countries in their dealings with the dominant platforms. Canada has announced that it intends to bring in legislation to deal with the issue. The mandate letter for the new Minister of Canadian Heritage, dated December 16,  instructs him to,

“Swiftly introduce legislation to require digital platforms that generate revenues from the publication of news content to share a portion of their revenues with Canadian news outlets to level the playing field between global platforms and Canadian outlets. This legislation should be modelled on the Australian approach and introduced in early 2022.”

This promise of action is at least partly in response to an active campaign launched by Canada’s news media advocacy organization, News Media Canada (NMC) this past June. NMC published an “Open Letter” to Prime Minister Justin Trudeau in many newspapers across the country urging action against the “predatory monopoly practices” of Google and Facebook.

United States

In the US, the Copyright Office has launched a study to determine whether additional copyright protections (or other measures) are needed to protect news publishers in dealing with the news aggregation issue. Earlier this month, it held a public roundtable to further air the issues. There is also legislation currently before Congress, the Journalism Competition and Preservation Act, that would provide a limited anti-trust exemption to allow US media companies to bargain collectively with the platforms. Some action seems inevitable, but whether it will occur in 2022 remains to be seen.

Access Copyright vs York University

One copyright issue that came to a head in in Canada in 2021 was the ongoing and seemingly never-ending legal dispute between the author/publisher copyright collective, Access Copyright, and York University (Toronto), with York standing in as a proxy for post-secondary institutions outside Quebec. This started out a number of years ago when York declined to renew its licence with Access Copyright for reproducing (copying into course-packs) educational materials, arguing that its use constituted fair dealing. The main legal issue was whether the “interim tariff” established by the Copyright Board of Canada for use of materials in Access Copyright’s repertoire applied to York, in cases where York’s use was not a fair dealing. In 2017, the Federal Court ruled ruled that York was required to pay the interim tariff (i.e. regulated license fee), and dismissed York’s claim of fair dealing. York appealed and last year, the 2017 decision was overturned by the Federal Court of Appeal (FCA). The FCA found that the tariff certified by the Copyright Board was not mandatory insofar as content users like York were concerned. Having found that the tariff was not mandatory, it did not rule on the fair dealing question since York’s fair dealing defence against payment of the tariff was no longer relevant.

Both parties appealed to the Supreme Court. The bombshell dropped on July 30, 2021. The Supreme Court of Canada (SCC) upheld the Appeal Court’s decision that the “mandatory” tariffs set by the Copyright Board of Canada are optional with respect to users of content covered by the tariffs. While not ruling on whether York’s unlicensed use was fair (since with the dismissal of the mandatory tariff question, there was no longer a legal dispute between Access Copyright and York), Justice Abella nonetheless launched into an extensive discourse as to whether the Federal Court in its initial finding of unfairness had taken into account the user’s rights of individual students. Despite the unequivocal finding against York in 2017 that their Guidelines had materially harmed the Canadian publishing market, the interpretive musings by the SCC add significant uncertainty to the issue of what is a fair dealing when post-secondary institutions engage in widespread unlicensed copying of educational materials for instructional purposes.

More damaging that this, however, is the dismissal of Access Copyright’s appeal on mandatory tariffs. The SCC decision upends the basis for collective licensing in the publishing field in Canada, something that had existed for almost 30 years on the premise that the licence fees established by the Copyright Board applied to all users of a repertoire covered by the tariff. Canadian publishers are already facing dire financial challenges owing to the proliferation of uncompensated copying enabled by the addition of “education” as a fair dealing exception in the Copyright Act revisions of 2012. Now the fundamentals of the collective licensing system have been kicked out from under them. The only solution would appear to be an amendment to the Copyright Act, given that Parliament clearly intended to create a collective licensing scheme when it amended and updated copyright legislation in the late 1980s. The fact that it did so in such a way that was open to legal challenge (the FCA and the SCC reached their decision on the non-binding nature of “mandatory” tariffs by examining their origins in the 1930s) suggests that clarity of intent is needed. Review of the Copyright Act is overdue so perhaps this loophole will be closed in future amendments

Copyright Term Extension in Canada

Other amendments to the Act will be required to give effect to Canada’s commitment to extend its term of copyright protection by an additional twenty years, as per Article 20.62 of the USMCA/CUSMA. In February of this year the government launched a public consultation over how the obligation is to be implemented, which must be in effect by December 31, 2022. The consultation focused primarily on how to handle orphan and out-of-commerce works, although copyright opponents have been trying to institute a copyright registration process (an unnecessary bureaucratic obstacle and one that potentially conflicts with Canada’s Berne Convention obligations) as a condition of accessing the extra twenty years of protection. I discussed the consultation process here.

Very recently a new wrinkle has appeared regarding term extension in Canada. You would not think that copyright and electric vehicles have much in common, but when it comes to international trade, everything is linked. The Canadian government is very concerned about a proposal by the Biden Administration to offer subsidies of up to $12,500 per unit to American consumers to purchase electric vehicles. Canada is not against electric vehicles. The problem is that, as currently written in Biden’s gigantic “Build Back Better” bill, the subsidies apply only if the vehicle is manufactured in the US. Canada’s position is that this violates the provisions of the USMCA that established a North American market for automobiles, is an illegal subsidy that will impose a de facto 30 percent tariff on Canadian-made vehicles and will destroy decades of automotive industry integration between the two countries. In a worst-case scenario, if these large subsidies go into effect and apply only to US made vehicles, it could ultimately mean the end of automotive manufacturing in Canada. In an attempt to get the attention of US lawmakers before the Build Back Better bill is passed, Canada has threatened retaliation in areas that could impact US jobs, including suspending some commitments made under the USMCA. One of these is copyright term extension.

This, along with other areas of retaliation, might be sufficient to get the attention of enough US legislators to amend the legislation in this one area, especially if Canada agrees to provide a similar subsidy to Canadians for the purchase of North American manufactured electric vehicles. At the moment it is unclear what will happen. The Biden Administration looks as if it will not be able to pass the bill because of the opposition of Democratic Senator Joe Manchin from West Virginia. Manchin is an unlikely ally for Canada, but his opposition may buy enough time to be able to resolve the electric vehicle subsidy issue, thus allowing the important reform of bringing Canadian and US terms of copyright protection into alignment to proceed.

Canadian Election Brings Delays

There were other issues on the copyright front in Canada that did not get dealt with owing to the pointless election called by Justin Trudeau’s Liberals in August. When the final results were tabulated on September 20, the Liberal minority government was in almost exactly the same place as it had been in the previous Parliament. The impact on copyright and other legislation was the cancellation of all legislation in the pipeline at the time of the election call. It all needs to be reintroduced in the new Parliament, bringing in new ministers, new priorities, and inevitable delays. I will take a closer look at what is in store in 2022 in a subsequent blog posting.

Other Developments

There were many other copyright issues that I wrote about this year, and I can’t possibly summarize them all. Here are a couple. The Philippines joined the broad international consensus that blocking of offshore pirate websites is an effective way to combat piracy, and the appeal against Canada’s first site-blocking order was dismissed. Singapore updated its copyright legislation, bringing in some improvements. The changes took effect in November.

This article was first published on Hugh Stephens Blog 

Categories
Copyright

REMAKE RIGHTS UNDER INDIAN COPYRIGHT LAW: INTRICACIES AND IMPLICATIONS OF MADRAS HC’S ‘VAALEE’ VERDICT

Before-Background

All authors can be owners but not all owners can be authors, except producers. You may mind – why producers are more equal than others, or more subtly, why do they get such peachy privilege? Simply, because the statute says so! But why does the statute say so – because its predecessor (i.e. U.K.’s Copyright Act, 1956) said so! But why did that say so? Because it has always been said so! Confusing…? It is so. But WHAT HAS BEEN NEED NOT ALWAYS BE, NO? Maybe.

Nonetheless, the above mentioned is a short, though hazy, history of cinematography work in Indian copyright law, written solely for the purpose of showing the unavoidable complexities involved with movie copyrights. Although these are not caused because some authors get more authority than others. The reasons are tied to the inherent nature of the work of cinematography which is (said to be) more than the sum of its parts. Put simply, a movie is a mix of various copyrightable works such as sound recording, lyrics, songs, screenwriting, musical works, choreography. There are many authors in a movie (not of a movie!) and these authors exercise their rights to the extent of their contractual arrangements with the producer. The absence or ambiguous presence of these contracts causes issues and Courts rule them accordingly.

(For the history – read Prof Gosh’s article A roadmap for TRIPS: copyright and film in Colonial and Independent India)

Something similar happened recently in S.J.Suryah (a.k.a. S.Justin Selvaraj) v. S.S.Chakravarthy and ors where the Madras High Court jotted a general rule that producers get remake rights unless proven otherwise, making it a part of their ‘right to copy’.

Put differently, (per the Court), the General rule is that Remake rights are owned by the producer and the exception is that scriptwriters have to prove some contrary contractual arrangement in order to claim remake rights.

(Before dishing out the decision in detail, who do our readers think should get remake rights? – a Producer (who puts the team together and enunciates their ideas into a movie), a screenwriter, cinematographer, director (my favorite!), actors, musicians, (no/every)body? Choose your author wisely and analogize your reasoning with that of the Court (looking forward to your comments!) and see the creative contrast.)

Background

Appellant (who was credited as the director and author of the story, screenplay, and dialogues of the movie ‘Vaalee’) asserts that the original producer of the movie Vaalee cannot transfer remake rights because he never owned them. The Court denied it and made some interesting remarks about the rights owned by the producer over a movie.

Broadly, the Court highlighted (or laid down) two rules –

  1. Mere giving credit in a movie does not establish ownership.

Intricacies – What is credit – credit of authorship or credit of assistance? Assumably, credit of authorship, if so, Section 17 clarifies that the ‘first owner of the work is the author’. Given this, can it be said (in contrast to what Court dictated) that credit of authorship is prima facie evidence of ownership unless proven otherwise by the producer?

(Note – as per me, the general rule is that author is owner and exception is author transfers the ownership.)

Illustratively, if Bebu is given the credit of authorship, the first presumption will be that bebu is the owner because Section 17 says so.

2. Remake rights are owned by the producer by the virtue of Section 14(d)(i) i.e. Right to Make Copies.

Intricacies – Can the right to make copies be extended to or interpreted as a right to remake movies? Isn’t it an adaptation right similar to (not the same as!) right in derivative works right?

There are also some issues of 1.) acquiescence/estoppel as the Appellant did not stop the producers for previous remakes, 2.) the appellant’s burden of proof to show produce evidence to claim ownership. However, the present post is only limited to the remake rights and does not discuss other issues in detail.

 Oye Rocky ‘Right of Remake’, Where are you?

Regardless of its contestability, a Producer is an author AND owner of cinematograph film, because, as noted by Courts, (s)he is the entrepreneurial thread that ties all the creative efforts cohered in a movie. But, it is noteworthy that rights coming with cinematography work are limited when compared to other works. Hence, a right to remake movies that stretches the other authored works to a different work is highly unlikely to come in the ambit of the rights under Section 14(1)(d).

Thus,  it is important to understand what kind of right is ‘remake’ under Copyright law?

Clearly, three rights come with the ownership of cinematography film namely Section 14(d)

(i) to make a copy of the film, including

(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the film;

(iii) to communicate the film to the public.

Apparently, the right to remake is not an explicit right for a cinematography film. It is to be interpreted under the existing rights, most probably under Section 14(d)(i) (as it seems closer to remake than other rights). Here comes a caution – while extending an existing right, Section 16 is to be taken into account which clarifies that no copyright exists outside the ambit of the statute.

Given such an internal statutory setting between  Section 14 and Section 16, a producer’s right to remake (as a general rule) is very doubtful. The doubt further dazes me when I consider the adaptation right of literary authors in a movie (script, story, and dialogue writers) because the remake of a movie is more an adaptation of the underlying literary works than the creation of a copy of original movie. This is also clear from the definition of adaptation work [Section 2(a)] which, (in Indian context) is understood as change in format from one type of work to other (e.g. literary to dramatic). Section 2(a)(v) further broadens by stating ‘’in relation to any workany use of such work involving its re-arrangement or alteration”, brining remake under its ambit.

Since adaptation rights are given for literary works and not on the cinematography film, producer should not be regarded the holder of remake rights. (read Nikita Saikia’s post on Adaptations, Derivations and Transformations in Indian Copyright Law).

Coming to Madras High Court’s interpretation of Section 14(d) to include a remake of the film (as also done in MRF v. Metro Tyres and Yash Raj Films v. Sri Sai Ganesh Productions), it does not coincide with the definition of ‘infringing copy under the act’ which defines copy only with respect to original work of cinematography film. Meaning, a remake cannot be called the original copy of the film. The Court though relied on the Thiagarajan Case, however, did not deliberate on it adequately, which clearly explains the fate and form of remake rights. It noted that

28. … A remake of the film or its versions which are substantially similar to the original cinematograph film cannot come within the ambit of the right to copy a film, which is provided for under Section 14(d)(i) of the 1957 Act. In our opinion, while the right to copy a film includes the right to replicate the said film, it, however, does not include the right to remake or to make different versions of the same film.

It went on to say that:

29. Similarly, the right to remake or make different versions of the film, as indicated above also does not fall within the expression “communicating the film to public” as this would entail changes being made in the original script, albeit, without the consent of the appellant. Since the copyright in the script still remains with the appellant, the respondents, to our minds, cannot remake the subject film or make other versions of the same film. While, it is well settled that there is no copyright in an idea, the remake or another version of the subject cinematograph film, which is based substantially on the subject script would, certainly, infringe the appellant’s copyright in the works of which he is the author.”

However, there is one way to exercise the ‘right to remake’ by the producer with utmost statutory support – if all the authors in the movie assign ALL of their rights to the producer, making it the absolute owner of the movie with respect to any right that can arise under the Act.

For e.g. if Lucix is the producer of a movie, Shirix is the author of the script, story, and dialogues, Thaiyixx is the director, and Akshix has done all the other works, and all of them assign their rights to Lucix IN WRITING. Lucix can do anything with respect to the movie (subject to the moral rights u/s 57 and royalty rights under u/s 18) without any interference by the other authors.

But if such absolute ownership is not clear then, in my opinion, the producer cannot be assumed to be the holder of the ‘right to remake’. A more specific way to look at the scenario, as also done by the Court, is from Sections 17 and 19 which deal with ‘the First owner of copyright’ and ‘the Assignment of copyright’ respectively. For Section 19, the assignment has to be done in writing, specifying the rights and the duration of the assignment. In the the instant case, no written agreement was produced by parties, making a strong case of non-assignment. So, if there is no assignment, the ownership over the script, story, dialogues cannot be claimed by the producer, hence, no remake rights exists therein.

Also, the Court assumed the applicability of Section 17 proviso (2), holding it to be a case of commissioned work. It noted that the story, script, and dialogues were written ‘at the instance of the producer’ for ‘a valuable consideration’, hence, ownership lies with the producer. However, I argue that the scope of Section 17 is to be seen in the light of Section 14. It is to be asked whether a creator loses all the rights of Section 14 when Section 17 becomes applicable. Meaning, if somebody writes a script and story for valuable consideration at the instance of a producer, will the instanced works (script, story, and story) be owned by the producer in an absolute sense? I believe, No.

They should be owned only in relation to the cinematography work. This is also clear from the wording of proviso 2 which says that ‘Copyright is owned in cinematograph film’ and ‘not owned in work created for a cinematograph film’. Moreover, it is strange that if proviso (2) of 17 is to be taken as a complete waiver of rights over the work by the creator, then what is the difference between Section 17 and Section 18. Wouldn’t Section 17 become another way of assignment without any written agreement? Apparently, Section 17 does not entail any procedural requirement such as the presence of an agreement or proof, payment, evidence of any other communication, etc. But in cases such as the present, (as also noted by an Anamika here), it is incumbent to look into these pieces of evidence. Otherwise, it becomes a dangerous provision contrary to what the 2012 amendment sought to preempt – protection of authors in cinematography film and sound recordings (among other issues). Something similar was presaged in 1977 in IPRS vs EIMPA where the Court noted that “Copyright in a cinema film exists in law, but s. 13(4) of the Act preserves the separate survival, in its individuality, of a copyright enjoyed by any ‘work’ notwithstanding its confluence in the film. This persistence of the aesthetic ‘personality’ of the intellectual property cannot cut down the copyright of the film qua film”.

In sum,

The scope of remake rights is not clear in Indian Copyright law where some cases such as MRF v. Metro Tyres and Yash Raj Films v. Sri Sai Ganesh Productions include the remake rights in Producers’ existing rights (broadening the scope of the right to make copies) and other cases such as Mr.Thiagarajan Kumararaja vs M/S Capital Film Works hold it otherwise. Per me, more than logical or legal, the justification behind producer’s remake rights seems assumptive. This is unlike Hollywood where writers enter into option purchase agreements for creation of a single and clearly define the scope of their rights. It is high time that Courts define the scope of Section 17 and provide a suitable interpretation of producers’ rights (esp. ‘right to copy’), keeping the existing inequalities in the film industry in mind.

This article was first published on IPRMENTLAW

Categories
Copyright

What Lies Ahead for Canada in 2022 from a Copyright and Content Perspective?

As I noted in my year-end wrap up a couple of weeks ago, some of the copyright and content related issues that were under discussion in Canada in 2021 will likely move forward in a more aggressive way this year. The federal election last fall put on hold a number of copyright-related issues that were in process. Parliament lost several months of work, plus all pending legislation died at the time of the election call and needs to be re-introduced into the new (44th) Parliament. So far, the current Parliament has met for just a few weeks, sitting from November 22 to December 17, 2021, primarily to outline new legislative priorities. Mandate letters for ministers were released on December 16, and among the issues tasked to Pablo Rodriguez, the Minister for Canadian Heritage, are four big files concerning content industries. Rodriguez is instructed to;

  1. “Work with the Minister of Innovation, Science and Industry to amend the Copyright Act to further protect artists, creators and copyright holders, including to allow resale rights for artists.”
  2. “Reintroduce legislation to reform the Broadcasting Act to ensure foreign web giants contribute to the creation and promotion of Canadian stories and music.”
  3. “Swiftly introduce legislation to require digital platforms that generate revenues from the publication of news content to share a portion of their revenues with Canadian news outlets to level the playing field between global platforms and Canadian outlets. This legislation should be modelled on the Australian approach and introduced in early 2022.”
  4. “Continue efforts with the Minister of Justice and Attorney General of Canada to develop and introduce legislation as soon as possible to combat serious forms of harmful online content to protect Canadians and hold social media platforms and other online services accountable for the content they host. This legislation should be reflective of the feedback received during the recent consultations.”

That is a lot to have on one’s plate and one cannot help but wonder how much of this will actually get done. These issues have all been around for some time, and most have already been the subject of online consultation and in some cases, Parliamentary review through committee. Let’s look at each in turn.

Copyright Act Amendments

On the first item, a Copyright Act update is overdue. In theory the Act is supposed to be reviewed every five years. The last significant legislative update was in 2012. In 2019 two Parliamentary committees reviewed the Act and issued somewhat conflicting recommendations, but to date no changes have been introduced. Last year there were several public consultation documents issued regarding copyright, the first on implementation of Canada’s commitment under the USMCA/CUSMA to extend the term of copyright protection, a second discussing a modern copyright framework for online intermediaries and the third on copyright and artificial intelligence and the Internet of Things.

The copyright term extension question is the most pressing, as Canada is required to implement the twenty-year extension agreed to in the USMCA trade agreement no later than December 31, 2022. The consultation paper addressed a number of implementation issues, such as orphan and out of commerce works, while also seeming to dismiss proposals for the institution of an additional registration requirement in order to access the longer period of protection as advocated by some opponents of extending copyright duration in Canada. The implementation of Canada’s USMCA/CUSMA obligation, hopefully done in a straightforward way without the imposition of additional registration barriers, could be rolled into a broader copyright reform bill, or could be bundled into some other omnibus legislation.

The second consultation paper dealt with issues such as safe harbours for internet intermediaries and possible regulations regarding site-blocking of pirate websites, a measure already upheld on appeal by the courts in Canada. The AI paper raises questions such as ownership of works created by AI and the addition of possible additional copyright exceptions to address data mining, among other topics.

Another copyright issue that needs to be addressed, in addition to the introduction of an Artists Resale Right mentioned in the mandate letter, is the question of mandatory tariffs to fix the disastrous decision by the Supreme Court in July 2021 upholding the Federal Court of Appeal’s (FCA) ruling that mandatory tariffs covering unlicensed use of copyrighted content are not reciprocally binding on rights-holders and users alike. The FCA found that for users they are only optional, thus undermining one of the pillars of Canada’s collective licensing regime. Parliament needs to fix this. The wording in the mandate letter instructing the minister to amend the Copyright Act “to further protect artists, creators and copyright holders” offers some hope. The pendulum has swung so far in favour of unlicensed uses that some rebalancing is badly needed.

Broadcasting Act “Reforms”

The next item on Mr. Rodriguez’s “to do” list is reintroduction of “reforms” to the Broadcasting Act, known as Bill C-10 in the last Parliament. This is a hot potato for a couple of reasons. In the last Parliamentary session, the legislation passed in the House but failed to get through the Senate before the election was called. In the parlance of the mandate letter, it targets “foreign web giants” to ensure that they “contribute” to the production of “Canadian stories and music”. Put more bluntly, it is designed to extract funding from foreign players like Netflix, Amazon Prime, Disney Plus, Spotify and other online streaming platforms to support Canadian production. Not production in Canada, of which there is plenty, some of it supported by these same platforms, but “Canadian production”.

The question of what qualifies as “Canadian production” is, to say the least, arcane. Currently, a production using a Canadian story with a Canadian director and Canadian actors does not qualify as Canadian content if the financing is not Canadian controlled (i.e. it is not produced by a Canadian-owned production company) and, under the draft legislation, if the copyright of the production is not held by a Canadian. What is the goal?  Is it to tell more Canadian stories in Canadian settings to Canadian and global audiences or is it to ensure that more money is put into the hands of “qualified” (i.e. Canadian) producers by extracting from streaming services a “tax” similar to that which is imposed on conventional broadcasters? Those broadcasters must, as a condition of licence, spend at least 30 percent of their aggregate revenue in the previous year on Canadian content programming. While full foreign funding automatically disqualifies a production from meeting Canadian content requirements, there seem to be no qualms about requiring foreign producers to pay into a fund that would then be used to finance Canadian production. In effect the foreign funds are laundered through a Canadian production house. Finding the right balance to promote the creation of Canadian content (and sensibly defining what that is) while incentivizing the telling and distribution of Canadian stories by international production houses is a major challenge.

The other controversial aspect of the previous Bill C-10 was its application to platforms like YouTube, Twitter, Facebook and Instagram through inclusion of user-generated content (UGC) in “discoverability” requirements imposed on the platforms. To have omitted UGC would have created a massive loophole. YouTube, for example, is one of the primary music and video distribution platforms in the country. There is no reason to grant UGC an exemption from the application of law and regulation, as long as individual expression is subject to the normal protections afforded by the courts and the Charter. Critics accused the government of empowering the regulator, the CRTC, to censor content posted to social media by individual Canadians. This was a canard and a misunderstanding of the intent of the legislation since the obligations would have applied only to the platforms and would have had no impact on individual freedom of expression. We will have to wait to see whether and in what form the UGC issue is addressed in the 2022 version of the legislation.

Payment for Unlicensed Use of News Content by Internet Platforms

Rodriguez’s instruction on this issue could not be clearer. “Swiftly introduce legislation” to require payment by digital platforms to Canadian news providers when the platforms generate revenue from that content, “modelled on the Australian approach”. This is clearly an idea whose time has come. One option the government had been considering was following the EU model of granting news publishers an ancillary copyright in their content, but it has now opted for the successful Australian model of using competition law to deal with the issue of free-riding by the platforms. With the Australians having taken on Google and Facebook and brought them to heel, the task should be considerably easier for the Canadian government. (The US government is also studying the issue.) Just the threat of legislation has inspired Google to reach content deals with many Canadian news providers. This legislation will provide the needed legal backstop.

Online Harms Legislation

This will be a big issue in 2022. There is no question that social media platforms and online services (Facebook, Instagram, Twitter, YouTube, TikTok, and Pornhub are specifically identified) need to be held to greater account for the socially harmful content posted by users that they knowingly host (and from which they often profit). The trick is to define “harms” in such a way that is clear and legally sustainable. This is easier to do for some harms than for others. In this regard, the offline world can provide precedents. A consultation paper was released in the fall of 2021 outlining the five categories of harms that would be regulated; terrorist content; content that incites violence; hate speech; non-consensual sharing of intimate images; and child sexual exploitation content.

The consultation paper proposes that a Digital Safety Commission be established to regulate platforms, with strong enforcement powers. Platforms would be required to establish reasonable monitoring mechanisms, assess flagged content, and remove harmful content within 24 hours, subject to appeal. They would also be required to establish a flagging and appeal process. Legislation would require greater transparency from platforms and impose an obligation to notify law enforcement in the case of “imminent serious harm” or potential criminal conduct. The paper elicited a number of comments, some negative, many of them from “internet freedom” advocates traditionally opposed to any meaningful regulation of the internet. Objections range from the requirement for a takedown within 24 hours to the obligation to share information with law enforcement to opposition to site-blocking powers. While one must be careful to target only behaviour and content that is truly harmful and illegal, it is also time to increase the pressure on platforms to exercise greater responsibility.

A recent, egregious example of the kind of harmful material found on the internet was this report in the New York Times about a “how to” suicide website. Site-blocking for online harms would be one effective way to deal with such outrageous content, given that the search engines refuse to delist the website. Those who oppose Canada extending its regulatory reach to international internet platforms, like University of Ottawa law professor Michael Geist, cite Article 19.17 of the USMCA/CUSMA as an obstacle. Geist claims that Canada agreed to provisions in the USMCA/CUSMA that “look very similar” to Section 230 of the 1996 US Consumer Decency Act and makes the dubious claim that if Canada enacts online harms legislation that creates new liability for the platforms, the US might take retaliatory trade action.  Section 230 is the much-criticized US legislation that absolves internet platforms of any civil liability for user content on their platforms. It has been much abused over the years by the platforms who have used it as a shield to avoid taking action to moderate or remove harmful content.

Dr. Geist’s conclusion is inaccurate for several reasons. First, Article 19.17 may contain some phrases that are similar to parts of Section 230, but it is quite different in terms of its effect. As I wrote in an earlier blog posting (here), it imposes no obligations on Canada to enact any laws that would entrench Section 230 immunities in Canadian law because Canada protected its ability to implement 19.17 through its “laws, regulations, or application of existing legal doctrines as applied through judicial decisions”. Second, Article 19.17 is subject to a “public morals and public order” exception (embedded in Annex 19-A), an exception that the US has itself used in the past (Antigua online gambling case). If tackling online harms such as terrorism, child sexual exploitation, incitement to violence etc. doesn’t fall within the ambit of protecting public morals or maintaining public order, then I don’t know what does. Third, Section 230 and indeed Article 19.17 deal only with civil liability. Article 19.17 has an additional provision, subsection 4 (c) which states that;

Nothing in this Article shall…be construed to prevent..(i) a Party from enforcing any criminal law; or (ii) a supplier or user of an interactive computer service from complying with a specific, lawful order of a law enforcement authority

The online harms legislation in Canada will involve the Criminal Code. Raising USMCA Section 19.17 as a potential obstacle to introducing online harms legislation in order to hold the platforms more accountable for harmful content they allow to be distributed to users is just one more red herring dangled by opponents of the legislation.

The online harms bill is to be introduced “as soon as possible” while reflecting feedback received during the recent consultation. That suggests that it may not have as high a priority as some of the other items on Minister Rodriguez’s task list.  We shall see.

Other developments

In addition to the four “to do” items included in the Heritage Minister’s mandate letter, there are some other issues in the content field on the 2022 agenda, the primary one being the proposed acquisition of Shaw Communications by Rogers, a subject I plan to write about in a subsequent blog posting. This merger has both significant content and telecommunications impacts.

It promises to be a busy year as Justin Trudeau’s minority government tries to steer several key pieces of legislation through a Parliament where it will require the support of at least one major opposition party to get anything done. The stakes are high, particularly for rights-holders and copyright industries, and there are hopes–and expectations—that the new 44th Parliament will achieve more than the unfinished business of the last one.

This article was first published on hughstephensblog

Categories
Copyright screenrights

Insights from Industry Insiders: James Dickinson, Chief Executive of Screenrights

Who are you and what is your role in the creative industry eco-system? 

 

I’m Chief Executive of Screenrights. Screenrights is a non-profit organisation that provides an important income stream for rightsholders in screen content, whilst also facilitating the usage of that content by educators, the government, and pay television retransmitters through our licences.  

Essentially, if a program has been broadcast, these secondary users are entitled to make use of that program under the Copyright Act. Screenrights makes sure that the creators are fairly remunerated for that usage. We have over 4,800 members around the world including producers, writers, directors, distributors, broadcasters, studios, music rights holders, artists, and others! 

We’re also expanding into other services for the screen industry, trying to take some of the administrative burden off the plates of creative practitioners through Disbursements and Residuals management and reporting, and looking into alternative collective licensing solutions. We want to find the things that are causing headaches and friction in the industry and focus our strengths as an organisation in data and systems on alleviating some of those pains. 

Does piracy affect your business or that of your stakeholders?  How?

 

Piracy was actually core to the appointment of Screenrights in our original capacity. Screenrights licences were created so that teachers were no longer pirating when they copied television shows for class. The provision was created under the Copyright Act.

It was an innovative solution which ensured the education system could still use the content, but also that the copyright owners were fairly compensated. Piracy does affect our business and our stakeholders.  

We see our role as being to help ensure there are legal ways to access content so that piracy can never have an excuse.  If we can build more ways for end users to access content legally, while paying those who make that content, it’s better for everyone involved. 

Educators have relied on Screenrights licensed content more than ever before during the pandemic with remote learning requirements, and we saw records of usage via the resource centres (licensed video-on-demand services for educational institutions) increase exponentially over the last couple of financial years. It’s been great to see our members’ content provide such educational support. Certainly, the secondary royalties that come from this are a key income stream for many content creators, and diversifying income allows for more excellent programs to be made. 

What do you think is the most significant impact of piracy on the creative industry?

 

I think people don’t realise how fragile the structures are that create local screen content. And because they are fragile, they are most at risk from piracy. Many people in our creative fields are already working as much from passion as for financial gain.  

If the pandemic has taught us anything, it’s that our screen industries provide an incredibly valuable function in society. Who didn’t turn to screen content to get themselves through lockdown? 

 

Australia has a great international reputation in our film and television capabilities. Imagine if all of that content were valued properly, how we could further nurture our production industries and support creative careers? Piracy is one of a few ways in which creative industries are undervalued. But it’s one that we can avoid on a personal level, so it’s one that everyone can do something about. 

What is the biggest challenge in the fight against piracy?  

 

I think it’s getting people to see that their actions are hurting the people who are creating the content that they love. Casual pirates see it as a victimless crime or think that the victim is some remote Hollywood mogul who they don’t care about. But in fact, the victims are all the people that work as a huge collective to create those works. They are not rich, they are not remote, and they are impacted by piracy.  

How do you think Australia is measuring up in tackling piracy?

 

Probably other people are better placed to answer that question more generally. But I suppose from Screenrights’ perspective, we have a unique view, which might be useful. As I said, the original educational licences were created in our copyright law in response to piracy.

Not to legitimise piracy but recognising that in some circumstances, where there is an important societal need for access to content (such as for education), then we can create an exception from copyright but still ensure that the creators get a fair fee. That was a unique Australian solution to a piracy problem at that time, and it has worked extraordinarily well.

Recently, those solutions have been under attack from interest groups seeking to undermine copyright more generally. I think instead we should be thinking, are there other ways we can apply this approach? 

What are you watching and recommending to friends at the moment?

 

Total Control, Stateless, Mystery Road and The Newsreader are a few more recent highlights. 

What excites you about the future of your industry sector?

 

As I mentioned earlier, Screenrights saw the use of our Australian Educational Licence explode over the pandemic. Our raw usage records, which we receive from the resource centres in order to allocate royalty payments, increased from 5 million in 2018/19 to over 17.7 million in 2020/21.  

It was fantastic that our members’ content could provide such a useful service to the sector in such a difficult time, and with new initiatives such as the ABC Education platform making use of the licence, we’re excited to see screen content being used in ever more innovative ways to support learning. 

If we can continue to appreciate the importance of telling our own diverse Australian stories and reflect that in the ways that we support our screen industry –as individuals and on a government level – there’s a lot more to come from our fantastic creators. 

 

Screenrights is proud to play our part in supporting this vital industry, and we can’t wait to see what’s next.

This article was first published on ContentCafe

Categories
Copyright

AIFCC FILES APPLICATION FOR REGISTRATION AS A COPYRIGHT SOCIETY FOR ALL UNDERLYING WORKS IN A CINEMATOGRAPH FILM/ SOUND RECORDING

The Copyright Office vide public notice dated October 27, 2021, notified that the All India Film Chamber of Commerce (AIFCC) has filed an application for registration as a copyright society under Section 33 of the Copyright Act, 1957 for carrying out business of issuing or granting license in respect of creative works i.e., literary, dramatic, musical and artistic works incorporated in cinematograph films or sound recordings. The Copyright Office has invited objections from general public/ stakeholders within 30 days of publication of the notice. Read the public notice and application here and here.

What is All India Film Chamber of Commerce (AIFCC)?

The AIFCC is a Chennai based company incorporated on September 15, 2020. (We did not come across any website of the company or further information on the activities conducted by it other than its Facebook page.)

The application filed by AIFCC mentions in its ‘statement and concerns with copyright laws’ that its core aim is to deliberate to act as a special purpose vehicle between governments and film industry by providing means of knowledge about copyright laws and potentially influence policy decisions for film industry’s good, for which AIFCC created access to producers and technicians under one roof to protect their legal rights under Intellectual Property Right laws.

What will be the impact on the M&E industry if AIFCC is granted registration as a copyright society?

This seems to be the first instance where such a broad application has been filed for issuing or granting license in respect of all creative works i.e., all classes of underlying works in a cinematograph film/ sound recording.

This would entail that if AIFCC is granted registration as a copyright society it would be dealing with all four categories of underlying works incorporated in cinematograph film/ sound recording:

  • Literary works- which could include Script, Lyrics, etc.
  • Musical works- Music composition, background music, etc.
  • Dramatic works- Choreography, stage plays, etc
  • Artistic Works- Photographs, costume designs, etc.

Resultantly, royalties would be collected for authors and assignees of all these categories of works.

As per Section 35 of the Copyright Act, the copyright society should be under collective control of both authors and owners of the rights, whose right it administers. Based on the application filed by AIFCC it appears that it has producer, film director and other owner members within its governing body.

Currently, the following copyright societies are registered in India:

Indian Performing Rights Society (IPRS)Musical composition and associated lyrics
Indian Singers Rights Association (ISRA)Performances (Performers rights )
Recorded Music Performance LimitedSound recording
Indian Reprographic Rights Organization (IRRO)Reprographic rights in the field of literary works

The following applications were filed, status of which is not known:

Screenwriters Rights Association of India  (SRAI)Class of work: literary and dramatic works such as story, script, screenplay, dialogues or any other literary works (excluding lyrics)The Copyright Office had issued public notice inviting objections on October 27, 2020

Status of application unknown

Phonographic Performance Limited (PPL)Class of work: sound recordingIn an order dated May 25, 2021, passed by the Government, PPL’s application for re-registration as a copyright society under Rule 47 of the Copyright Rules, 2013 was rejected. PPL challenged the order and the matter is pending in the Delhi High Court
Cinefil Producers Performance Limited (CPPL)CPPL had applied for registration as a copyright society for cinematographic films.The Copyright Office had issued a public notice on November 22, 2018.

Status of application unknown

South Indian Music Companies Association (SIMCA)As per information from sources, SIMCA’s application for registration as a copyright society was rejected by the Copyright Office.

The existing copyright societies in India have not yet seen the light of a full-fledged implementation of the Copyright Amendment Act, 2012. There are ongoing disputes in relation to publishing royalties as well as performers royalties. Application of SRAI for writers’ society has not yet been accepted for reasons unknown. In such a scenario, if a copyright society is registered for such a broad category of underlying works chaos is bound to ensue.

As detailed in my post here on the flawed copyright amendment of 2012, the verbiage of Section 19(9) and (10) of the Copyright Act does not contain restrictive language on non-assignment or waiver of right to receive royalties by the authors of literary and musical works as provided in Section 18. As a result, it could be interpreted that with respect to works other than literary and musical works i.e., artistic, and dramatic works, there is no restriction on taking waiver/ assignment of the right to receive royalties. This has resulted in agreements for authors of dramatic and artistic works such as a choreographer agreement (dramatic work) or a costume designer agreement (artistic work), having language on waiver or assignment of royalty rights.

One could also argue that the legislative intent behind the royalty related provisions under Section 18 and 19 were intended only for literary and musical works incorporated in cinematographic films/ sound recordings and did not intend to cover other underlying works.

It would thus be interesting to see as to how royalty compliances for all underlying works would be implemented by AIFCC should it receive registration as a copyright society.

The Government in the last few years has called for several stakeholder meetings to discuss the various aspects pertaining to registration of multiple copyright societies as opposed to single copyright society in a single class of work. Read our posts here and here. The industry has been divided on this issue. Those in favour of multiple societies for same class of work are of the view that competition is necessary and users should have choice of multiple societies to avoid monopolistic practices being carried by a single society. Particularly, regional players have been demanding for creation of multiple societies for same class of work.

The Government is bound to receive several objections against registration of AIFCC as a copyright society. It would have to be seen whether the Government is convinced on the necessity to have a single copyright society dealing with all underlying works and particularly focused on the South Indian regional film and music industry.

Image source: here

This article was originally published in IPRMENTLAW.

Categories
Copyright Industry

Thank You Professor! “Explaining” Section 230 to Canadians

Unabashed booster of—and apologist for—Section 230 of the 1996 Communications Decency Act (CDA), Eric Goldman, recently published an encomiumto help Canadians understand a crucial US law that’s become a flashpoint for heated discussions” (according to the introduction to Goldman’s article distributed by the Santa Clara University School of Law). It was initially released through the Centre for International Governance Innovation (CIGI), a prominent Canadian think-tank at the University of Waterloo. Goldman is Associate Dean and Co-Director of the High Tech Law Institute at the university, which is located in the heart of Silicon Valley). Thanks to Goldman, we poor benighted Canadians can finally begin to fully comprehend how fortunate we are that the new NAFTA (USMCA, called CUSMA in Canada) requires each country—that is the US, Canada and Mexico—to maintain legal rules that, in Goldman’s words, “resemble Section 230”. That provision in CUSMA is Article 19.17. More on the CUSMA treaty language below. But first….

What is Section 230?

Section 230 of the CDA provides that internet intermediaries (internet platforms, websites, social media services) are not liable in civil law for content posted by users. The law was originally passed in order to provide platforms with the means to control illegal or harmful content. As I wrote in an earlier blog post (“Section 230 is Dangerous–Keep it Out of Trade Negotiations”), the problem arose because an online website, Prodigy (no longer in existence) was successfully sued because it had not moderated an online posting put up by a user that allegedly defamed the plaintiff. The court considered that because Prodigy had the ability to moderate the content and did so on occasion, (but not in this case), it was a “publisher” (like a newspaper) and was thus liable for defamation. On the other hand, other websites that made absolutely no attempt to moderate content on their platforms, whether the content was objectionable or not, were considered “distributors” and were off the hook. There was thus no incentive for online platforms to lift a finger to remove obscene, defamatory or content that would be objectionable to children, one of the early concerns about the spread of online content.

The solution was Section 230, which provided, in the words of (now Senator) Rod Wyden, one of its architects, both a sword and a shield. The sword was the ability to take down objectionable content; the shield was immunity from prosecution for doing so. However, over the years its intent has become badly distorted through a series of rulings by various US courts to the point where today the legislation is interpreted as a blanket exemption from responsibility for digital platforms for any content posted by users.

Abuses enabled by Section 230

The misapplication of Section 230 is largely responsible for a general lack of accountability on the part of internet intermediaries for any content that they host, distribute or enable, allowing them to refuse to take action against user-generated abuses. This has led to a litany of abuses without legal remedy against the platforms that turn a blind eye to, enable or even promote, harmful content such as sexual exploitation of children, illegal gambling, false and harmful information, revenge porn, hate speech and so on. It is so wide-sweeping that it has allowed services like AirBNB to thumb its nose at municipalities seeking to enforce bylaws against temporary rentals because the illegal listings were posted by users. (There are limited exceptions to platform immunity under Section 230, namely copyright infringement and, since passage of the SESTA/FOSTA legislationin 2018, sex trafficking, a carve out vigorously opposed by most of Silicon Valley).

Tech platforms love Section 230, as do those who use the content to abuse others, promote illegal activities or spread conspiracy theories. Responsible content producers would like to see some accountability on the part of the platforms. Governments too are grappling with the issue of how to prevent the internet from becoming a law-free zone and to hold businesses that profit from user-generated content to account for the content they distribute and promote.

Because of the many abuses, Section 230 has come under increasing scrutiny in the US. Ironically, when it came under attack by the Trump Administration, it was not because of lack of content moderation by the platforms, but rather because they had—finally and under extreme provocation owing to the proclivity of Trump and his supporters to stretch the truth—exercised some control over the content propagated through their services. This infuriated Trump supporters who accused the platforms of political bias and threatened to bring changes to Section 230. As I commented at the time, (“Reforming Section 230 is the Right Idea—But Not When Done in the Wrong Way for the Wrong Reasons”),

Trump has decided to use Section 230 in order to take personal revenge on Twitter, not to reform it or to address the fundamental issues inherent in the abuse of its immunity provisions by internet intermediaries who have used it to avoid taking down clearly harmful content. By making this allegedly about “silencing conservative voices”, Trump has in effect hijacked the issue of Section 230 reform.”

Of course it didn’t happen, and for several months now we have all been spared the daily torrent of personal, misspelled, vindictive and inaccurate tweets from the former president. For now, Section 230 in the US remains unchanged.

Goldman’s “Five Things to Know”

However, Goldman and his Canadian fellow-cyberlibertarians such as Michael Geist at the University of Ottawa are big fans of Section 230. During the CUSMA negotiations, Geist joined with a number of American academics to write a letter to the chief trade negotiators of the three countries urging the inclusion of a Section 230 provision in the Agreement. He also publicly urged Canadian negotiators to cave in and give the US “a win” on this point. For Goldman and Geist and others of their ilk, Section 230 is the foundation of the internet, enabling free speech, competition, innovation, democracy and more. In his panegyric to Section 230, written for Canadians, Goldman cited “Five Things to know about Section 230”. These are;

  1. Internet Exceptionalism and Section 230
  2. Section 230 Enhances the First Amendment
  3. Section 230 Enhances Competition
  4. Section 230 is the Law in Canada (But Not Really)
  5. Gutting Section 230 Won’t Make the Internet Better.

Let’s examine these assertions and deconstruct the arguments just a bit.

Internet Exceptionalism

With regard to internet exceptionalism, Goldman argues that although the internet is treated differently from and more favourably than other media, Congress got it right when it passed Section 230. He is happy to see the laws governing libel, defamation, hate speech and the other checks and balances that society has imposed on those who are granted the privilege to publish and disseminate information suspended when it comes to the internet. It all seems to hearken back to John Perry Barlow’s 1996 “Declaration of the Independence of Cyberspace”, the mantra of the Electronic Freedom Foundation, a collection of bilious assertions that the internet is beyond the regulations of governments and not subject to national laws.

The First Amendment

Does Section 230 enhance the First Amendment, the “free speech” provision in the Constitution of the United States? First, we have to ask, “does the First Amendment put any limits on free speech?”  The answer is, “of course it does.” The First Amendment does not protect a number of forms of speech, such as obscenity, defamation, perjury, blackmail, incitement to unlawful action, and true threats. The courts have an important role in enforcing these reasonable limitations, but according to Goldman, Section 230 contains “important procedural advantages” that allow courts to dismiss lawsuits over third party lawsuits quickly and relatively cheaply. Put another way, Section 230 hobbles the courts from exercising their responsibility to ensure that free speech is exercised in a way that does not harm others.

Section 230 and Internet Competition

Does Section 230 enhance competition? In Goldman’s upside-down world it does because it keeps the door open to new entrants who don’t have to worry about investing resources in anything as wasteful as content moderation. And we have the proof that this policy increases competition, right? I mean, look at the robust competition that Facebook and Google have to deal with. Or did I miss something?

Is Section 230 the Law in Canada?

According to Goldman, Section 230 is sort of the law in Canada. This is because the new NAFTA (which I will call USMCA/CUSMA hereafter) contains Article 19.17 that says, in part;

“…no Party shall adopt or maintain measures that treat a supplier or user of an interactive computer service as an information content provider in determining liability for harms related to information stored, processed, transmitted, distributed, or made available by the service, except to the extent the supplier or user has, in whole or in part, created, or developed the information”.

According to Goldman, “when Canada ratified CUSMA it committed to providing Section 230-like immunity against internet service liability for third party content”.

However, in USMCA/CUSMA there is an important footnote that reads;

a Party may comply with this Article (19.17) through its laws, regulations or application of existing legal doctrines as applied through judicial decisions”.

In other words, Canadian case law will continue to apply and there is no explicit requirement to create safe harbours in Canada for interactive service providers under this provision. I discussed this in detail at the time in a blog posting labelled “Did Canada get “Section 230” Shoved Down its Throat in the USMCA?”

Goldman argues that Section 230 is the law in Canada but, with respect, that is a highly debatable claim. It’s a brave move for a non-legal practitioner to challenge a Dean of Law at a prominent university on a point of law but even little ol’me knows that a law is not a law unless it has been enacted into legislation. In Canada that is done by an Act of Parliament. True, Canada ratified the USMCA/CUSMA and, as part of the process of so doing, introduced a package of legislative amendments (Canada–United States–Mexico Agreement Implementation Act) to effect changes to various Canadian laws as required by the CUSMA treaty. For example, as part of this legislative package, there were amendments to a variety of statutes ranging from the Fertilizers Act to the Copyright Act and Special Import Measures Act to the Customs Tariff.  But were there any legislative amendments related to Article 19.17 of CUSMA? There were not. There is no new law in Canada establishing Section 230-like immunities for internet platforms—thankfully.  Secondary liability continues to apply in Canada as I discussed in greater detail in here (Will Article 19.17 of the USMCA/CUSMA Influence Canadian Court Proceedings? (The Long—or Short?—Arm of Section 230).

Canada’s “commitment” in the CUSMA was carefully worded, preserving maximum flexibility for Canadian legislators and legal practitioners. I like to think that this was not an accident but by design and is a credit to the Canadian negotiating team who resisted misplaced US demands to “sign on” to Section 230.

Will Changing (“Gutting”) Section 230 Improve the internet?

Goldman argues that removing the dangerous parts of Section 230 will not improve the internet. In his view, since people have been nasty to each other for centuries, changing Section 230 to put the onus on the platforms that disseminate this personal bile won’t change anything. Yet because of the ugly side of society, we have laws to restrain this kind of behaviour in the offline world. We have laws to protect innocent victims. We impose reasonable restraints on unfettered freedom of expression and dissemination of libellous, defamatory and obscene materials everywhere—except on the internet. Goldman would like to keep it that way. He states that “Section 230 reform will accelerate the end of the Web 2.0 era”. This, apparently, will lead to a predomination of “privileged voices” and will exclude “niche non-majoritarian interests” (like those people who spread misinformation, conspiracy theories and indulge in vile personal attacks). So, yes, Professor, changing Section 230 will improve discourse on the internet.

Section 230 in the US

Apart from the attacks on Section 230 by Donald Trump and his acolytes (because the platforms finally exercised a modicum of content moderation), there have been wide criticisms of this legislation because of how it has enabled online abuse. In fact, it almost didn’t make it into the USMCA, since Nancy Pelosi and the Democrats finally woke up to what they were supporting. Pelosi tried to get the Trump Administration to drop Article 19.17 as part of the last-minute deal-making with Congress to get approval of the Agreement, but it was too late in the process. However, the Democrats did succeed in getting a statement from the hi-tech industry acknowledging that inclusion of Article 19.17 did not prevent the US from amending Section 230 in future. Advocates of Section 230 were hoping that its inclusion in the USMCA meant that it would be “baked in” forever and could not be touched by Congress. Given the tepid support in Congress for Section 230, Goldman is right to conclude that even if Canada did not abide by Article 19.17 by passing future legislation that negated it, the US would be most unlikely to object. In fact, he admitted as much in a podcast with Michael Geist that I wrote about earlier this year when he said, with respect to Congressional intentions to modify Section 230 despite Article 19.17 of the USMCA;

“Congress will absolutely blast forward with efforts to tinker with Section 230 even if that would also contravene the USMCA…I don’t know who really plans to abide by it, and if no-one plans to abide by it, I don’t understand what the point was”.

The Future of Section 230

How true. So why the primer on Section 230 just for Canadians? It is not part of the corpus of Canadian law, it is an outdated provision that is in serious need of revision in its homeland, the US, and it is not going to constrain the Canadian government from holding internet platforms responsible for online harms that they distribute if they fail to takedown such material when notified. Eric Goldman, Michael Geist and their friends in the Electronic Frontier Foundation (EFF) can continue to beat the Section 230 drum, but that drumbeat is sounding increasingly hollow, in Canada as in the US. Let Section 230 stay where it is in Canada, effectively buried.

This article was originally published on Hugh Stephens Blog.

Categories
Copyright Industry Intellectual Property Media Piracy

IPRMENTLAW WEEKLY HIGHLIGHTS (September 21st to September 26th)

Twitter appoints personnel in compliance of with new IT Rules

Twitter has appointed Chief Compliance Officer, Nodal Contact Person and Resident Grievance Officer in compliance of IT Rules, 2021. Twitter has appointed these individuals as employees and not ‘contingent workers’ and has also provided names of the said appointed personnel and their respective positions.

This development comes in a petition filed by Amit Acharya stating that Twitter being a ‘significant social media intermediary’ as laid down under the IT Rules, 2021, must ensure compliance with statutory duties imposed upon it by the provision of these rules.

The matter is now fixed for hearing on October 5, 2021.

Bengaluru e-gaming companies plan to challenge ban decision

An amendment to the Karnataka Police Act shall outlaw online gambling and ‘games of chance’. The key concern of various governments with regards to gaming comes through the apprehension that it promotes gambling, however, in the past, there have been judgements that approve ‘skill based gaming’ against ‘chance based games’.

The ban will affect approximately 100 gaming companies operating from Bengaluru.

ASCI dismisses advertisement plagiarism complaint by Amul

A complaint was lodged by Amul Macho alleging that the Lux Cozi advertisement starring Varun Dhawan was a ‘complete copy’ of Amul’s advertisement released in 2007. Amul sought immediate action against Lux on the grounds that the advertisement unfairly took advantage of the brand equity, reputation and goodwill generated by Amul Macho brand.

In response, Lux contended that the complaint seemed to have been initiated with an intention to malign Lux’s reputation in the eyes of public and waste the time of the Consumer Complaints Council (CCC), adjudicatory body of the ASCI. It also pointed out a list of dissimilarities to show how the concept, theme and expression of both advertisements were in complete contrast to each other and hence, there can be no scope of similarity whatsoever.

Lux also informed the CCC that Amul’s advertisement had been a subject of controversy soon after it was released in 2007 on account of its “objectionable and indecent content”, and was banned by the Ministry of Information & Broadcast across all mediums.

Observing that both advertisements barely had any similarities between them, the CCC held that Lux’s advertisement was not in contravention of the ASCI code and rejected Amul’s complaint.

Google moves Delhi High Court against confidential report leak

A writ petition was filed by Google before the Delhi High Court alleging leak of an interim fact finding report relating to an ongoing investigation into Google’s Android smartphone agreements.

The report does not reflect the final decision of the CCI.

Marvel sues to keep rights to Avengers character from copyright termination

Under the termination provisions of copyright law, authors or their heirs can reclaim rights once granted to publishers after waiting a statutory set period of time.

The litigation figures to focus on the “Marvel Method,” a loose collaborative working atmosphere where initial ideas were briefly discussed with artists responsible for taking care of the details. The Marvel Method has been the subject of prior litigation, almost a decade ago, in August 2013, the 2nd Circuit Court of Appeals affirmed a lower court’s ruling that determined Kirby’s heirs couldn’t wrest back his share of rights to the characters because the former Marvel freelancer had contributed his materials as a work made for hire.

The Kirby case was then petitioned up to the Supreme Court, with the late Ruth Bader Ginsburg signaling some interest in taking up the case. Marvel at the time fought hard against any high court review, and before the justices decided, the case was settled.

If the plaintiffs win, Disney expects to at least hold on to at least a share of character rights as co-owners. The studio would have to share profits with the others. Additionally, the termination provisions of copyright law only apply in the United States, allowing Disney to continue to control and profit from foreign exploitation.

Criminal complaint filed against Javed Akhtar

The complaint is against Javed Akhtar’s statement linking RSS to Taliban. Joshi, the Mumbai lawyer, heard Akhtar on a talk show and felt that the alleged statement were meant to defame and vilify the Hindu community.

Joshi’s statement read, “Statements made by the accused is well planned, thought and calculated defamatory statements to defame RSS and discourage, disparage and misguide the people who have joined RSS or who would like to join the RSS and belittle the RSS in the eyes of common public. There was a well planned motive of the accused to defame RSS.”

Joshi has even prayed for investigation for offences of defamation which are punishable under the IPC Sections 499 and 500. The complaint will be heard on October 30.

Plagiarism claim against song titled ‘Teri Mitti’

Writer Manoj Muntashir has refuted all allegations of him having copied the Teri Mitti song from ‘Kesari’ from a Pakistani song.

Muntashir claims that issues have cropped up against him due to a video made by him on the Mughals where he has used strong words against them, referring to them as glorified dacoits.

Plea moved in Delhi High Court seeking withholding of ‘The Conversion’ release

The Petitioner body has submitted that it had sent a representation to the Ministry of Information and Broadcasting and also to YouTube complaining about the biased and communal content shown in the trailer of the film and had also requested to remove the trailer and withhold the release of the of the film, but it didn’t receive any response.

The matter was heard today by a Bench of Chief Justice DN Patel and Justice Jyoti Singh however, it was adjourned as the counsel for Petitioner, appearing through video conference, was inaudible.

The Court has now adjourned the matter for hearing on October 1, 2021.

De Minimis Defense Doesn’t Protect Minimal Use of Concededly Infringing Material

Richard Bell took a photo of the Indianapolis skyline and published it on various websites. Eleven years later, he registered the photo with the US Copyright Office. Bell later conducted an online reverse image search of his photo to identify potential infringers and subsequently filed more than 100 copyright infringement lawsuits.

Bell sued Wilmott for copyright infringement in 2018, asserting that Wilmott infringed his right to “display the copyrighted work publicly” by making it accessible to the public on Wilmott’s server. The district court granted summary judgment to Wilmott on the de minimis use defense.

The Ninth Circuit rejected the district court’s finding that Wilmott’s infringement was a “technical violation” because Wilmott did not know the photo was still on its website. The Ninth Circuit also found that there was no place for an inquiry into whether there was de minimis copying because the “degree of copying” was total since the infringing work was an identical copy of the copyrighted photo.

This article was originally published on IPRMENTLAW.

Categories
Copyright Industry

REVISITING SETTLED TENETS OF INDIAN COPYRIGHT LAW: ALLAHABAD HC’S REFUSAL TO STAY RELEASE OF THE FILM ‘CHEHRE’

The Allahabad High Court’s recent decision in Uday Prakash v. Anand Pandit and Anr. [FAO (D) 432/2021; Order dated 27th August 2021] was particularly illuminative with respect to certain established principles under Indian copyright law, while also shedding light on the procedural requirements in a quia timet action and applications for temporary injunctions. The Court herein was hearing an appeal from an Order of the Ld. District Judge, Ghaziabad, wherein the Plaintiff-Applicant’s application for temporary injunction on account of infringement of copyright was rejected. A summary of the brief facts followed by the Court’s findings and a brief reflection / analysis of the same is provided below:

BRIEF FACTS

The Plaintiff had instituted a suit before the District Judge, Ghaziabad, for infringement of copyright owned by the Plaintiff relating to a literary work titled ‘Highway-39’ (“Plaintiff’s Work”), which he had also gotten registered on 16.07.2007 with the Copyright Office at New Delhi under Registration No. L-28822/2007. The Plaintiff claimed to have discussed the Plaintiff’s Work with a Mr. Mazhar Karman, as he had assured the Plaintiff that he will show the Plaintiff’s Work to a few prominent producers in the film industry, which included Defendant No. 1.

The Plaintiff further claimed that, in June 2019, he came to know from ‘reliable sources in the film industry’ that Defendant No. 1 was producing a movie titled ‘Chehre’ (“Impugned Work”) which is very similar to the Plaintiff’s Work. Defendant No. 2 is the director of said movie, and was accordingly impleaded in this suit as well. The Plaintiff sent a cease-and-desist legal notice to the Defendants on 14.06.2019, asserting that the Impugned Work infringes copyright in the Plaintiff’s Work and accordingly seeking stoppage of production of the Impugned Work. However, the Defendants replied to said notice on 29.06.2019, wherein it wholly denied any copyright infringement by the Impugned Work.

It is also notable that in the Written Statement filed by the Defendants, a similar stance was adopted and it was asserted that the Plaintiff’s Work was devoid of ingenuity / originality and was merely an adaptation of the novel, ‘A Dangerous Game’, by Friedrich Durrenmatt. It was further contended that the Plaintiff’s suit was merely a quia timet action (as the Impugned Work was not to be released in February 2020, as was alleged by the Plaintiff), which was founded on unreliable sources and erroneous apprehensions.

Asides from the overarching issue of infringement of copyright in the Plaintiff’s Work, the Court in this appeal was also dealing with / revisiting the following pertinent legal issues:

  • Is the Defendant obligated to provide access to the allegedly infringing work (herein, the script of the Impugned Work) to the Plaintiff, in order to allow the latter to substantiate its claims of infringement of copyright?
  • What are the appropriate legal principles to be applied while dealing with a quia timet action, specifically when such action is purportedly instituted on the basis of tenuous apprehensions?
  • Can the Defendant be deemed to have ‘access’ to the original work on the basis of merely vague assertions to that effect?

FINDINGS OF THE COURT

At the outset, the Court reiterated the settled legal principles to ascertain whether a prima facie case for infringement of copyright, in an application for temporary injunction, is made out. Namely, the Plaintiff’s Work must be shown to be an original work, the Defendant should have had access to the same and the Impugned Work must be shown to be substantially similar to the Plaintiff’s Work. The Court then proceeded to apply this criteria to the instant factual matrix, and observed as follows:

“28. Now, the question whether a prima facie case is made out, is intrinsically connected to the cause of action regarding infringement of the copyright alleged. It is true that in order to establish a prima facie case, in an action for infringement of copyright, there have to be pleadings to establish that the literary work, of which the plaintiff claims infringement by the defendants should be shown to be the plaintiff’s original literary work, in the sense that the work is at least original rendition of a known theme with the plaintiff producing it, employing his knowledge, labour and skill. In addition, it has also to be established that the defendant had access to the plaintiff’s work, and that the offending script is substantially similar to the plaintiff’s script. Here, there is no doubt about one fact that the plaintiff holds a copyrighted work. But beyond that, the pleadings are utterly vague. There is an assertion to the effect that the plaintiff discussed the copyrighted work with Mazhar Kamran, but it does not say that he showed the copyrighted work to Kamran or handed it over to him. Therefore, there is a very vague case pleaded about the intermediary who could have possibly palmed off the copyrighted work to the defendants, on coming to know of its contents. A mere discussion of a work involving intellectual intricacies with another is not a case enough to impute that other with knowledge of its contents; and knowledge good enough to share it with a third party. The pleadings, therefore, are woefully vague about the access of the defendants to the copyrighted work.

29. The next assertion in the plaint that the plaintiff was given information about defendant no. 1 producing the feature film, that is essentially similar to the copyrighted work, is also utterly vague. It is set out in Paragraph no.5 of the plaint. The plaintiff does not name the source through which he came to know that the feature film is based on a script that is a plagiarized version of the copyrighted work. The terms employed in the relevant pleadings are “reliable source/sources from the film industry” which can hardly go to make for a prima facie case or a triable case for the grant of a temporary injunction in an action for infringement of copyright.

30. There is another issue which is required to be addressed. It is connected to the fundamental issue about whether the plaintiff at all had a cause of action to proceed for infringement with the kind of allegations that find place in the plaint. Prima facie, the plaintiff never had occasion to see what the contents of the script leading to the feature film were, the movie having not been released as yet and certainly not until time the suit was filed. The plaintiff has inferred that it is a copy of his work on the basis of some hearsay, that he has expressed through vague allegations in the plaint, describing them as reliable sources from the film industry. The entire action is, therefore, based on the plaintiff’s conjecture. This cannot be the basis of an action for infringement of copyright.”

In conjunction with the aforementioned observations, the Court also stated that in a quia timet action, the evidence about threat of injury should be tangible and concrete and cannot be based off bald assertions and hypothetical facts. That is to say, the burden of proof in a quia timet action is much heavier than in a case where an actual injury has already occurred. Although the Plaintiff tried to rebut the Court’s findings in this regard by asserting that the potential threat of injury has become increasingly potent in light of the impending release of the Impugned Work, the Court rebuffed this contention as the Plaintiff had still failed to make out a prima facie case on the similarity between the two works. It was reiterated herein by the Court that the Plaintiff’s case was built on mere hearsay and conjecture, and such vague pleadings do not meet the requisite threshold to make out a prima facie case of infringement of copyright.

At this juncture, the Court also dealt with the Plaintiff’s contention that its failure to further substantiate its pleadings must be attributed to the Defendant’s refusal to provide access to the script of the Impugned Work, as in the absence of proper access to said script the Plaintiff could not provide an in-depth comparison of the alleged similarities between the two works. The Court opined that such refusal on the part of the Defendant was an ancillary issue, with the suit more likely to fail or succeed on the questions of whether the Defendant had access to the Plaintiff’s Work in the first place and whether an ordinary person upon comparing the two works would conclude that the latter work is a copy of the former. Relevant observations in this regard are reproduced below:

“39. Therefore, the question that is required to be addressed is not about the burden of proof, or so to speak, the defendants’ burden as the plaintiff claims, once they (the defendants) opposed the application for discovery to disclose the contents of the script that is the basis of the feature film, but whether the plaintiff has a triable case pleaded on the parameters of an action for infringement. It has already been held that there is absolutely vague pleading to show that the defendant could have had access to the copyrighted work. The Court in Mansoob Haider no doubt, has said that failing on the point of access, the plaintiff can still succeed, upon showing that on a comparison of the two works, an ordinary person would inevitably conclude that defendants had copied the plaintiff’s work. There is some doubt whether access has to be necessarily proved, but assuming that it is required to be proved, it would still be necessary for the plaintiff to plead and show that an ordinary person, in comparing the copyrighted work and the feature film, would inevitably come to the conclusion that the latter is a copy of the former.”

Pertinently, the Defendant had agreed to place upon the copy of its script before the Court (although the Plaintiff was still denied access to the same). Therefore, the Court was able to undertake a comprehensive assessment of the two works and to compare similarities (if any) between these works. Upon doing so, the Court agreed with the Defendant’s contention that the works are inspired by the novel, ‘A Dangerous Game’, which thus constituted the underlying idea behind both works. However, as per well-settled principles copyright law, what is material is the treatment / expression of this idea in the two works. Keeping this in mind, the Court finally found that the common theme / idea behind the two works has been expressed in a materially different and distinct manner, and thereby no case for copyright infringement can be made out at this interim stage. The Court did however expressly remark that its observations pertain to the temporary injunction alone, and a final expression on the similarities of the two works could only be delivered after trial has been conducted. The Court also briefly remarked on the potential remedies to be provided to the Plaintiff, in case he succeeds in trial, and also directed the lower court to expedite trial in the instant suit. The Court’s final observations are reproduced below:

“54. There is, thus, prima facie a materially different and distinctive development and treatment of the same theme in both the scripts. In the prima facie opinion of this Court, there is, apart from the fundamentals of the basic theme that appear to have come from a common source, no such distinctive feature in the copyrighted version that have been prima facie plagiarized. It must be remarked here that whatever comparison has been done, is not, in any manner, a final expression of opinion on merits about the distinctive similarities or the dissimilarities. That is something that has to await trial, where wholesome evidence would now be led. All the remarks here are limited to the decision of the temporary injunction matter and nothing more.

55. Now, a still further issue that is required to be examined is what would happen if at the hearing, the plaintiff were to ultimately succeed. Would damages alone be recompense enough? There is relief sought by way of a decree for rendition of accounts of the advance amount received by the defendants from the distribution companies, television channels, OTT platforms, television networks by selling distribution rights/ streaming rights of the feature film, infringing the plaintiff’s copyright. The said decree would entitle the plaintiff, if he succeeds, to proportionate proceeds on account, as may be determined that the film earns. But, apart from that, if the copyright is ultimately held to be infringed at the trial, monetary compensation may not be recompense enough. It is, therefore, to be ordered that if the plaintiff succeeds, all further displays of the feature film shall have to carry an acknowledgment, suitably to be displayed that the movie is based on the copyrighted work, which is the plaintiff’s authorship. Also, the trial of the suit is to be expedited. Since the learned District Judge is hearing the suit himself, he will proceed with the suit, fixing one date every week and endeavour to conclude the trial within four months.”

 CONCLUDING REMARKS

The Allahabad High Court’s decision is certainly a well-reasoned and comprehensive one, which delves extensively into settled tenets of Indian copyright law and reinforces the same. The idea-expression dichotomy drawn out in the instant case is in line with the findings of the Supreme Court in its seminal judgment in R.G. Anand v. Delux Films and Ors. [(1978) 4 SCC 118], and the Court’s detailed breakdown of the similarities (or lack thereof) between the two works is premised upon this dichotomy as well, on the basis of which it ascertained that a prima facie case has not been made out by the Plaintiff.

Additionally, the Court’s decision to not draw an adverse inference against the Defendant’s refusal to produce its script for the Plaintiff’s perusal is also prudent in light of this particular factual matrix, as there was no cause of action made out in the Plaintiff’s vague pleadings which could have been relied upon to compel the Defendant to disclose the script of its Impugned Work (which would have certainly had adverse commercial implications for the Defendants, given the massive scale of the Impugned Work and the numerous stakeholders involved in the production and distribution of such feature films). This aspect of the decision was also intrinsically linked with the Plaintiff’s failure to prove that the Defendant had access to the Plaintiff’s Work, thereby underscoring the importance of proving ‘access’ to an original work in a suit for infringement of copyright.

All-in-all, this decision of the Allahabad High Court helps fortify settled tenets of Indian copyright law while also providing further clarity on the relevant factors to be accounted for by a court of law while dealing with alleged copyright infringement (at the interim stage) in a quia timet action.

This article was originally published on IPRMENTLAW.