Review: ‘Continued Economic Benefit To The Author: Royalties In The Indian Film Industry – Historical Development, Current Status, And Practical Application’ By Renuka Medury.

Citation: Medury R. (2019) Continued Economic Benefit to the Author: Royalties in the Indian Film Industry – Historical Development, Current Status, and Practical Application. In: Liu KC., Racherla U. (eds) Innovation, Economic Development, and Intellectual Property in India and China. ARCIALA Series on Intellectual Assets and Law in Asia. Springer, Singapore. https://doi.org/10.1007/978-981-13-8102-7_9

Introduction

The aforementioned article analyses the copyright law governing the royalty payment to authors of literary and musical works in India. The issue of royalty payment has had a contentious journey in India. This article details how the music production deals exist in India and deals with the relevant statutory provision and judicial precedents which have decided the course of royalty payment. It also delves into the problems posed by the copyright societies in India and analyses the Copyright (Amendment) Act, 2012. After tracing various relevant judicial precedents and statutory developments, the article asserts the importance of ethical copyright societies in shaping the royalty regime in India.

Historical backdrop

The article highlights the different stakeholders involved in music deals, ranging from music composers, lyricists to producers. It states that various stakeholders are involved through individual contracts, all of which results in the composition of the music being commissioned to the producer of the film who might further assign it to a music label. The article elucidates that by virtue of Section 17 of the Copyright Act, in case a literary or musical work is commissioned, the copyright in the entire film, including the literary and musical work therein, vests with the producer. This ultimately leads to exploitation of musical works by film producers and label without any appropriate royalty payment to the music composers and lyricists.

Copyright Societies

The article enumerates the prominent copyright societies in India, namely IPRS, i.e. the Indian Performing Right Society and PPL i.e. the Phonographic Performance Limited. It highlights the substantial changes which took place in the composition of the governing body of IPRS, which effectively forced out independent control of both the societies and established monopoly of sorts. The article also elucidates upon the aftermath of such change, which ultimately led to the emergence of new modes of exploitation of authors. The article picks out the few changes brought about due to the composition of governing bodies but has a peripheral outlook towards it. The article further does not delve into the actual benefit that accrues due to such copyright societies and their importance as well. 

Amendment and Its Impact

The article states that the exploitation of different stakeholders in the music deals led to the introduction of the amendments to the Copyright Act in 2012, which were brought to enforce a new regime of royalty collection and distribution in India. The article highlights that the amendments were modelled on the authors’ remuneration provision contained in the EC Rental Rights Directive, heralding equitable remuneration, unwaivable royalty rights and entrustment to a collecting society. The article goes on to elucidate upon the different changes introduced by the amendment and provides a look into the aftermath of the same. It highlights the tussle which ensued after the enforcement of the requirement of registration of pre-existing copyright societies with the central government within a period of one year. The refusal of pre-existing copyright societies to comply with the amendments and the cunning utilization of the denial of re-registration of these societies has been intricately explained. 

The article further highlights interesting lacunas in the language of the amendments that have been exploited contractually by various parties. The article correctly identifies that though the intention was bona fide, instead of aiding the different stakeholders, the ambiguous language has led to different ways of exploitation. The article highlights that the interpretation of “equal share” of royalties as mandated by the amendments stands to be unclear since the way of appropriate delineation of such royalties when different scenarios come into play has not been explained.

Way Forward

The article after analysing different statutory and judicial changes through the years, and the problems posed thereafter, heralds the role of copyright societies in determining the future of the royalty regime in India. It states that to achieve the same it is essential that the working of copyright societies becomes more transparent. It further emphasises that the interpretation of the several provisions introduced by the amendments need to be unambiguous so as to lead to effective implementation of the same.

Conclusion

The article provides an in-depth analysis of the law governing royalty payments to authors of literary and musical works in India. It extensively elucidates upon the judicial precedents and the statutory developments in relation to royalty payments. Furthermore, the article very befittingly identifies the problems that have ensued due to the amendments brought about in the copyright regime. The article conclusively states that copyright societies are instrumental in changing the royalty payment regime, however, fails to highlight how that would be achieved and how they would aid in making the current copyright regime less exploitative.   

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Article: Can Ephemeral Artistic Works Be Considered To Be Permanently Fixed In A Tangible Medium For Grant Of Copyright Protection?

Introduction

Section 2 of the Practice and Procedure Manual on Artistic Works, 2018 , (“Copyright Manual”) issued by the Copyright Office states that, “Any work which is an original creation of an author or an owner fixed in a tangible form, is capable of being entered into the Register of Copyrights, irrespective of the fact that whether such work possess any artistic quality or not.” It relates to Section 2(c) of the Copyrights Act, 1957 (“Copyright Act”) which defines ‘artistic work’ as, “(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; (ii) a work of architecture; and (iii) any other work of artistic craftsmanship;” Whether to be ‘fixed in a tangible form’ requires permanent fixation thereby inherently excluding ephemeral works or whether fixation can be tangle even when ephemeral? Does ‘fixed in a tangible form’ require physical permanence of the creation itself or is it enough if the fixation is in a tangible medium? If an element of permanence is required, what kind of fixation can be considered as permanent if the temporal duration of the subsistence of the art-work is itself temporary? This article aims to explore this statutory interpretational issue in respect of ephemeral artistic works.

Form vs. Medium vs. Manner vs. Method 

The Article 2, sub clause 2 of the Berne Convention for the Protection of Literary and Artistic Works, 1979 (“Berne Convention”), grants the government of each member Union to determine whether the ‘fixation in a material form’ is a requirement to grant copyright protection or not. The Copyright Act does not contain any mandatory provision of ‘fixation in a tangible form’, but the requirement of material form is still recognized for copyright protection. Section 14(c) of the Copyright Act states that meaning of copyright is to have an ‘exclusive right’ to reproduce the artistic work in any ‘material form’.

Ephemeral artwork may consist of short term art-installations in galleries/public places; use of naturally transient material like leaves, ice, sand etc,; landscape/integrated architectural works; wall murals/graffiti. Keeping in mind Section 14(c), all the listed artwork fulfils the requirement of ‘material form’ within the Copyrights Act and ‘tangibility’ within the Copyright Manual. However, there is a lacunae in the statute regarding the ‘temporary nature’ of any artwork.

The courts are yet to doctrinally solidify the legislative stance as to what qualifies as ‘fixed in a material form’ in respect of any artistic works, llet alone contemporary ephemeral works. The courts have on occasion delved into what constitutes ‘fixation’ in sound recordings and cinematographic works. In the case of Indian Performing Right Society Ltd. and Ors. Vs. Aditya Pandey and Ors. [CS(OS) No.1185/2006 & IA No.11203/2016] [1], the Delhi High Court stated that the sound recording is only the manner of fixation and does not extinguish separate individual rights. Notably, it is the manner of fixation, not just fixation itself nor even its medium or form, that is highlighted here as a relevant factor. 

In the case of films, although the statute does not explicitly provide for fixation, the Berne Convention states that a cinematographic work is a method of ‘fixation’ along with an original work. This was reiterated in the MRF Limited Vs. Metro Tyres Limited, [CS (COMM) 753/2017] [2] where the single judge bench of the Delhi High Court stated that the Indian Copyright Act is required to be interpreted in consonance with the Berne Convention. This brings in the method of fixation into the jurisprudential matrix of the statutory interpretational issue at hand. 

Together, these judgements show that the courts do recognize the requirement of ‘fixation in a tangible form’ under the Copyrights Act but do not do so rigidly or de hors theoretical considerations. Instead, they follow through with importing the jurisprudence regarding the Berne Convention. Still, they do not provide an entirely consistent or adequate explanation of what constitutes permanence in the nature of fixation of a copyrightable work.

Permanence in Ephemeral Artwork

The Copyrights Act denies copyright infringement if the artwork is ‘permanently situated’ in a ‘public place’ under Section 52(t) of the Copyright Act. As temporary artwork has not been categorized anywhere, it could be assumed that Section 52(t) would also allow inclusion of ‘work of architecture’ stated in Section 2(c) of the Copyright Act as well. Any temporary art installations would also have the similar traits as that of a work of architecture like ‘structure’ having an ‘artistic character’. 

Temporary art-work due its obvious nature of being ephemeral, cannot be said to be ‘permanently situated’. The only protection that can be granted to such artisans is to expand/clarify the scope of ‘permanence’. It is still unclear due to a dearth in the statutory provision as to what ‘degree of permanence’ is required under ‘fixation in a tangible form’. There is a need for further clarity as to what could be the prescribed time period under fixation of any artwork to be considered as sufficiently permanent. This definition would be applicable to furthermore ambiguous copyrightable artistic work like sand-art, tattoo art, face/body makeup, food plating etc. 

Conclusion

Although the requirement of ‘fixation in a tangible medium’ is recognized, I would venture to say that the courts have largely focused on the latter part of ‘tangibility’ and somewhat disregarded the equally germane demand of ‘fixation’. Conservative interpretation of the requirement, for which there is enough precedent and warrant, means many new-media artists will lose out. Jurisprudentially though in my opinion, it is possible for a court to proceed on a more expansive interpretation. 

End Notes:

[1] Indian Performing Right Society Ltd. and Ors. Vs. Aditya Pandey and Ors. [CS(OS) No.1185/2006 & IA No.11203/2016]

[2] MRF Limited Vs. Metro Tyres Limited, [CS (COMM) 753/2017] 

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Article: Can A Trademark Can Be Assigned Retroactively?

Introduction

Section 38 of the Trade Marks Act, 1999, starting with a non-obstante clause, states that “…a registered trademark shall, subject to the provisions of this Chapter, be assignable and transmissible, whether with or without the goodwill of the business concerned…” Section 2(c) states that assignment” means an assignment in writing by act of the parties concerned.” Does ‘assignment’ subsume an assignment with retroactive effect?  Can a registered trademark be assigned with retroactive effect? Does the ‘assignment’ have to be only prospective? This is the statutory interpretational issue explored in this article. 

Retroactivity versus Recordation of Retrospectivity

Assignment of trademarks is a mechanism whereby the owner of a trademark transfers his ownership to another person or entity, either with or without the associated goodwill. When such an assignment becomes operative at a date earlier than the date of entering into the assignment agreement, it is called a retroactive assignment of trademark. It creates a new assignment effective from a past date. It should not be confused with merely recording the retrospective effect of a previous oral agreement for trademark assignment, called a nunc pro tunc (Latin) assignment.

While the Act makes provisions for the assignment of trademarks, it is silent on the legality of retroactive assignments. Judicial precedents in this regard are also limited, and lack unambiguity. This article examines the scheme and framework of the Act as elucidated by the few relevant judicial pronouncements, to determine if retroactive assignment of trademarks is permissible. Does the Act countenance retroactive trademark assignment? Are they legal or void and non-est?

Validity of Trademark Assignment

Providing for assignment and transmission of trademarks, the Act under Section 37 gives the registered proprietor of a trademark the “…power to assign the trade mark, and to give effectual receipts for any consideration for such assignment”. This right is only “…subject to the provisions of this Act and to any rights appearing from the register to be vested in any other person…”. Section 45(1) of the Act states that “Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application, register him as the proprietor of the trademark…”. As per Section 45(3), “Where the validity of an assignment or transmission is in dispute between the parties…” the Registrar has been given the discretion to refuse registration of the assignment “…until the rights of the parties have been determined by a competent court…”. Assignment, thus, must not only be in writing, it must also be registered.

Prejudice Against Anti-Dating 

Clearly, there is no statutory bar upon retroactive assignment of trademarks. The Act explicitly neither recognises nor bars retroactive assignments. The intention of the legislature, too, is not discernible from any other provision of the Act.

Keeping in mind the statutory requirement of assignment agreement being written, what about a written agreement recording a prior oral prospective trademark assignment? The IPAB, in the case of Ramesh L. Vadodaria vs Assistant Registrar of Trade Marks [2005 (30) PTC 297 IPAB], observed that “…there cannot be any assignment with retrospective effect unless there is some oral agreement between the parties earlier in point of time and under written agreement, the parties had confirmed such terms of oral agreement were acted upon. The later written document is only to confirm the rights of the parties arising and accrued in accordance with the earlier oral agreement.” Thus, no scope is left for anything other than a nunc pro tunc assignment.

Anteriorization of the effective date of a trademark assignment through a subsequent written agreement has, however, also been ruled out in the case ofM/s. Eveready Industries India Limited vs Mrs. Kamlesh Chadha [ORA/97/2009/TM/DEL, ORA/98/2009/TM/DEL], wherein the impugned agreement was held defective and contrary to law, as “There is no procedure in the Act to anti-date the document”. This blanket observation, going beyond the facts of the case, seemingly bar both retroactive and nunc pro tunc assignments.

The aforementioned observation made by the IPAB leads to confusion as it does not specify whether only the retroactive trademark assignment agreements which themselves assign the trademark are invalid, or even nunc pro tunc assignments are impermissible under the Act. Whereas allowing the former under the Act inherently poses various legal issues, disallowing the latter threatens to reverse precedents to the contrary. Given inherent evidentiary challenges in proving genuine nunc pro tunc assignments on strength of subsequent written agreements and distinguishing them from sham agreements, making the latter permissible would raise its own different set of legal issues. 

Conclusion

With regards to the validity of nunc pro tunc trademark assignments, the position is now doubtful. Until the question is answered by the courts in a more definitive judgment, or a legislative amendment is brought in this regard, high evidentiary standards are expected for proving nunc pro tunc assignments. Regarding the validity of true retrospective assignment of trademarks, neither the statute nor the judgements consider it permissible and legal.

Endnotes

1.      Ramesh L. Vadodaria vs Assistant Registrar of Trade Marks [2005 (30) PTC 297 IPAB]. https://indiankanoon.org/doc/1481762/

2.      M/s. Eveready Industries India Limited vs Mrs. Kamlesh Chadha [ORA/97/2009/TM/DEL ORA/98/2009/TM/DEL]. https://www.ipab.gov.in/ipab_orders/delhi/ORA-97-&-98-2009-TM-DEL.pdf

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Review: ‘Cinematograph (Amendment) Bill 2021’ (Ministry Of Information And Broadcasting).

Introduction

The Ministry of Information and Broadcasting has proposed amendments to the Cinematograph Act, 1952 (“the Act”) through the Cinematograph (Amendment) Bill 2021 (“the Bill”), published on June 18, 2021.    

The Bill proposes to inter alia bestow revisional powers with the Central Government by empowering it to order re-examination of a film already certified for public exhibition on account of violation of Section 5B(1) of the Act and penalise film piracy.

Some of the changes as proposed are seen by this reviewer as being in dissonance with other existing rights and statutes. This review seeks to examine the possible implications and grey areas of the proposed changes.

Revisional Powers of Central Government

The Bill proposes to grant power to the Central Government to send back a film already certified for public exhibition for re-examination which power goes against an earlier ruling of the Supreme Court rightly striking down revisional powers of the Central Government in respect of certified films.

The revisional power is unnecessary as the scope for which such power may be exercised is already sufficiently covered by existing provisions guiding film certification in the Act, guidelines issued by the Central Government for film certification and the Constitution.

The Bill as it stands does not impose any limitation on the number of times a film may be sent back for re-examination. It also not only leaves scope for ordering re-examination of a film that is already being exhibited, but does not provide for procedure to be followed by exhibitors in such a situation. 

From the perspective of business owners, not only does this risk misuse of the power by way of curbing creative freedom but this step will likely lead to additional costs given that once a film has been certified, the film is heavily promoted and marketed. Additionally, recourse will only lie with the High Court given the abolishment of the appellate tribunal and thus adding to further costs and delays.

The uncertainties that are brought about amidst the change as proposed, will resultantly discourage content creation given the fear that a film may never see the light of day and also lead to reduction in investment in this sector. Such films becoming controversial in nature possibly will not be picked up by other platforms so as to avoid conflict and scrutiny.

Inclusion of Piracy

The Bill only encompasses piracy by way of an audio-visual recording device and has failed to address other modes of piracy, primarily copying of data from original storage media and distribution.

The inclusion of the offence of piracy in the Bill resultantly seems to give an aggrieved person remedy under two legislations. There exist differences in the Bill and the Copyright Act, 1957 including unequal penalty for what appears to be the same offence. The Bill is also short of other important provisions relevant for piracy such as those included in Sections 64 (power of police to seize infringing copies) of the Copyright Act, 1957. From the Bill it appears that recording for purposes as set out under Section 52 of the Copyright Act, 1957 (acts not amounting to infringement of copyright) may still be permitted.

Further, the term ‘author’ as used in this section is insufficient to deal with situations where any copyrighted work is assigned from the author to another, making the latter the owner of the copyright i.e. entitled to exercise rights over the work to the exclusion of authors.

Other Changes

The introduction of a further subdivision on the basis of age of the category U/A for film certification is a positive development that will help widen the permissible viewer base of films otherwise simply certified as U/A by breaking up this category into smaller fragments on the basis of maturity.  The Bill also formally proposes to provide certification to films in perpetuity as opposed to the 10 year currently identified.

While the Bill has identified categories of certification for ‘unrestricted public exhibition’, the ambit of “public exhibition”  has not been defined leaving the term as ambiguous and open to varied interpretations.

Conclusion

The overarching power given to the Central Government is unnecessary and may be seen as a threat to the constitutionally guaranteed freedom of speech and expression. Not only does it leave scope for manipulation or stifling of free speech by the Government but would also lead to undue delay in the certification process.

It may well be better to establish an independent film council like the erstwhile Film Certificate Appellate Tribunal to deal with grievances relating to film certification.

The issue of piracy being unequally dealt with by the Bill as compared to the Copyright Act, 1957 and impact of the existence of remedy under two laws also needs to be more fully addressed.

Admittedly, while there is need to update the Act particularly in terms of recourse in respect of film certification, the Bill as it stands features loopholes and grey areas that need to be addressed so as to remove ambiguity and increase effectiveness to the advantage of all.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Review: ‘How effective Are India’s Model Guidelines On Implementation Of IPR Policy For Academic Institutions? Seeking The Answer From The US And The UK Experience’ (2021) By Saha, P.K. & Kaushik, S.

Citation: Saha PK, Kaushik S. How effective are India’s model guidelines on implementation of IPR policy for academic institutions? Seeking the answer from the US and the UK experience. J World Intellect Prop. 2021;24:100–121. <https://doi.org/10.1111/jwip.12181 >

Introduction

The above captioned article presents a detailed analysis of the Draft Model Guidelines on Implementation of IPR Policy for Academic Institutions[1] notified by the Department for the Promotion of Industry and Internal Trade, Government of India, in September 2019.

The article looks at the existing legal framework on IP generated by academic institutions and public-funded research in India, the US and the UK to provide context for the arguments presented in the text. It delves into the nature of the Guidelines, discusses its drawbacks, and comparatively analyses the Guidelines with the framework in the US and the UK, in an attempt to anticipate the consequences of enforcing the Guidelines in India. Based on the various arguments set out in it, the article concludes that although the Guidelines were brought with pious intentions, yet they are “misplaced, inapt and ill-judged”.

Scrutiny

The article points out that hitherto, academic institutions had the complete discretion to protect and commercialise IP created through public funds, leading to inconsistent institutional policies. Hence, the Guidelines are introduced as a way to bring congruence, as well as to overhaul the relationship between academic institutions and industry, so as to facilitate commercialisation of IP and provide higher incentives to researchers.

Talking about the non-binding nature of the Guidelines, the article notes that the Government seems to have taken cue from its experience with the Protection and Utilization of Public Funded Intellectual Property Bill, 2008, [2] which was criticised for being unnecessarily restrictive and punitive in nature. However, despite the Guidelines not having the force of law, it is argued that their importance would not be undermined as they might bring about behavioural changes. The article cites examples wherein societal attitude has undergone a positive change owing to non-binding regulations, and it is presumed that the Guidelines would have the same effect. But the article fails to consider the relative unawareness of the Indian population about IP and its importance. IP, as a field of law, has only started to gain its grip in India even amongst the legal fraternity, and betting on behavioural changes in such a scenario seems utopian. Further, the studies relied on in the article are from the domain of rape laws and anti-discrimination law, and no evidence is presented to suggest that the same effect could take place in the realm of IP laws as well, especially considering its commercial aspect.

Deficiencies

The article discusses various drawbacks of the Guidelines. Firstly, concern is expressed over the omission of defining the term “academic institution” for the purposes of the Guidelines. It is argued that lack of the said definition creates ambiguity regarding applicability of the Guidelines to research institutions and laboratories. Secondly, the Guidelines do not differentiate between “innovation” and “invention”, which are inherently different concepts. The article also points towards disregard of Section 47(3) of the Patent Act, 1970, as the Guidelines allow for an agreement to be made between the researcher and the academic institution whereby the institution may agree to not retain the license to use the IP for research and educational purposes. It is correctly noted that the Guidelines cannot override the provisions of the Patent Act, 1970, but this error shows inattention on the part of the drafters. Thirdly, it is argued that the Guidelines are also incompatible with the National Innovation and Startup Policy, 2019 [3], (NISP) as there appears to be a contradiction between their patent ownership schemes. While the NISP provides for joint ownership of IP by the inventor and the institute, the Guidelines vest ownership with the institution. Fourthly, the Guidelines do not give any freedom to the IP creator to decide whether to seek IP protection or not. The decision is made by the academic institution. The article rightly contends that this might stifle open access to research.

Comparisons

The article mentions the rationale behind choosing the US and the UK for comparative analysis is that India’s academic IP policy is moving from a UK-style framework to a US-style framework. The UK-approach gives each academic institution freedom to come up with its own IP policies, while the US-approach establishes a statutory mandate to be followed. Hence, the experiences of these countries, it is assumed, provide a valuable insight into the consequences of enforcing the Guidelines. However, this assumption is unfair because, despite the legislative framework being similar, India vastly differs from the UK and the US in terms of industrial structure and quality and quantity of research done in academic institutions.

Conclusion

The article analyses various aspects of the Guidelines quite thoroughly, and relies on credible studies and data for each of its arguments. However, it does not consider the socio-economic realities of India at certain places, weakening the basis of a few assumptions. Having said that, issues in the Guidelines highlighted by this article make the Guidelines seem like a rushed effort to emulate the US-framework, without keeping in mind India’s current legal framework.

Endnotes

[1] Model Guidelines on Implementation of IPR Policy for Academic Institutions, 2019, Cell for IPR Promotion & Management- Department for the Promotion of Industry and Internal Trade (CIPAM-DPIIT), Government of India. https://dipp.gov.in/sites/default/files/Draft_Model_Guidelines_on_Implementation_of_IPR_Policy_for_Academic_Institutions_09092019.pdf 

[2] The Protection And Utilisation Of Public Funded Intellectual Property Bill, 2008. https://prsindia.org/files/bills_acts/bills_parliament/1229425658_The_Protection_and_Utilisation_of_Public_Funded_Intellectual_Property_Bill__2008.pdf 

[3] National Innovation and Startup Policy 2019 for Students and Faculty, 2019, Ministry of Human Resource Development, Government of India. https://mic.gov.in/assets/doc/startup_policy_2019.pdf 

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

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