Super Cassettes Industries v. Myspace Inc and Anr.

This post was first published on August 6th, 2011.

Brief Facts:

The Plaintiff – Super Cassettes Industries, is involved in the business of music distribution and film producing. The plaintiff claims to be the owner of several sound recordings, cinematograph films, songs, etc, they also claim to possess 20,000 non-film Hindi songs and 50,000 songs in various regional languages. It is largely dependent on the exploitation of its copyright, as this exploitation benefits the plaintiff monetarily enabling it to carry on its various business activities. The plaintiff claims that exploitation of its copyright is done by granting public performance licenses by it, for which they receive a certain amount towards royalty. There are two defendants in this case; defendant 1 is MySpace Inc which is based in the United States of America and it is stated to be a social networking and entertainment website. It is also said to offer a variety of applications for activities such as sharing; viewing music, images, cinematograph works etc. Defendant 2 is the owner of MySpace Inc, defendant 1, which is stated to be a division of News Corporation, Fox Interactive media which offers border free online network which caters to its customers by providing various tools. The plaintiff claims that in year 2007 there was a non-disclosure agreement signed between the plaintiff and the defendants, following which there were discussions with regard to the defendants procuring a license from the plaintiff to display the plaintiff’s copyrighted material. However the talks between the two parties fell through and the plaintiff’s copyrighted material was still available on the website of the defendants without any license from the plaintiff.  In 2008 the defendants suggested to the plaintiff that it register for its risk management tool program (one of the three important safeguards provided by the defendants) via email. A legal notice wherein the plaintiff stated its rights was sent to the defendants on 20.02.2008, and the reply to that notice was sent by the defendants on 12.03.2008. In the reply notice the defendants had assumed that the copyrighted material of the plaintiff had been taken down and that the material would not be available online again. In December 2008, the plaintiff had discovered that the defendants had not removed the plaintiff’s copyrighted material from its website despite the assurance that the same would not be available on their website. Dissatisfied with the assurances of the defendants the plaintiff filed the present suit before the Delhi High Court; the plaintiff also sought interim relief before the same court.

Issues:

Whether the act of the defendants of publishing the plaintiff’s copyrighted work on its website without any license or authority would amount to infringement under Section 51 (a) (i) the Copyright Act, 1957?
Whether the act of the defendants of providing a place for its users to communicate work to the public for its own profit would amount to allowing the place to be used for infringement under Section 51 (a) (ii) of the Act?

Rule of Law:

Section 13 of the Copyright Act, 1957 lays down in what work copyright exists and in what work it does not. Section 14 of the Act, defines the rights of the copyright owner. What would amount to infringement has been given under section 51 of this Act. Section 51 (a) (i) lays down that a copyright in a work shall be considered to be infringed, when any person does any act without a license given by the owner of the copyright or Registrar of Copyrights under this Act, or   if he does any act in contravention of the conditions given in the license which was so granted to him or contravenes any condition imposed on him by any competent authority, where the exclusive right to do such an act vests exclusively with the owner of the copyright under this Act. Section 51 (a) (ii) lays down that when a person provides for profit any place to be used for communicating to the public, such communication can be regarded as infringement unless that person is not aware and he also has no reasonable grounds for believing that such communication to the public will amount to infringement.

Held:

The court found in favor of the plaintiff with regard to infringement under Section 51 (a) (ii), it said that the defendant’s acts could be considered to be prima facie infringement with regard to this provision of law.  With respect to the defendant’s role of authorizing infringement under Section 51 (a) (i) the court held that this issue was not clear from the matter presented before it, however, there was clear knowledge on the part of the defendants of what they were communicating. The court also stated that when the plaintiff informed the defendants about its copyrighted material, the defendants became aware not only of the mode of infringement but also the rights of the plaintiff, and the defendants cannot  after becoming aware continue to  do the same acts in relation to the work for which no permission has been given to it. If the defendants fail to do what is necessary then they will be placed in the position of an ordinary infringer under Section 51 (a) (i) and in such a case the question of authorization becomes irrelevant. The court also passed an interim direction and order, restraining the defendants, agents, representatives, servants, officers or any other persons on the defendants behalf from modifying the plaintiffs work, by adding advertisements, logos, sponsorship to the plaintiffs work and making any profits in any manner, by uploading the same to their webpage without any inquiry into the ownership of such work, the defendants were also ordered not to make such work available to the public on their webpage. With regard to future work of the plaintiff being uploaded on the defendants space by those persons other than those mentioned earlier, the court held that, as and when it comes to the plaintiffs notice that any of its copyrighted material is available on the defendants website, the plaintiff shall give the defendants a detailed list of the songs and films available on its website and the defendants shall take action to remove the same within one week from the date of such communication. The court also ordered the defendants to take action to check the ownership and updations in the work of the plaintiff through its own efforts and to remove any infringing material or offending content once it gains knowledge of such work being available on its website.

Analysis:

The court while deciding this case first discussed the law on the subject of copyrights in India. It examined the wording of section 51 (a) (ii) which provides permitting “any place” for profits. From the wording alone it cannot be understood what type of place is to be used in order for it to amount to infringement. However, the court held that from the wording in the subsections it would mean that any place would be a physical place or place on the internet or web space. In order to get a clear view of this term, the court looked into the UK Copyright Act, 1956 and the Act of 1988. The court while deciding on this aspect made a reference to a decision of the House of Lords in Comdel Commodities Ltd v. Siporex Trade, SA which held that when there is a change in the social conditions and the law does not provide for the same there shall be no assumption that the law does not apply to it, when the wording in the law is wide enough to apply it to the situation. The court also looked into State of Maharashtra v.  Praful B Desai. In keeping with these judgments, the court held that since the wording in section 51 (a) (ii) is loosely worded there can be the presumption that the term “any place” includes web space in order to cover the wrongs committed in the web space. The defendants also had advertisements that appeared on their web pages along with the plaintiff’s copyrighted work either before showing clips or after. In this case, the defendants also have a limited license to add, modify, and delete certain work uploaded by the users this would also amount to permitting the place for profits.
The court then drew a difference between the concepts of authorizing infringement and providing a place for profit. It took the view that authorization involves participation more than just mere knowledge. The court looked into English rulings which held that authorization would require sanction or approval. Even though the defendants do exercise a certain level of control over the material uploaded the court held that it would not amount to complete sanction or approval which is the standard of the common law. The court held that even though there may not have been active approval or sanction the defendant’s acts infringes the plaintiff copyright.

Authored by: Vinita J.

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