Mock Case (Copyright Law): Bright Walker Productions Pvt. Ltd. v Mr. Samuel Jackson

Bright Walker Productions Pvt. Ltd. v. Mr. Samuel Jackson

(This imaginary problem was drafted for the ILS Intra College Novice Moot Court Competition 2015 by Ritvik M. Kulkarni and Yojit Pareek, students of the ILS Law College, Pune, India. This problem may be reproduced by any person for educational and other non-commercial purposes, provided the authors are duly accredited as authors)

Bright Walker Productions Pvt. Ltd (the Company) is a production house with its registered office in Mumbai. The Company created, produced and marketed a television series named Dorne to Dusk with Marshall Mathers (DDMM) (the Show) which first aired on 09^th February 2014.

This Just In: You Can Now Thank Rupa Marya for your Truly Happy Birthday! But a Question Still Remains.

R. M. Kulkarni

While intellectual property rights have been created to foster creativity by protecting its creators, some entertainment conglomerates strive to maintain clichéd exceptions. This time around, it’s brought to you by our beloved[1] Warner Brothers.

Case Note: You Should Make Your Own TV Series, You Zee?

Aishwarya V. Bedekar, IV BSL LLB, ILS Law College, Pune

Ever wondered why the telecast of a the TV Series named “Badi Devrani” was stopped abruptly? Maybe that is because the Bombay High Court has recently granted an ad interim injunction against Zee Telefilms to stop its telecast.

ILS IPR Cell: Session on Basic Principles of Intellectual Property and Copyright Law

Back to Basics!

The first session on basics of IP Law was conducted by Ms. Aishwarya Bedekar and Ritvik M. Kulkarni.

Here, the Cell has briefly discussed the idea that is Intellectual Property, and the justification, requirement and modes of its protection. Similarly the Presenters also exhaustively discussed about the roots, emergence, and evolution of Copyright Law throughout the world. You will find charts and other visual aids in support of the discussions conducted given. Students of ILS Law College (and others as well) may submit their feedback and opinions on the presentation to Mr. Ritvik M. Kulkarni @ rmkulkarni.ils@gmail.com OR drop a comment right here!

Click here for the PPT file–> Presentation on Basic Principles of Intellectual Property and Copyright Law

Olympus Has Risen: Adv. Anushree Rauta on IP and Celebrity Rights Management

Ritvik M. Kulkarni

On the 2^nd day of the ILS IP Week, Advocate Ms. Anushree Rauta made a presentation on the Celebrity Rights in India. A former student of ILS Pune, Ms. Rauta is currently working as a Senior Associate with Naik, Naik and Co. The presentation mainly dealt with rights of celebrities as performers under copyright law and their contracts of service with producers and brand owners.

Software Licensing Audits: Autodesk Secures Right to Conduct Software Audit on Licensee

Ritvik M. Kulkarni, III BSL LLB, ILS Law College, Pune
rmkulkarni.ils@gmail.com  

Often we, as individual users, believe that using pirated software (solely for private non-profit usage of course) is not going to cause any financial or other harm to huge corporation like Microsoft. To a certain extent that may be true because for one, the cost involved in the litigation (even more in arbitration) against such an average “middle-class” infringer is going to be far more than the maximum damages that the software owner can possibly cull out from the same person.

However, when huge corporations need software to satisfy the appetite of their large number of computer systems; they have to enter into a Software Licensing Agreement with the Developer Company (or the Company which owns the software) in order to procure such software. In most cases, the SLA will carry a few restrictive clauses which perform the function of risk minimization for the developer company.

A simple example can be that of an agreement between a law firm and Manupatra for installing and getting online access to the latter’s software database. If the said law firm opts for a single-user license, the database can be accessed by the firm personnel only from one computer at any given point of time. On the other hand if the firm opts for IP access, a much larger number of personnel will get access simultaneously.

Similarly, certain developer companies, such as Autodesk, contractually require their licensee to allow the former to conduct periodic software audits on the latter. This is so required in order to ensure compliance with all restrictive clauses and other terms of use and to check the validity (and existence) of the software being used by the licensee company. In a recent case, Bangalore based BMM Ispat Ltd. filed a suit against Autodesk for intruding in the business matters of the former company under the pretext of exercising its contractual right to conduct a software audit of their SLA.

The SLA for Autodesk’s AutoCAD software provided that Autodesk reserved the right to conduct an independent software audit at a given time. Subsequently, when Ernst and Young was hired by the licensor to conduct the said audit in October 2014; it found that there were almost 50 instances of unauthorized use of the licensor’s AutoCAD software. When Autodesk confronted BMM about these findings and asked it to purchase the required 50 licenses, the latter rubbished these claims and instead filed a claim before the Additional City Civil Judge. The Learned Judge did not grant an interim – injunctions against the said audit vide an order dated 17^th January 2015. After BMM filed a writ petition (WP No.3221/2015) against that order before the Karnataka High Court on 26^th February 2015, the said Court directed the Learned Judge to dispose of the injunction application within 15 days.

The Learned Judge stated that Autodesk had every right to ensure compliance with the terms of the SLA as they have been so incorporated to protect Autodesk from infringement. To that extent such act cannot constitute interference with BMM’s business activities. Furthermore, the balance of convenience in the said case lied with Autodesk, and not with BMM. Consequently the Learned Judge held that while Autodesk (through its officers) was entitled to conduct the software audits, BMM was not entitled to injunctive relief.

Copyright vs. Design: Where Does One End and The Other Begin?

Ritvik M. Kulkarni, III BSL LL, Law College, Pune

A few days ago, I came across a beautifully written article in Loksatta Newspaper titled “Kaleysaathi ki Vyaparasaathi?” (translated: For Artistic Pleasure or For Business Exploitation?), written by Professor Dr. Mrudula Bele. Dr. Bele is an Assistant Professor at the NDMVPS’s College of Pharmacy in Nasik at Maharashtra. She is also a pharmaceutical development scientist and patent consultant

 In her article dated 21^st May 2015, Dr. Bele has discussed inter alia the difference between the nature of copyright protection and design protection. She has very succinctly explained the theory behind affording protection on varied terms depending upon the nature of intellectual property. She has stated that while copyrightable works are created from an artistic intent, other industrial works are created with a view to exploit them and gain profit. Furthermore, copyrighted works in any case are commercially much weaker than its industrial counterparts. For this reason, copyrightable works are afforded stronger protection in terms of the period of protection.  

On this note I have taken the opportunity to discuss a few points in relation to the landmark case of Microfibres v. Giridhar and Co.[1] (“Microfibres”) cited and discussed by Dr. Bele in her article.

A design right can be best described as an amalgamation of trademark, patent and copyright. This is because the function of a design is to appeal to the eye of the onlooker; thereby allowing the product (carrying the design) to assume a distinctive feature. Such distinctiveness is most likely to be achieved for a design as it is mandatorily required to be a new design. However, Indian design law does not protect a design if it is functional or it has utilitarian features; it aims to protect only the ornamental properties therein. And unlike copyright, a design must be compulsorily registered to be protected under the Designs Act, 2000; there is no common law remedy of passing off to protect against design piracy.

This Just In: Bombay High Court Restrains YouTube from Broadcasting IIFW “MasterClass” Episodes

By Harish S. Adwant, III BSL LLB, ILS Law College, Pune

The Bombay High Court granted an ad-interim ex-parte injunction to the Indian Independent Filmmakers Worldwide Association (IIFWA) (“Plaintiff”) against YouTube LLC and Google Inc. (“Defendants”) The Court said that the Plaintiff has made out a prima facie case of copyright infringement against the Defendants.

The Plaintiff is a body of independent film-makers which aimed to “promote, support and nurture independent cinema by film-makers of Indian origin anywhere in the world.” In light of this objective, IIFWA conceptualized a non-profit project named “IIFW Masterclass”, a series of video recordings, which featured celebrated film-makers, who would share their knowledge and experiences of filmmaking with budding filmmakers, critics and movie enthusiasts. The first season of IIFW Masterclass kicked off in 2010, which was recorded in the form of a cinematographic film and televised on National Geographic Channel.

Wide acclamation of the first season led the Plaintiff to record the second season of the programme.  Subsequently the second season was recorded in 2015. An agreement granted exclusive broadcasting rights to several advertisers, directors, producers and TV channels and prohibited filming/broadcasting by any other person/entity. Within a week, the Plaintiff discovered that ‘infringing recordings’ of the first interview of the second season (which was launched at “FICCI FRAMES” 2015) were uploaded and broadcasted all over YouTube titled “Sudhir Mishra & Rajkumar Hirani | Curtain Raiser of FICCI Frame 2015”. Owing to this, IIFWA filed a suit against Youtube LLC and its owner, Google Inc. as the Defendants.

On 21^st April, Justice S.C. Gupte restrained YouTube from “exhibiting, communicating, distributing, storing, caching, transmitting in any manner” the infringing cinematographic film of second season of “IIFW Masterclass” till further orders. Moreover, it also directed YouTube to “expeditiously remove and/or block any and all references to materials and content which fall within the Plaintiff’s (IIFWA) copyrights, and any stored, cached or embedded copies of links which will enable copyright infringement of the plaintiffs content.” The ad-interim injunction order can be accessed here.

The matter is to be heard on 10th June, 2015. Jurisperitus Mumbai represented the plaintiff in the instant case whereas the Defendants remained absent.

Using Unlicensed Software at your Company? Be Ready for Surprise Raids on your Premises under Anton Pillar Orders!

Ritvik M. Kulkarni, III BSL LLB, ILS Law College, Pune

Under the Copyright Act, 1957 a copyright holder (the Plaintiff) gets a special civil remedy in cases infringement. The Plaintiff can ask the Court to grant an Anton Pillar order to appoint Local Commissioners to inspect the locations and establishments of the infringer (the Defendant) and seize the infringing works. The Plaintiff can avail of this remedy under Order 26 Rule 9 of the CPC, which provides as under:

Order XXVI Rule 9. Commissions to make local investigations- In any suit in which the court deems a local investigation to be requisite or proper for the purpose of elucidating any matter in dispute, or of ascertaining the market value of any property, or the amount of any mesne profits or damages or annual net profits, the court may issue a commission to such person as it thinks fit directing him to make such investigation and to report thereon to the court:

Provided that, where the State Government has made rules as to the persons to whom such commission shall be issued, the court shall be bound by such rules.

The object of the commission under this rule is not to collect evidence which could be taken to court but to obtain evidence which for elucidating matters which are local in character, and it is in the discretion of the court whether to issue it or not[1]. Often in cases of software copyright infringement, the Plaintiff argues that unless the Court grants an ex-parte order, the defendant will get a chance to destroy evidence as it is fairly simple to delete infringing software. Therefore in such cases, a notice to the Defendant is only necessary when the commissioner begins his investigation[2].

In the landmark case of Autodesk Inc. and Anr. v. A.V.T. Shankardass and Anr[3], the Delhi High Court has laid down a few guidelines to abide by, keeping in mind the threat to the Defendant’s privacy:

“(i) The pirated software or incriminating evidence can only be obtained from the premises of the opposite party alone and in the absence of an ex-parte appointment of a Local Commissioner there is likelihood that such evidence may be lost, removed or destroyed;

(ii) Request for ex-parte appointment of a Local Commissioner in such matters is usual and in fact is intended to sub serve the ends of justice as it is imperative to have an element of surprise so that the actual position is not altered; 

(iii) The test of reasonable and credible information regarding the existence of pirated software or incriminating evidence should not be subjected to strict proof or the requirement to demonstrate or produce part of the pirated software/incriminating evidence at the initial stage itself. It has to be tested on the touchstone of pragmatism and the natural and normal course of conduct and practice in trade.

 

(iv) It may not always be possible for a plaintiff to obtain any admission by employing decoy customers and gaining access to the Defendant’s premises. Any such attempt also inheres in it the possibility of disappearance of the pirated software/incriminating evidence in case the decoy customers is exposed. Accordingly, visit by decoy customer or investigator is not to be insisted upon as precondition. A report of private Investigator need not be dis-regarded or rejected simply because of his engagement by the plaintiff. The information provided by the private Investigator should receive objective evaluation.

(v) In cases where certain and definite information with regard to the existence of pirated software or incriminating evidence is not available or where the Court may nurture some element of doubt, it may consider asking the plaintiff to deposit cost in Court so that in case pirated software or incriminating evidence is not found then the defendant can be suitably compensated for the obtrusion in his work or privacy.”

Since this order, there have been numerous cases where such an ex-parte Anton Pillar order has been granted to the Plaintiff. To take an example, Microsoft has been one of the most proactive companies to make a perusal of the above provisions. It has brought infringement proceedings against several companies for allegedly using unlicensed software on their computers.

Remember, copyright in software does not work like it does for other literary works; software copyrights are only licensed to the user and never completely alienated or sold. The main reason for affording this special status to computer programs is based on the fact that there is considerable amount of research done and expenditure made on developing these programs.

Now let’s take a look at how exactly they come across these alleged infringements in the first place.

Huge software companies like Microsoft form a database of their sales; from which they can figure out the computers, and their owners thereof, which are using their software. Next, they cross check their database for the licenses held by (and / or in the name of) these persons / companies. If it turns out that the number of computers carrying the software users is disproportionate to the number of licenses held by the owner(s), they suspect that there is room for infringement on part of the users.

Then in order to get concrete evidence, they hire private investigators to strengthen their claim. These private investigators are required to establish two things: (i) the number of computers or laptops or other related tech installed at the premises and (ii) that these computers carry copyrighted software. The investigators can find out about both these things by simply calling up the concerned officer(s) of the company under the garb of legitimately acquiring other related information. Often, the investigators may even visit the premises of the owner to conduct an inspection. Then on the basis of the preliminary search on the database and the investigations conducted, the software companies immediately apply to the court for an Anton Pillar.

Once the Local Commissioner(s) (“LC”) is appointed, he is required to personally visit the premises of the alleged infringer to inspect the premises for computers carrying the unlicensed software. For the purpose of this visit, the LC may be accompanied by the Plaintiff’s advocate and technical experts (often employed by the Plaintiff). There is a controversy regarding the legality of an arrangement where the Plaintiff’s employees are a part of the commission; since this might prejudice the credibility of the LC’s report.

Read more about this here. (“Can civil courts appoint technical experts in software piracy suits? By Advocate Arun C. Mohan, Madras High Court. Posted on and by SpicyIP.com)

After the inspection is done; all machines found to be carrying the infringing software are sealed, recorded and released on a superdari basis to the Defendant’s authorised agent. The Defendant’s authorised agent present at the spot is required to give a signed undertaking to the Commissioner that the sealed machines and equipment, in their present condition, will be produced before the Court as and when required. The LC then makes his report and produces to the Court. However, such a report is not conclusive evidence of the Defendant’s guilt; the Defendant’s counsel may rubbish the report during the process of cross-examination.

In many cases, once the Defendant realizes that the Court is bound to hold it liable for infringement; the parties commence negotiations, enter into a consent agreement and settle the matter out of Court.

[1] Re Moosa Kutty, AIR 1953 Madras 717

[2] M. Achutan v Kunhipathumna, AIR 1968 Ker 233

[3] {2008 (37) PTC 581 (Del.)}

This Just In: Makers of Bombay Velvet and Piku Secure Anti-Piracy Orders

By RMK,

In what seems to have become the trend of the Indian film industry, two major film producers have secured John Doe orders (a.k.a Manoj Kumar orders) against several popular ISPs and torrent websites. Previously such orders have been granted to protect the release of films such as Singham and 3. The broadcasters of the FIFA world too had obtained this injunction against more than 400 websites.

In its order dated 14^th May 2015, the Delhi High Court has acknowledged and upheld the Fox Star’s arguments that the absence of such an order is highly likely to cause grave and irreparable financial loss to the producers of Bombay Velvet.

Accordingly the Court ordered that “till next date of hearing defendants, their partners, proprietors, directors, agents and other known and unknown parties, are restrained from hosting, streaming, making available for viewing, downloading, providing access to… or sharing without authorization on their website, in any manner, the film Bombay Velvet…”

In support of their arguments, the Plaintiff’s advocate stated that the leak or “mischief” generally takes place during the process of transporting or distributing the film to the theatres.

Consequently the Court also ordered the Department of Telecommunication (DoT) and the Department of Electronics and Information Technology (DEIT) a notification to ensure compliance from ISPs.

The Delhi High Court had passed a similar order on 1^st May 2015 in favour of Multi Screen Media Pvt. Ltd. (MSM) to protect the release of Piku which was due for release on 8^th May 2015.

The Defendants in this case comprised of torrent websites, ISPs and other unknown parties. Some of them are vimeo.com, thepiratebay.org, torrentz.eu, thiruttuvcd.biz, merotv.net, novamov.com, videotanker.co, cloudy.ec, vidto.me, zuzvideo.com, video.tt, kickasstoreents.com and torrentfunk.com.

Holding that a prima facie case was indeed made out against the Defendants, the Court ordered that:

“Accordingly, till next of hearing the defendants, their partners, proprietors, directors, shareholders, nominees, servants, representatives, …, are restrained from communicating or making available or distributing or duplicating, or displaying, or releasing, or showing, or uploading, or downloading or exhibiting, or playing, and/or defraying the movie “Piku-Motion Se Hi Emotion” in any manner without a proper license from the plaintiff … through different mediums like CD, DVD, Blu-ray, VCD, cable TV, DTH, Internet, MMS, Tapes, Conditional Access System or in any other like manner.

However, the likelihood of this order to actually make an impact on the Defendants or the like still remains unsurprisingly low.