AI Drafter 
TaxTMI 
TaxTMI 
TaxTMI 
2008 (9) TMI 916
X X X X Extracts X X X X
X X X X Extracts X X X X
....med by Prasar Bharti and accordingly requested this court to defer the delivery of this judgment. However, even after giving ample opportunity, the parties have failed to arrive at a settlement for consensus on the question of fair dealing, consequently, we are delivering this judgment as requested by the Counsels on 29th of August 2008 as this judgment would affect several pending cases before the Original side of this Court. 3. The facts of the case briefly stated are as follows: (a) The appellant ESPN Star Sports (hereinafter referred to as the "ESS") has obtained the sole and exclusive rights/license from various sports bodies including Cricket Australia (hereinafter referred to as the "C.A."), to televise in India various sporting events including the India versus Australia test matches, One Day International (ODI) matches and the solitary T20 cricket match to be played in Australia from December 26, 2007 onwards till March 8, 2008 and therefore, no other person, entity and/or Cable Operators could broadcast/telecast in India, the Cricket Matches without a license from the Appellant or its sole and exclusive distributor ESPN Software India Private Ltd. The appellants had....
X X X X Extracts X X X X
X X X X Extracts X X X X
....usive licensee of C. A. on the ground that the license Agreement dated July 26, 2002 produced in Court redacted crucial sections of the Agreement, particularly, those dealing with the content of the license. 5. The counsel for the appellant withdrew the suit CS(OS) No.146/2008 with the liberty to refile. The appellants filed a suit bearing CS (OS) No.219/2008. 6. The learned Single Judge after hearing all parties to the proceedings, dismissed the suit as not maintainable for non-compliance of Section 61(1) of the Act holding that C.A. being the owner of the copyright had not been made a party to the suit under Section 61(1) of the Act. The Court also dismissed the application for injunction holding that the action of the appellant in not disclosing the full license agreement weighed against the appellant in the matter of grant of ad interim relief. 7. The learned Single Judge in his judgment dated 18th February, 2008 held as follows: "40. No doubt, Chapter VIII deals with a species of rights known as broadcast reproduction rights. The content and extent of that right has been defined in Section 37. Section 39-A of the Act refers to certain provisions of the Act, it has ....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... a necessary party. In Udi Narain Singh Malpaharia v. Addl. Member, Board of Revenue, Bihar 1963 Supp (1) SCR 676 pointed out to the distinction between "necessary party" and "proper party". The Court held that: "The law on the subject is well settled: it is enough if we state the principle. A necessary party is one without whom no order can be made effectively; a proper party is one in whose absence an effective order can be made but whose presence is necessary for a complete and final decision on the question involved in the proceedings." The failure to implead the owner of copyright in the present case has resulted in keeping out a party whose presence is necessary for a final and complete decision on the question involved in the proceedings. Thus, apart from the suit being not maintainable due to Section 61 (1) of the Act, it is also bad for mis-joinder of a necessary party. 43. Coming now to the first aspect, i.e., whether the plaintiff has disclosed a cause of action, this Court had noticed in the previous section of the judgment while dealing with the claim for temporary injunction, that the plaintiff had not disclosed the entire agreement, which was a relevant fact....
X X X X Extracts X X X X
X X X X Extracts X X X X
....t the feed to cable homes by way of network of cables. As a natural consequence it was considered necessary to protect broadcasters from against unauthorized receipt by the cable operators of their services without a contract permitting such receipt. (c) Since existing definition of the copyright in the statute of most countries did not provide any protection to the broadcasters on the basis that there was no copyright in their broadcast of a live event or, studio shows and the like, the need to protect the broadcasters from unauthorized reception of their feed by cable operators was felt globally. This issue was discussed during the Uruguay round of the WTO Agreement of Trade-related Aspects of Intellectual Property Rights (TRIPS Agreement) in 1994. Recognizing the need to protect the rights in broadcasts, Article 14 (3) was incorporated into the TRIPS Agreement. It reads as under: Article Protection of Performers, Producers of Phonograms (Sound recordings) and Broadcasting organizations. 3. Broadcasting organizations shall have the right to prohibit the following acts when undertaken without their authorization: the fixation, the reproduction of fixations, and the rebroa....
X X X X Extracts X X X X
X X X X Extracts X X X X
....separate and distinct right to the broadcasting organizations to help them protect their rights in their broadcasts against third parties. (c) Satellite broadcasting rights are treated as separate rights and the said rights are recognized throughout the world as independent rights as held in Raj Video Vision v. M/s Sun TV, 1994 (2), Madras Law Weekly 158 which has also been approved in AA Associates versus Prem Goel AIR 2002 Del 142. A similar view has been taken in M/s Video Master v. M/s Nishi Productions, 1998 (18) PTC 117. (d) Thus, section 13 and 14 of the Copyright Act, makes it clear that copyright will subsist only in work. 'Work' does not include 'broadcast'. As a result there will only be a broadcasters right in the telecast of live events communicated to the public as provided under Section 37 of the Copyright Act, which as explained above, is separate and distinct from copyright. Therefore, what emerges from the above is that the Broadcast Reproduction Right, which is different from Copyright, is with the Broadcasting Organization which is causing the Broadcast to be communicated to the public under their Logo by any means of wireless diffusion or ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....e further contended that assuming it is held that Section 61 is applicable as broadcasting right fall within copyright there is also an infringement of a copyright in the cinematography work, i.e., the recorded form of the broadcast as: (a) These are two separate, distinct rights giving rise to two distinct causes of action. (b) Even otherwise the copyright in the cinematograph work in this case would belong to ESS who would be the owner thereof and therefore, ESS would not be an exclusive licensee of the copyright in terms of Section 61. (c) ESS would be the owner of the copyright in the recorded material of what is broadcast by them even assuming a substantial portion of it may be the live feed received from from channel 9. 11. The learned counsel for the appellant on the question of fair dealing contended that: a. At the outset, it may be pointed that there is no concept of fair dealing in the infringement of copyright in a cinematographic film and therefore if it is to be held that what is broadcast by ESS amounts to a copyright work then the defence of fair dealing is not available at all. Fair dealing is available as a defence in the case of a broadcast reprodu....
X X X X Extracts X X X X
X X X X Extracts X X X X
....amount to fair dealing in the case of news coverage of a cricket match. 12. The learned Senior Counsel for the respondent, Mr. Soli Sorabjee, contended as follows: - a. Section 61 of the Copyright Act, 1957 is mandatory. Its effect and operation are not excluded nor limited by any non-obstante clause or by making the said section subject to any other provisions of the said Act, the non-mention of Section 61 in Section 39-A cannot by "implication" curtail the operation of Section 61. The significant words in Section 39-A are "with any necessary adaptations and modifications", that is the reason why some provisions of the said Act have been specifically mentioned in Section 39-A. b. "Broadcast reproduction right" is a species of copyright. This right is akin to Copyright as per Clause 11 of the Statement of Objects and Reasons of the Copyright Act 1957. The said two rights are not mutually exclusive. Broadcast reproduction right, a "special" right, does not exist de hors copyright; it is merely a special strand amongst the several other strands of copyright. Broadcast reproduction right is an "add-on" right that can only exist on the bed-rock of copyright. In many essential ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....censee, namely the appellant. Since the appellant is not the owner of "broadcast reproduction right" the Appellant cannot seek enforcement of a broadcast reproduction right in relation to what is not "its broadcast" as required under Section 37 of the said Act. In fact, the Appellant has not even claimed that it is the "owner" of broadcast reproduction right. g. The counsel for the respondent further contended that it is incumbent upon the Appellant to disclose the full agreement, which it has not done. It may be noted that the total number of pages of the agreement is 55, out of which 16 pages are totally blank and 15 pages are partially obscured. This includes clauses which are crucial, for example, Clause 5.6(c) which states that the exclusive right guaranteed to Appellant is subject to Clauses 5.2, 5.6(a) and 5.6(b). Nonetheless Clause 5.2 and 5.6(a) are totally blank. h. This fatal infirmity cannot be overcome by enclosing the said Agreement in a cover and handing it over to the appellate Court. It is an elementary principle in the administration of justice that whatever documents are purported to be shown to the Court such documents must be made available to the other s....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... SCC 405, to ascertain that wherever the Parliament has intended a hearing it has said so in the Act and the rules and inferentially where it has not specificated, it is otiose. There is no such sequitur. The silence of a statute has no exclusionary effect except where it flows from necessary implication. However, we are not able to place reliance on the above judgment as independent nature of the broadcasting rights are specifically laid down in a separate Chapter VIII of the Act which has been enacted. 13. Mr. Sundaram submitted that at this juncture, he is not pressing for interim relief since this court is hearing the appeal on the question of maintainability. 14. In our view, the conclusion of the learned Single Judge pertaining to Section 61(1) to the effect that non-compliance of the Section made the suit not maintainable cannot be sustained in view of the fact that the rights of the broadcasting organization and its performers which figure in Chapter VIII of the Act are not covered by the conditions imposed by virtue of Section 61 which is found in Chapter XII providing for civil remedies. Section 61 of the Act reads as follows: Section 61 - Owner of copyright to b....
X X X X Extracts X X X X
X X X X Extracts X X X X
....he public" means making any work available for being seen or heard or otherwise enjoyed by the public directly or by any means of display or diffusion other than by issuing copies of such work regardless of whether any member of the public actually sees, hears or otherwise enjoys the work so made available." Section 37 of the Act reads as follows: "Section 37 - Broadcast reproduction right - (1) Every broadcasting organization shall have a special right to be known as "broadcast reproduction right" in respect of its broadcasts. (2) The broadcast reproduction right shall subsist until twenty-five years from the beginning of the Calendar year next following the year in which the broadcast is made. (3) During the continuance of a broadcast reproduction right in relation to any broadcast, any person who, without the license of the owner of the right does any of the following acts of the broadcast or any substantial part thereof- (a) re-broadcasts the broadcast; or (b) causes the broadcast to be heard or seen by the public on payment of any charges; or (c) makes any sound recording or visual recording of the broadcasting; or (d) makes any reproduction of such sou....
X X X X Extracts X X X X
X X X X Extracts X X X X
....s distinct and separate rights. Further, it is to be seen that the Amendment Act of 1994 while amending the Act not only extended such rights to all Broadcasting Organizations, but also clearly crystallized the nature of such rights. Hence, in our view, the contention of the respondent that the broadcast reproduction right as a special right, does not stand dehors copyright and that the two rights are not mutually exclusive, cannot be sustained as it is clearly seen from the legislative intent that the two rights though akin are nevertheless separate and distinct. 17. Furthermore, under Section 37 of the Act, broadcast reproduction right has been defined as a special right available to every broadcasting organization qua its broadcasts. The term "broadcast" has been separately defined under Section 2(dd), as a communication to the public. It is thus evident that there could be both copyright and broadcasting reproduction right which could separately co-exist. As an example the copyright of cinematography film being broadcast on a satellite channel vests with the producer of the film whereas the broadcast reproduction right for the same vests with the broadcaster channel itself. ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....pter XII has been specifically left out of the provisions which with necessary adaptations and modifications apply in relation to the Broadcast reproduction rights, clearly shows that the legislative intent was not to apply Section 61 to the broadcast reproduction rights. This view of ours is strengthened by the specific mention of Sections 18, 19, 30, 53, 55, 58, 64, 65 and 66 as the provisions which apply to broadcasting rights with necessary adaptations and modifications. Consequently, it is open to the broadcaster to initiate the suit for infringement of such rights without joining the original licensee as Section 61 does not apply to broadcast reproduction rights. Section 61(1) and (2) demonstrate that said Section is really for the benefit of the copyright owner so as to prevent any claim to a right or title adversarial or contrary to the interest of the owner of the copyright. We are thus unable to agree with Mr. Sorabjee's plea that Section 61 would by necessary implication apply, because it is not as if the Legislature had provided that relevant provisions of the Chapter XII would apply with necessary modifications and adaptations to the broadcasting reproduction right....
X X X X Extracts X X X X
X X X X Extracts X X X X
....gement by the defendant. The plaintiff/applicant therefore, in my opinion have no prime facie case." (emphasis supplied) b. In A.A. Associates v. Prem Goel, AIR 2002 DEL 142, this Court held as follows: 18. Reference in this connection can well be made to the decision from the Madras High Court in Raj Video Vision v. M/s Sun TV, 1994-2- LW.158. Somewhat a similar question came up for consideration in that court. It was held that intention of the parties have to be determined to find out as to whether it included all other rights or it was confined to features or television or satellite. The Madras High Court held that Satellite television broadcasting right is an independent right for which a copyright could not have claimed. 19. The attention of the court has also been drawn towards the decision of the Bombay High Court in the case of Video Master v. Nishi Productions 1998, PTC (18) 117. The Bombay High Court referred to the differences and clauses/species of the communication and held that theatrical rights include the right to exhibit the cinematograph film in theatres, terrestrial rights is the right to exhibit the film on Doordarshan and satellite broadcasting rights is ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....resentation such as wagon wheel showing the areas which the batsman has scored runs, partnership analysis, bowling analysis etc. Replays & slow motion replays would be received in the ESS's OB van as part of the images from the host broadcaster. However, ESS in their own OB van also has equipment known as Electronic Video Storage (EVS) which separately generates slow motions & replays from the cameras on this ground. The Hawkeye images would also be separately generated only by ESS as and when ESS's director in the OB van deems fit. ESS has its own commentary team of six commentators, statistician & scorers continuously showing images of the commentators. These images go directly to the ESS's OB van in contrast to the output from the channel 9, which go to the the host broadcaster's commentary box which would go directly to their OB van. iii. Change of innings show: In a One Day International when the team batting first concludes its innings, and before the second team begins its batting, ESS does an exclusive 45 minutes live programme on various aspects of the match including analysis etc. from the studio of ESS at the ground. iv. Post Match : There is an one....
X X X X Extracts X X X X
X X X X Extracts X X X X
....appellant do make a meaningful difference to the eventual telecast. In a situation where crucial decisions like LBW, run out, caught behind or stumping are concerned, the role played by the expert employed by the broadcaster is of considerable importance, as a reputed former player is able to give his expert opinion on a controversial decision. The lay viewer constantly looks forward to the expert voice on controversial incidents. It is significant to note that that Cricket, unlike Soccer and hockey is not a continuous game. Between every delivery there is a pause, as the ball is fielded and relayed back to the bowler, who returns back to his mark. In this period in particular, the inputs of the Commentators and experts become relevant and the contribution in no small measure makes the eventual telecast more interesting and more meaningful to the viewing public. Thus, the viewer would eagerly look forward to an input of a famous ex-cricketer on an interesting development in the field of play. The expert analysis of a caught behind or LBW appeal, upheld or denied by the umpire is bolstered with the help of slow motion replays, stump vision and the hawkeye images. This makes the tele....
X X X X Extracts X X X X
X X X X Extracts X X X X
....s, the prolonged and repeated footage of the broadcast of the cricket match in the news channels, beyond what is permissible by the concept of fair dealing, may unfairly affect the appellant's exploitation of its rights. The appellant's goodwill, its relationship with the advertiser and its commercial prospects could be substantially damaged by this competition. Hence, the broadcasting reproduction rights of the appellant needs to be protected. 24. The learned counsel for the appellant has also relied upon the Statement of WIPO which are as follows:- "Whereas the rights provided by copyright apply to authors, "related rights", also known as neighboring rights" concern other categories of owners of rights, namely, performers, the producers of phonograms and broadcasting organizations. Related rights are the rights that belong to the performers, the producers of phonograms and broadcasting organizations in relation to their performances. Phonograms and broadcasts respectively. Related rights differ from copyright in that they belong to owners regarded as intermediaries in the production, recording or diffusion of works. The link with copyright is due to the fact that th....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ludes broadcasting rights and section 61 applies, since we have found the eventual telecast of the appellant to be distinct and different from as received by the host broadcaster, the independent copyright owner of the modified product is the appellant itself and not C.A. and the dismissal of the suit on the ground of maintainability by application of Section 61 of the Act is thus not warranted. This issue does not find mention in the learned Single Judge's judgment and we have therefore, dealt with it on the existing pleadings. It is amply clear from the Act itself, as the proviso to Section 39A in Chapter VIII relating to broadcasting reproduction rights specifically lays down, that where copyright subsists in respect of any work or performance that has been broadcast, no license of the reproduction of such broadcast will be permitted without the consent of the owner of the Rights. The Legislative intent can be clearly discerned from the proviso to Section 39A which specifically mentions various Sections of the Act which apply to broadcasting rights with necessary modifications and adaptations and the proviso specifically mentions that where in any case an element of copyrigh....
X X X X Extracts X X X X
X X X X Extracts X X X X
....age fell within the ambit of fair comment. The learned Single Judge is right in holding that such a 30 seconds/7 minutes cap cannot apply across the Board. For example, if there is coverage of the Olympics which contains several sports disciplines compressed in a short period of about 10 days, imposition of such a 30 seconds/7 minutes cap, would obviously be unjust and unreasonable. Similarly, in covering an event like the Football World Cup when simultaneously on a day 2/3 matches are played at different venues then the said cap of 30 seconds/7 minutes may not apply. In the circumstances of this case, it can be said that the appellants have prima facie shown sufficient materials in the form of the aggregate length of the clippings used by the respondents in their news programmes and sports reviews, to require consideration by the learned Single Judge to conclude whether such use amounted to unfair dealing. In our view the aggregate timing is a vital component of fair dealing and the question has to be decided on merits in each case. The learned Single Judge therefore was required to deal with the issue of what tantamounts to fair dealing after examining the facts and circumstances....
X X X X Extracts X X X X
X X X X Extracts X X X X
....V3's own exploitation of its rights. TV3's goodwill (its brand, its audience, its relationship with advertisers) could be substantially damaged by that competition, but the damage would be difficult to adequately quantify." (emphasis supplied) We approve of and adopt the above reasoning and are of the view that the test laid down in the above judgment must of necessity be applied when determining the claim of 'fair dealing'. In relation to the facts and circumstances of the case, to rely on the defence of fair dealing for the extended use of the sports footage beyond an acceptable period, may not be sustainable. The broadcasting rights of the cricket rests exclusively with the appellant and any form of commercial deployment of the footage in excess of 30 seconds per bulletin and a total of 2 minutes per day may negate the plea of fair defence. However, this may depend on the facts of the case, which the learned Single Judge while dealing with the application for interim relief is required to consider. The plea of the respondent that a full fledged programme running upto 30 minutes, interspersed with commercial advertisements may not go beyond permissible limit....
X X X X Extracts X X X X
X X X X Extracts X X X X
....hile disposing of the interim relief application. The learned Single Judge further held as under: ".........Judged from this standpoint, the court finds it difficult to accept that a 30 second limit or 7 minute cap can apply "across the broad" in all contingencies. Similarly, the court cannot universalize that recourse to advertisements before or after broadcast of such clippings would be unfair. In the circumstances of this case, the plaintiffs have not shown sufficient materials, barring the aggregate length of the clippings used by defendants in their news programmes and sports review, to say that it amounted to unfair dealing. In any case, there is no imminent threat or danger of legal injury of such kind that damages or a claim for money cannot compensate. Even if the defendants' use of the clippings were, or partly were to be found as unfair use, the plaintiff can be adequately compensated in damages. On the other hand, the nature of injunction sought is of such a broad nature that the court would well be drawn into details, while attempting to supervise it - a course of action hardly desirable if not entirely unfeasible. 35. For the above reasons, the plaintiff can....
X X X X Extracts X X X X
X X X X Extracts X X X X
....eter, virtual spectator and super slow motion etc. apart from the team of technicians, cameramen, editors, ground staff, producers, statistician and commentators apart from anchors like Gautam Bhimani. This vast team contracted/employed by the Plaintiff produces the entire feed of a cricket match which is transmitted/telecast by a satellite through the Plaintiff's facilities including leased satellite space to the various homes through different modes of transmission such as DTH and cable. It is in respect of this composite package/programme that the plaintiff claims broadcast reproduction right." (Emphasis supplied) Since not even a written statement was filed controverting the above assertions, and only a reply to the application for interim relief was filed, the learned Single Judge erred in holding that the appellant was suing as an exclusive licensee. The pleadings clearly show that the claim was not as an exclusive licensee but for the infringement of broadcast reproduction right in the eventual telecast. 29. It has also been averred in the plaint that the respondents have unauthorizedly telecast the signals of the cricket match in a manner which was inconsistent with ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....to the public and (3) the amount and importance of the work which has been taken." However, in spite of quoting the 3 tests laid down in Ashdown vs. Telegraph Group Ltd., [2001] 4 All ER 666, the learned Single Judge did not apply the impact of such tests on the facts and circumstances of the present case. The repetition of the appellant's broadcast of the cricket match (already published) by the respondents in the guise of various programmes , is clearly in the nature of commercial competition with the owner's work and it is to be considered whether it amounts to unfair commercial exploitation by the respondents by taking into account the amount and importance of the appellant's telecast of the appellant's rights to broadcast the cricket matches. However, this above position of law expressed by us in this judgment should in no manner be construed as curbing the news channel's rights to have special programmes based on cricket/cricket matches. Indeed such a right is an inalienable part of the freedom of speech and expression guaranteed by Article 19(1)(a) of the Constitution of India. If, therefore, there is a cricket based programme involving discussion, ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....Agreement dated 26th July, 2002, as we have found that the broadcast reproduction right in respect of telecast of live event like a Cricket match are separate and distinct right as from the copyright and as such Section 61 is not applicable to broadcast reproduction right. Even assuming that a copyright includes broadcast reproduction right and Section 61 applied, we are of the view that the eventual telecast by the appellant being different and distinct from the telecast of the host broadcaster, the independent copyright owner of the eventual product is the appellant itself. In light of the above observations, it is not incumbent upon us to rely on the above said Agreement or go into the effect of suppression of its portions. 33. Thus, to sum up after considering the various aspects of the satellite broadcasting:- A. We hold that the broadcast reproduction right as contended by the appellant are to be treated as separate, distinct and independent rights. We are therefore, unable to agree with the interpretation of the impact of Section 61 of the Act, which the learned Single Judge has preferred to adopt. B. We are also unable to subscribe to the view taken by the learned Sin....