Development In Indian IP Law: The Copyright (Amendment) Act 2012

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By Abhai Pandey

India’s Copyright Act, 1957 has been significantly amended. In May 2012, both houses of the Indian Parliament unanimously placed their seal on the Copyright Amendment Bill, 2012, bringing Indian copyright law into compliance with the World Intellectual Property Organization “Internet Treaties”.

Leaders of the opposition in both houses and representatives from various parties gave spirited support to the bill tabled by the government.

The Copyright Act, 1957 had been amended five times prior to 2012, once each in the years 1983, 1984, 1992, 1994 and 1999, to meet with the national and international requirements.

The 2012 amendments make Indian Copyright Law compliant with the Internet Treaties – the WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT).

Also, while introducing technological protection measures, the amended law ensures that fair use survives in the digital era by providing special fair use provisions. The amendments have made many author-friendly amendments, special provisions for disabled, amendments facilitating access to works and other amendments to streamline copyright administration.

This article gives a narration of the changes made by the Copyright (Amendment) Act.

The amendments introduced through Copyright (Amendment) Act 2012 can be categorized into:

1. Amendments to rights in artistic works, cinematograph films and sound recordings.
2. WCT and WPPT related amendment to rights
3. Author-friendly amendments on mode of Assignment and Licenses
4. Amendments facilitating Access to Works
5. Strengthening enforcement and protecting against Internet piracy
6. Reform of Copyright Board and other minor amendments

 

I. Rights in Artistic Works, Cinematographic Films and Sound Recordings

Section 14 relating to the exclusive rights in respect of a work has been amended. The amendments clarify the rights in artistic works, cinematograph films and sound recordings, by providing that the right to reproduce an artistic work, to make a copy of a cinematograph film or embodying a sound recording now includes ‘storing’ of it in any medium by electronic or other means.

In the case of literary, dramatic and musical works, the right to reproduce already includes ‘storing of the work in any medium by electronic means’. The present amendment in effect only extends this inclusive language to artistic works, cinematograph films and sound recordings.

The right to store the work is of particular importance in a digital environment due to the special nature of transmission of digitized works over the internet where transient copies get created at multiple locations, including over the transmitting network and in the user’s computer. In a manner of speaking, it can be stated that copyright has been extended to the ‘right of storing’ of works.

It also creates liability for the internet service providers. While adding this right, the Act also treats as fair use the transient or incidental storage and safe harbour provisions to service providers.

The definition of the Cinematograph Film (Section 2(f)) has also been amended. The amended definition reads: Cinematograph Film means any work of visual recording and includes a sound recording accompanying such visual recording and “cinematograph” shall be construed as including any work produced by any process analogous to cinematography including video films.

The Amendment Act also introduces a definition of ‘visual recording’ (Clause xxa) to mean ‘recording in any medium, by any method including the storing of it by any electronic means, of moving images or of the representations thereof, from which they can be perceived, reproduced or communicated by any method.’

The amendments address technical issues like ‘storing’, and therefore address some of the digital era challenges.

 

II. WPPT and WCT related Amendment to Rights

Commercial Rental

The obligation under Article 11 of the TRIPS Agreement, Article 7 of WCT and Article 9 of WPPT is to provide for ‘commercial rental’ rights for computer programmes and cinematograph films. This right was introduced in section 14 by using the word ‘hire’.

The term ‘hire’ in sections 14(d)&(e) with regard to cinematograph film and sound recording, respectively, is replaced with the term ‘commercial rental’. The primary reason behind the replacement is to curtail the possibility of interpreting the term ‘hire’ to include non-commercial hire and also to keep in sync with the replacement (1999 amendment) of the term ‘hire’ to ‘commercial rental’ with respect to computer programme in section 14(b).

This amendment substitutes the word ‘hire’ with ‘commercial rental’ in sections 14 (b)&(c) but has deleted the words ‘regardless of whether such copy has been sold or given on hire on earlier occasions’.

This deletion in the case of both cinematograph films and sound recordings brings in the doctrine of first sale exhaustion to these works. It may be recalled that the doctrine of first sale exhaustion was applicable only to the literary, dramatic and artistic works before the amendment.

The Amendment Act 2012 has also introduced a definition of the term ‘commercial rental’ in section 2(fa) with the objective of expressly clarifying that the right is not applicable to non-commercial activities of giving on ‘hire’ including the activities of libraries and educational institutions.

Performers’ Rights

The Amendment Act 2012 has introduced affirmative performers’ rights. Subsections 3&4 of the present section 38 have been omitted and a new section 38A has been inserted in compliance with Articles from 6 to 10 of WPPT.

Section 38A provides for performer’s right as an exclusive right to do or authorize the doing of any of the acts in respect of the performance without prejudice to the rights conferred on authors. The proviso to the section enables performers to be entitled for royalties in case their performances are subjected to commercial use.

This is a welcome development as earlier the performers were not entitled to royalties because they only had a negative right to prohibit ‘fixation’ of their live performances. The negative right has now been converted to the positive rights.

Along with the above, the Amendment Act 2012 has also sought to amend the definition of ‘Communication to Public’ (Section 2 (ff)) extending the right to performances. The rights under this head hitherto limited to authors have been extended to performers by the present amendment.

This is consequential to the grant of new rights to performers. The right of ‘communication to public’ is essential to protect the work on the internet and such protection hitherto available for ‘works’ now extends to ‘performances’.

A new section 38B grants moral rights to performers in line with Article 5 of WPPT. Moral rights have been extended to performers, considering the possibility of digital alteration of performances in a digital environment. The ‘explanation’ to the section clarifies that editors are free to perform their tasks without the fear of legal consequences.

Another significant amendment in line with Article 9 of WCT is regarding the duration of protection of photographic works. The term of copyright in a photograph has been made at par with other artistic works, namely, until sixty years after the death of the author.

 

III. Author friendly Amendments on mode of Assignment and Licenses

Assignment of Rights

Under Section 18(1) a second proviso has been inserted. It provides that no such assignments shall apply to any mode of exploitation that did not exist or was not known in commercial use when the assignment was made.

This amendment strengthens the position of the author if new modes of exploitation of the work come to exist.

Section 18(1) provides that the owner of a copyright in any work or prospective owner of a future work may assign the copyright, and the proviso to this sub-section clarifies that in the case of future work, assignment will come into force only when the work comes into existence.

Another proviso under S. 18(1), inserted through Amendment Act 2012, provides that the author of a literary or musical work incorporated in a cinematograph film or sound recording shall not assign the right to receive royalties in any form other than as a part of the film or sound recording.

Section 19 relates to the mode of assignment. Sub-section(3)has been amended to provide that the assignment shall specify the ‘other considerations’ besides royalty, if any, payable to the Assignor. Therefore, it is not necessary that only monetary compensation by way of royalty could lead to assignment.

A new sub-section(8)has been inserted making the assignment of copyright void if contrary to the terms and conditions of the earlier assignment to a copyright society in which the author of the work is a member. This amendment is an attempt to streamline the business practices. Another amendment, insertion of sub-section(9), by providing claim to royalties from the utilization of the work used to make a cinematograph or sound recording irrespective of any assignment of the copyright in the same, is an attempt to rationalize the business practices prevalent in the film industry.

Section 19A relates to disputes with respect to assignment of copyright. This section provides that on receipt of a complaint from an aggrieved party, the Copyright Board may hold inquiry and pass orders as it may deem fit, including an order for the recovery of any royalty payable. The second proviso is amended to provide that pending disposal of an application for revocation of assignment, the Copyright Board may pass any order as it deems fit regarding implementation of the terms and conditions of assignment.

 

IV. Amendments to Facilitate Access to Works

  • Grant of Compulsory Licenses
  • Grant of Statutory Licenses
  • Administration of Copyright Societies
  • Fair Use Provisions
  • Access to copyrighted works by the Disabled
  • Relinquishment of copyright

Compulsory Licenses

Section 31 deals with compulsory licenses of works withheld from public. The amendment amplifies the applicability of this section from ‘Indian work’ to ‘any work’. The word ‘complainant’ is also replaced with the words ‘such person or persons who, in the opinion of the Copyright Board is or are qualified to do so’. In continuum, sub-section (2) is omitted so as to enable the Copyright Board to grant compulsory license to more than one person.

By virtue of the above amendment, compulsory licenses can be obtained for ‘any work’ withheld from the public and not just ‘Indian works’ and the license can be granted to such persons as the Board may decide.

Section 31A relates to compulsory licenses in unpublished ‘Indian works’. This has been amended to allow compulsory licenses to any unpublished work or any work published or communicated to the public where the work is withheld from the public in India and in cases where the author is dead or unknown or the owner cannot be traced.

Special provisions have been provided for compulsory licensing of the works for the disabled by inserting Section 31B.

Statutory Licenses

A new Section 31C provides for statutory license to any person desiring to make a cover version of a sound recording in respect of any literary, dramatic or musical work. The amendment provides that the person making the sound recording shall give to the owner prior notice of his intention in the prescribed manner, provide the copies of all covers or labels with which the version is supposed to be sold, and pay in advance the royalty at the rate fixed by the Copyright Board. Such sound recordings can be made only after the expiration of 5 years after publication of the original sound recording. There is a requirement of payment of a minimum royalty for 50,000 copies of the work during each calendar year.

This is not totally a new provision for statutory license for cover version as it is, but a replacement of Section 52(1)(j) as it stood before the amendment.

A new section 31D providing for statutory license for broadcasters has been brought to facilitate access to the works for the broadcasting industry. At present the access to copyrighted works was dependent upon voluntary licensing. The amendment provides that any broadcasting organization desiring to broadcast a work including sound recording may do so by giving prior notice to the right holders and pay royalty as fixed by the Copyright Board in advance. The names of the authors and principal performers shall be announced during the broadcast. The broadcasting organization shall maintain records of the broadcast, books of account and render to the owner such records and books of account.

Administration of Copyright Societies

Sections 33, 34 and 35 relate to the registration and functioning of a copyright society. These have been amended to streamline the functioning of the copyright societies.

All copyright societies will have to register afresh with the registration granted for a period of five years. Renewal is subject to the continued collective control of the copyright society being shared with the authors of works in their capacity as owners of copyright or of the right to receive royalty.

There are specific amendments to protect the interests of the authors. In Section 35, the phrase ‘owners of rights’ has been substituted with ‘authors and other owners of right’. The section has been amended to provide that every copyright society shall have a governing body with such number of persons elected from among the members of the society consisting of equal number of authors and owners of work for the purpose of the administration of the society. Section 35(4) provides that all members of a copyright society shall enjoy equal membership rights and there shall be no discrimination between authors and owners of rights in the distribution of royalties.

Fair Use Provisions

Section 52 enumerates fair use clauses, acts that will not be infringement of copyright. Certain amendments have been made to extend these provisions in the general context.

The existing clause (1)(a) has been amended to provide fair dealing with any work, not being a computer programme, for the purposes of private and personal use. With this amendment, the fair use provision has been extended to cinematograph and musical works.

Fair use in the above lines has been extended by amendment to bring in the word ‘any work’ to reproduction in the course of judicial proceedings; reproduction or publication of any work prepared by secretariat of a legislature; in certified copies supplied as per law.

A new clause 52(1)(w) provides that the making of a three dimensional object from a two dimensional work, such as a technical drawing for industrial application of any purely functional part of a useful device shall not constitute infringement. This provision should help reverse engineering of mechanical devices.

A new clause 52(zc) has been introduced to provide that importation of literary or artistic works such as labels, company logos or promotional or explanatory material that is incidental to products or goods being imported shall not constitute infringement. This clause supports the parallel import provision embedded in the Trade Marks Act, 1999.

Clauses (zb) and (zc) provide for fair dealing in the use of disabled persons.

Fair use provisions have been extended to the digital environment. Any transient and incidental storage of any work through the process of ‘caching’ has been provided exceptions as per the international practice. Any deliberate storing of such works and unauthorized reproduction and distribution of such works is an infringement under Section 51 attracting civil and criminal liability. Exceptions under this section have been extended to education and research purposes, as works are available in digital formats and in the internet. The scope of these provisions ensures that introduction of new technology will also be covered under this new section.

An explanation has been inserted to clause (1)(a) of Section 52 to clarify that storing of any work in any electronic medium for the specified purposes, including the incidental storage of a computer programme which in itself is not an infringing copy, shall not be an infringement.

A new clause (b) in Section 52 seeks to provide that transient and incidental storage of a work or performance purely in the technical process of electronic transmission or communication to the public shall not constitute an infringement of copyright. Similarly, clause (c) provides that transient and incidental storage of a work or performance for the purposes of providing electronic links, access or integration, where the right holder has not expressly prohibited such links, access or integration, shall not constitute infringement.

To facilitate digitization of libraries a new clause (n) has been introduced to enable the storage of a digital copy of a work if the library possesses a non-digital version of it.

The unauthorized use of copyright work over the internet leads to suspension of the service provider’s activity.

The new clause (c) of Section 52, while providing for fair use exemption for transient or incidental storage of works, also provides for the internet service provider’s liability when read with the additions of rights of storage and definition of infringement.

A proviso has been added to this clause to provide a safe harbour as per international norms to internet service providers, as they are merely carriers of information provided by others. This is generally referred to as ‘notice and take down procedure’. If the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the work, that the transient or incidental storage is an infringement, such persons responsible for the storage shall refrain from facilitating such access for a period of twenty-one days or till he receives an order from the competent court refraining from facilitating access. In case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access.

Special Provision for Access to the Disabled

  1. Compulsory License for the Disabled

Section 31B provides for compulsory license in works for the benefit of the disabled. The Copyright Board, on an application for a CL by any person working for the benefit of persons with disability on a profit basis or for business shall dispose such application within a period of two months from the date of receipt of application.

The CL issued must specify the means and format of publication, the period during which the compulsory license may be exercised and the number of copies that may be issued including the rate or royalty.

  1. Fair Use Rights for the Disabled

The new clause (zb) added to section 52(1) providing for fair use of the work for the benefit of the disabled, facilitates adaptation, reproduction, issue of copies or communication to the public of any work in any accessible format, for persons with disability to access works including sharing with any person with disability for private or personal use, educational purposes or research.

These rights are available to any person or organization working for the benefit of the persons with disabilities.

Easier relinquishment of copyright
Section 21 deals with the right of author to relinquish copyright. The amendment facilitates relinquishment of copyright by way of public notice. Sub-section 1 now provides relinquishment of copyright either by giving notice to the Registrar of Copyrights or by way of public notice.

 

V. Strengthening Enforcement and Protecting against Internet Piracy

Strengthening of Border Measures

Section 53, dealing with importation of infringing copies, has been substituted with a new section providing detailed border measures to strengthen enforcement of rights by making provision to control import of infringing copies by the Customs Department, disposal of infringing copies and presumption of authorship under civil remedies.

Protection of Technological Measures

The new section 65A, introduced for protection of technological protection measures (TPM) used by a copyright owner to protect his rights on the work, makes circumvention of it a criminal offence punishable with imprisonment.

As a result, any person who circumvents an effective technological measure applied for the protection of any of the rights, with the intention of infringing such rights, shall be punishable with imprisonment, which may extend to two years and shall also be liable to fine. The rationale is to prevent the possibility of high rate infringement (digital piracy) in the digital media.

This amendment also clarifies the problem of circumvention impacting the public interest on access to work facilitated by the copyright laws. Sub-section (2) permits circumvention for specified uses.

Digital Rights Management Information

Section 65B has been introduced to provide protection of rights management information, which has been defined under clause (xa) of section 2.

This amendment is intended to prevent the removal of the rights management information without authority and distributing any work, fixed performance or phonogram, after removal of rights management information. As a result, any unauthorized and intentional removal or alteration of any rights management information is a criminal offence punishable with imprisonment, which may extend to two years and fine. The rationale of the protection emanates from the practice in the digital world of managing the rights through online contracts governing the terms and conditions of use.

The protection of technological measures and rights management information were introduced in WCT and WPPT as effective measures to prevent infringement of copyright in digital environment. The introduction of Sections 65A and 65B is expected to help the film, music and publishing industry in fighting piracy.

 

VI. Reform of Copyright Board

Copyright Board

The Copyright Board during the last decade has changed significantly. Considering the diverse nature of issues being dealt with by the Copyright Board, section 11 relating to the constitution of the Copyright Board has been amended to make it a body consisting of a Chairman and two members. A provision has also been introduced for payment of salaries and allowances to the members of the Board. This reformist approach is timely, looking at the multifarious responsibilities the Copyright Board is now called upon to discharge.

Overall the amendments introduced are forward looking. This will enable the Copyright Act 1957 to become as one of the best copyright legislations in the world.


Abhai Pandey is an attorney-at-law with over 16 years of Corporate and Intellectual Property Law practice in India. He has experience in advising and conducting IP litigations and other contentious matters before various forums including District Courts, High Courts, IP Offices and the Intellectual Property Appellate Board. He is the lead member of the IP Litigation and Enforcement team of LexOrbis and has led many Anti-piracy and Anti-counterfeiting campaigns.

 

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