Guest post: ICC Development v New Delhi Television

We bring you another guest post by Archana Sahadeva, this time reviewing a case just decided on fair dealing vis-a-vis Copyright and broadcast reproduction rights. (See previous guest post by Archana here) 

ICC DEVELOPMENT (INTERNATIONAL) LTD & ANR. V. NEW DELHI TELEVISION LTD.

CS (OS) No. 2416/2012 Decided: September 18, 2012 

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The Hon’ble Delhi High Court is embroiled in a yet another dispute involving the copyright and broadcast reproduction rights of the Plaintiffs vis-à-vis the “Fair Dealing” defense raised by the Defendant.

Plaintiff no. 1 is the wholly owned subsidiary of ICC, the international governing body for cricket. Plaintiff no. 2 is a sports broadcasting and content provider which delivers various international and regional sports contents to viewers via its sports channels.

           Plaintiff no. 1, vide an agreement, granted to Plaintiff no. 2 exclusive rights to make live, deferred or delayed transmissions on its channels, record, edit or utilize footage in order to transmit highlights, mobile broadcast rights along with various broadcast sponsorship rights, commercial airtime rights and other rights to associate ICC events for the period from September, 2007 till 2015 and includes  exclusive broadcast reproduction rights of ICC events.

Defendant runs a number of news channels such as NDTV 24*7 (English) and NDTV India (Hindi).

Plaintiff’s Arguments:

4.              Plaintiffs’ grievance was that subsequent to ICC CWC 2011 match, Defendant violated News Access Guidelines framed by Plaintiff no. 1 on multiple occasions and as such has infringed the Plaintiff no. 1’s copyright. Whilst Plaintiff no. 1’s guidelines permits use of the fresh footage for five and a half minutes per news day, two minutes of fresh footage per hour of broadcasting and two repeat exhibition per broadcast hour, Defendant broadcasted footage which exceeded the limits.

5.              Defendant did not acknowledge Plaintiff no.1’s rights nor did it use the logo of Plaintiff no.2 or the logo of ICC CWC 2011.

6.          ICC CWC 2011 logos, trademarks, word marks, trophy are also alleged to have been commercially associated by Defendant with third parties during broadcast of special shows relating to the said events.

7.              Plaintiffs also objected to the use of Score Cube used by Defendant for providing continuous score along with the name of the advertiser/sponsor.

Defendant’s Arguments:

8.                Though the Defendant did not dispute Plaintiffs’ rights or the fact that it did not use Plaintiffs’ footage as per the guidelines during ICC CWC 2011, it however contended that the relief sought by Plaintiffs would impinge on its Constitutional rights and that it is protected by fair dealing provisions s.39 and s.52 of the Copyright Act, apart from being against public policy and the interests of the general public.

9.                It was also contended that Plaintiffs cannot be allowed to bring a suit after 16 months of the ICC CWC 2011 taking place. It was argued that no cause of caution has arisen to bring the instant suit in as much as Plaintiffs were seeking an injunction against an anticipated act viz. infringement by Defendant of the rights of the Plaintiffs in the ICC Twenty-20 World Sri Lanka, 2012.

10.             Another pertinent contention raised by the Defendant was that it was following the guidelines laid down by the News Broadcasters Association (NBA).

Issues:

11.        On the basis of the contentions raised, the issues formulated by the Ld. Judge can be summarized as under: 

A)  What would be the maximum length of the fresh/archival footage which can be said to be consistent with the concept of fair dealing?

B)  Whether advertisements can be carried by Defendant immediately before, during or after special programs which it telecasts on its news channels?

C)   Whether advertisements can be shown on tickers below the footage at the time live/archival footage is being shown during special programs and news bulletins and if so, subject to what conditions and limitations?

D) Whether Defendant can give such titles to its special programs as would indicate an association of the sponsor of such program with the event?

Issue regarding Maximum Length of the footage:

12.            At the outset the Ld. Judge, following the ruling in “ESPN Star Sports v. Global Broadcast News” 2008 (38) 477 (Del.) (DB) (which expressly approved the ruling in “Media Works V. Sky Television Network” CIV 2007-404-5674), held:

a)     On a combined reading of Sections 2(dd), 37 and 52 of the Copyright Act it follows that the Legislature recognizes copyright and broadcast rights as independent rights and has also permitted use of the work of another person for limited reasons provided that such use does not travel beyond the fair dealing of the work;

b)    The reporting of news and current events undoubtedly forms part of the fundamental right of freedom of speech & expression guaranteed under Article 19(1)(a) of the Constitution, however the said right cannot be an unfettered right in as much as Defendant cannot use the Plaintiffs’ footage in an unlimited fashion.

13.            Upon a comparison of Plaintiff no. 1’s guidelines with NBA’s guidelines, the Ld. Judge concluded that the guidelines framed either by Plaintiff or the NBA do not have  statutory backing and the said guidelines, therefore, can only be used as an aid in determining what can be said to be use of the footage consistent with the concept of fair dealing.

14.           The Ld. Judge therefore directed that the duration of the footage, fresh or archival by Defendant would be limited to the extent permitted under the “ICC Twenty 20 World Cup, Sri Lanka, 2012” News Access Regulations in India.

Issue regarding Special Programs and the Advertisements associated with it:

15.             The plaintiffs, prima facie, established that the defendant was associating companies which were not the official sponsors of the event with special programs covering the event in a manner which gave the impression that these companies were the official sponsors of the event.

16.     The Ld. Judge concurred with the Plaintiffs’ submissions that there would be no good reason for advertisers to pay large sums to the Plaintiffs for being associated with the event in the event they can directly strike deals with news channels for far lesser amounts.

17.        Though the airing of special programs by Defendant was held to be valid, advertising immediately before, during and at the end of such special programs was considered commercial exploitation of Plaintiffs’ work. It was therefore held that Defendant cannot use the name, logo etc. of any advertiser in the title of its special programs with respect to ICC World Cup 2012 in a manner which would give an impression that the advertiser is a sponsor of or is associated with the event.

18.          On the issue that under Plaintiff’s guidelines the time lag stipulated between the occurrence and broadcast of a fresh footage is 30minutes, the Ld. Judge held that the same was justified in as much as the news channels were at liberty to report the event so long as the footage is not shown. The Ld. Judge additionally observed that the guidelines of the NBA which permitted a 7minute delay and 5minutes in case of exceptional events such as scoring a boundary, fall of wicket etc. are not sufficient to safeguard Plaintiffs’ interests.

19.          Regarding the advertisements on tickers the Ld. Judge held that the use of Plaintiffs’ footage during news bulletins is not per se inconsistent with the concept of fair dealing merely because the advertisement is carried on the ticker of the footage when it is shown as part of the news bulletin. It was therefore held that Defendant would be at liberty to carry advertisements on tickers even when footage, fresh or archival, is shown during regular news bulletins provided such advertisements have not been booked to be shown exclusively during the reporting of ICC Twenty 20 World Sri Lanka 2012. The Ld. Judge has additionally held that the advertisements/logos of the sponsors of the news bulletin in which Plaintiffs’ footage is shown can be carried by Defendant on tickers at the time of reporting of the event, only if the sponsorship is of the news bulletin and the logo/advertisement of the sponsor appears on the ticker throughout the news.

20.             On the issue of acknowledging Plaintiffs’ rights, the Ld. Judge was in agreement with the stipulations in Plaintiffs’ guidelines and has passed the following directions:

a)   A courtesy bug acknowledging Plaintiffs rights must be pasted prominently by Defendant through out the broadcast of the footage;

b)  Correct name viz. ‘ICC World Twenty-Twenty Sri Lanka, 2012’ or ‘ICC World Twenty-Twenty’ and the event logo should be prominently used;

c)   In the event that the official or Plaintiffs’ logos are covered by Defendant’s logo, a courtesy line should be included.

21.           The Ld. Judge did not find any merit in Defendant’s contention that Plaintiffs cannot seek an injunction on the basis of an anticipated act since in view of Defendant’s past conduct there was an imminent threat of Plaintiffs’ rights being infringed.

22.           The Ld. Judge dismissed Plaintiffs’ contention re the use of score cube by Defendant since it does not involve use of Plaintiffs’ work and the score was in public domain.

23.           Defendant’s contention re delay was not entertained by the Ld. Judge in as much as Defendant failed to show that it was prejudiced due to Plaintiff’s delayed action.

24.          In view of the aforementioned directions the Ld. Judge disposed of the interim application. An appeal (FAO (OS) No. 460/2012) has been preferred by Defendant impugning the said order.