Guest Post: Beg to Differ

We have today for our readers, a guest post by Mr. Jagdish Sagar, an independently practicing lawyer, who in my opinion is one of the leading authorities on copyright law in India. He was formerly a partner at Anand and Anand, till 2011. Prior to that he was a civil servant till  2004. During his service with the Central Government he served as the Joint Secretary of the Ministry of Human Resources & Development in the earlies 1990s and was closely involved with not only the drafting of the Copyright (Amendment) Act, 1994 but also India's negotiations with the WTO prior to the signing of the Agreement on Trade Related Intellectual Property (TRIPs). 

In this post, Mr. Sagar persuasively critiques the decision of the Justice Valmiki Mehta in the recent Star News case which Kruttika has blogged about over here.  

Beg to Differ

by

Jagdish Sagar 

Image from here

I have seen praise in this blog for the Delhi High Court decision in Star India Pvt. Ltd. v Piyush Aggarwal & Ors. It is an important judgment, and reasoned in great detail, but I suggest that the Court has, basically, addressed the wrong question and has misinterpreted the provisions of the Copyright Act that it discusses. 

It appears to me that the Court erred in holding that there can be no “hot news” protection in India on the ground that it is barred by Section 16 of the Copyright Act. Though I have not seen the pleadings, nor heard the arguments, it appears to me that the suit was not (or should not have been) about copyright at all. 

The main question before the Court was simply whether the “hot news” right developed in the United States since the early years of the twentieth century in International News Service v. Associated Press - 248 U.S. 215 (1918) and the subject of various subsequent decisions including the landmark case of National Basketball Association v Motorola 105 F.3d 841 (2nd Cir. 1997) should be applied in India and if so, how, on the facts of the case before the Court. The “hot news” right is a common law right distinct from copyright and, as such, cannot be excluded by Section 16 of the Copyright Act: it is, for example, commonplace for copyright infringement and the common law remedy of passing off to be pleaded together, as distinct causes of action on the same facts. Section 16 cannot exclude a common law right which is not in the nature of copyright.

In National Basketball Association v Motorola the Court held that a claim based on INS would subsist distinct from copyright where (i) the plaintiff generates or collects information at some cost or expense; (ii) the value of the information is highly time-sensitive; (iii) the defendant's use of the information constitutes free-riding on the plaintiff's costly efforts to generate or collect it; (iv) the defendant's use of the information is in direct competition with a product or service offered by the plaintiff; and (v) the ability of other parties to free-ride on the efforts of the plaintiff would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened.

A single Judge of the Madras High Court adopted the “hot news” doctrine in M/s Marksman Marketing Services Pvt. Ltd. Vs. Bharti Tele-Ventures Ltd. & Ors. It was no doubt open to the learned Judge in the present case to differ from the Madras High Court decision and to decline to develop or support such a common law right in the Delhi High Court: that would, however, be a conservative approach which would deprive BCCI of a valuable right actually existing, actually bought and sold, under quite well-established existing industry practice.  Nevertheless, whichever way the Court decided, it would have been more satisfying to see a considered discussion of the pros and cons of a “hot news” right, and the basis on which the scope and duration of such a right should be fixed if it exists, rather than an unwarranted exclusion of common law remedies which are distinct from copyright, by reciting Section 16 of the Copyright Act out of place.  

That was the essence of what was, or should have been, the case.  However, the Court built up to its finding based on Section 16 somewhat irrelevantly (as it seems to me) with an extended discussion, among other things, of various facets of the performers’ right—and made a series of erroneous (but fortunately obiter) observations.

In the first place, it is an error (as I humbly submit) to treat the players and umpires etc in a cricket match as “performers” enjoying performers’ rights under sections 38 and 38A of the Copyright Act.

A performer is defined as follows:

2 (qq).   “performer” includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance …

A performance is defined as follows:

2 (q).     “performance”, in relation to performer’s right, means any visual or acoustic presentation made live by one or more performers…”

What is most important is the word “presentation”.  The relevant definition in the Shorter Oxford Dictionary is as follows (other definitions giving other senses of the word have no possible relevance):

“The action of presenting something to sight or view; theatrical, pictorial or symbolic representation; a display, an exhibition. Also, a show or demonstration of materials, information, etc.; a lecture.

Clearly a “presentation” is something prepared beforehand and consciously presented to the audience, not an unpredictable course of events.

Further, the Court should have applied the ejusdem generis principle to the list “actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer and a person delivering a lecture …”. These are all persons who have prepared (and probably rehearsed) the performance in some degree beforehand, and have presented it specifically as it is for the enjoyment of an audience.  What they present to the audience is something contrived beforehand.

By contrast, a cricket player (assuming that the match was not rigged)  is no more a “performer” than a soldier fighting a battle. To confer performers’ rights on people playing games would be fraught with grave, and also absurd, consequences: it would, for example (excluding questions of privacy, which are not our concern here) become an infringement of performers’ right to record children playing a game of hide and seek!!

Further, the learned Judge throughout the judgment expresses the belief that the performer has a copyright in a performance. This is a complete misconception. Copyright is something that vests only in works. The following classes of works are identified in Section 13 of our Act:

       (a)   Original literary, dramatic, musical and artistic works;

       (b)   cinematograph films; and

       (c)    [sound recording].

Now a performer may indeed have performed works in class (a) and his performance may have been recorded in the works in classes (b) and/or (c). He is not however, the author of any these works. That performers do not enjoy copyright is not only obvious from the Act but has actually been laboriously settled by a Division Bench of the Bombay High Court, long before we had a separate performers’ right in the Act, in the case of Fortune Films International v Dev Anand & Anr (AIR 1979 Bom 17).

The Copyright Act creates several rights besides copyright. These, called “related rights” or “neighbouring rights”, include the rights of Broadcasting Organisations under section 37, and the rights of performers under sections 38 and 38A.  In our Copyright Act, the moral rights of authors under section 57 are also distinct from copyright. The mere fact that a right is conferred under the Copyright Act does not make it a “copyright”.

Further, it would not be correct to suggest, as the judgment does, that a performer loses all further rights once the performance is recorded.  Section 38A has been specifically inserted to give a performer’s recorded performance a neighbouring right in the recording which is parallel to the copyright in the sound recording or visual recording, though not to the rights in any underlying literary, musical or dramatic works.  The performers’ rights include the right to reproduce the sound recording; the right to issue (first) copies of it to the public; the right to communicate it to the public; the right to give it on  commercial rental or offer any (including an earlier issued) copy for sale; and the right to broadcast or communicate the performance to the public except where the performance has already been broadcast. Thus under section 38A(1) performers enjoy rights which are, generally speaking, parallel to but distinct from the rights of sound recording producers u/s 14(e) or of film producers u/s 14(d).  

Sub-section (2) of Section 38A, however, provides that once a performer has, by written agreement, consented to the incorporation of his performance in a cinematograph film he shall not object to the film producer’s exploitation of the film though he may retain a claim to royalty. This clause is necessary to obviate the risk of a performer obtaining an injunction stopping release or exhibition of a film, in which the producer would have made heavy investment. (Incidentally since in some countries there are multiple authors in a film, article 14 bis (2) of the Berne Convention effectively requires that such countries should provide means to prevent a similar hold-up of the film by authors. This problem does not arise in our Act where the producer himself is the author and thus first owner of the copyright).

Unless the rights are assigned to the or sound recording, the performer whose performance has been aurally fixed can exploit them along with the producer for the term of the performers’ right.  Likewise, unless he assigns a right to royalty to the producer, the performer whose performance has been fixed audiovisually can exploit the right to royalty for the term of the performers’ right.

In conclusion, then, in my respectful opinion the decision is both fundamentally erroneous, failing to address the main question before the Court; and, further, is erroneous in a series of pronouncements on performers’ rights which, on my analysis, are anyway obiter dicta.