QUESTION
The plaintiff, Radio Today Broadcasting Ltd. (RTB), wished to run a radio station on the FM band, known as ''Radio Today'', and intended to play both film and non-film songs on their radio station. They paid licence fees to the producers of the film and non-film songs, who were members of Phonographic Performance Limited (PPL).
However, they did not intend to pay any royalties to the lyricists, composers and other artists,who were members of the Indian Performing Rights Society (IPRS),the defendant. The defendant threatened the plaintiff with violation of copyright law if the songs were played on their radio station, and the plaintiff filed the instant action claiming protection under section 60 of the Copyright Act 1957.
The plaintiff filed the present suit to seek an injunction against the continuance of threats of infringement, and the defendant filed a counterclaim alleging copyright infringement by the plaintiff.
The issue before the High Court of Calcutta was whether the plaintiff radio station was obliged to pay any royalty and/or licence fees to IPRS for the songs broadcasted through its radio station in addition to the licence fees paid to PPL, a society of producers.
The court held, following the Supreme Court decision in IPRS v. Eastern IndianMotion Pictures Association (EIMPA) that though the right of a composer or lyricist in respect of a song that was put into the sound track of a film was ''extinguished'' when he was paid, he could nonetheless still claim copyright in his song and reserve his right to assign it to others for commercial exploitation of his work in other modes if there was an express agreement between him and the producer of the film reserving his copyright.
In the present case, the plaintiff radio station did not contend that the IPRS members had assigned their exclusive rights to the producers by agreement. The court held that unless it was shown that these exclusive rights of the IPRS members were expressly assigned in favour of the members of PPL, IPRS was entitled to claim royalties from the plaintiff if it wanted to exploit the work by broadcasting the songs on its proposed radio station.
This decision is noteworthy for it affirmed, following the Supreme Court decision in IPRS v. EIMPA, the separate nature of the authorship rights of composers and lyricists in their musical compositions, and the derivative rights of producers in the sound tracks of their movies. It resolved the misunderstanding that the Indian composers' and lyricists' as authors could not licence their songs for use with other media once they were assimilated into the producers' films as sound tracks. On th efacts, the plaintiff radio broadcaster was held to require licences from both IPRS(representing the composers and lyricists) as well as PPL (representing the producers of both ''film'' and ''non-film'' songs) in order to secure permission to broadcast all the songs on their radio station. With the liberalization of the broadcasting industry by the Indian government since October 1999 to grant licences for private FM stations to provide entertainment-related broadcasting services, this decision affirmed the necessity for FM broadcasters to seek both IPRS and PPL licences for the broadcast of music (songs) and pay royalties to both.
Questions
(a) Discuss briefly the relevant provision of the Copyright Act dealing with the Statutory Licence for Broadcasting of Literary and Musical Works and SoundRecording.
(b) Explain whether the plaintiff was legally right or wrong.
(c) As per Section 60 of the Copyright Act, 1957, discuss whether plaintiff was eligible to get remedy in this case.
(d) Discuss the relevant provision of the Copyright Act dealing with the 'assignment of copyright'. What was observed by the Court in this regard?
APPLICABLE PROVISIONS
SECTION 31D OF COPYRIGHTS ACT, 1957
Statutory licence for broadcasting of literary and musical works and sound recording.— (1) Any broadcasting organisation desirous of communicating to the public by way of a broadcast or by way of performance of a literary or musical work and sound recording which has already been published may do so subject to the provisions of this section.
(2) The broadcasting organisation shall give prior notice, in such manner as may be prescribed, of its intention to broadcast the work stating the duration and territorial coverage of the broadcast, and shall pay to the owner of rights in each work royalties in the manner and at the rate fixed by the Appellate Board.
(3) The rates of royalties for radio broadcasting shall be different from television broadcasting and the Appellate Board shall fix separate rates for radio broadcasting and television broadcasting.
(4) In fixing the manner and the rate of royalty under sub-section (2), the Appellate Board may require the broadcasting organisation to pay an advance to the owners of rights.
(5) The names of the authors and the principal performers of the work shall, except in case of the broadcasting organisation communicating such work by way of performance, be announced with the broadcast.
(6) No fresh alteration to any literary or musical work, which is not technically necessary for the purpose of broadcasting, other than shortening the work for convenience of broadcast, shall be made without the consent of the owners of rights.
(7) The broadcasting organisation shall—
(a) maintain such records and books of account, and render to the owners of rights such reports and accounts; and
(b) allow the owner of rights or his duly authorised agent or representative to inspect all records and books of account relating to such broadcast,
in such manner as may be prescribed.
(8) Nothing in this section shall affect the operation of any licence issued or any agreement entered into before the commencement of the Copyright (Amendment) Act, 2012.
SECTION 60 OF THE COPYRIGHTS ACT, 1957
Remedy in the case of groundless threat of legal proceedings.
Where any person claiming to be the owner of copyright in any work, by circulars, advertisements or otherwise, threatens any other person with any legal proceedings or liability in respect of an alleged infringement of the copyright, any person aggrieved thereby may, notwithstanding anything contained in section 34 of the Specific Relief Act, 1963 (47 of 1963), institute a declaratory suit that the alleged infringement to which the threats related was not in fact an infringement of any legal rights of the person making such threats and may in any such suit
Where any person claiming to be the owner of copyright in any work, by circulars, advertisements or otherwise, threatens any other person with any legal proceedings or liability in respect of an alleged infringement of the copyright, any person aggrieved thereby may, notwithstanding anything contained in section 34 of the Specific Relief Act, 1963 (47 of 1963), institute a declaratory suit that the alleged infringement to which the threats related was not in fact an infringement of any legal rights of the person making such threats and may in any such suit—"
(a) obtain an injunction against the continuance of such threats; and
(b) recover such damages, if any, as he has sustained by reason of such threats:
Provided that this section does not apply if the person making such threats, with due diligence, commences and prosecutes an action for infringement of the copyright claimed by him.
SECTION 17 OF THE COPYRIGHTS ACT, 2017
FIRST OWNER OF COPYRIGHT
Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein:
Provided that—
(a) in the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the work;
(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(c) in the case of a work made in the course of the author's employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(cc) in the case of any address or speech delivered in public, the person who has delivered such address or speech or if such person has delivered such address or speech on behalf of any other person, such other person shall be the first owner of the copyright therein notwithstanding that the person who delivers such address or speech, or, as the case may be, the person on whose behalf such address or speech is delivered, is employed by any other person who arranges such address or speech or on whose behalf or premises such address or speech is delivered;
(d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(dd) in the case of a work made or first published by or under the direction or control of any public undertaking, such public undertaking shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein.
Explanation.— For the purposes of this clause and section 28A, "public undertaking" means
(i) an undertaking owned or controlled by Government; or
(ii) a Government company as defined in section 617 of the Companies Act, 1956 (1 of 1956);or
(iii) a body corporate established by or under any Central, Provincial or State Act;]
(e) in the case of a work to which the provisions of section 41 apply, the international organization concerned shall be the first owner of the copyright therein.
Provided that in case of any work incorporated in a cinematograph work, nothing contained in clauses (b) and (c) shall affect the right of the author in the work referred to in clause (a) of sub-section (1) of section 13.
SECTION 18 OF THE COPYRIGHTS ACT, 1957
ASSIGNMENT OF COPYRIGHT
(1) The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof:
Provided that in the case of the assignment of copyright in any future work, the assignment shall take effect only when the work comes into existence.
Provided further that no such assignment shall be applied to any medium or mode of exploitation of the work which did not exist or was not in commercial use at the time when the assignment was made, unless the assignment specifically referred to such medium or mode of exploitation of the work:
Provided also that the author of the literary or musical work included in a cinematograph film shall not assign or waive the right to receive royalties to be shared on an equal basis with the assignee of copyright for the utilization of such work in any form other than for the communication to the public of the work along with the cinematograph film in a cinema hall, except to the legal heirs of the authors or to a copyright society for collection and distribution and any agreement to contrary shall be void:
Provided also that the author of the literary or musical work included in the sound recording but not forming part of any cinematograph film shall not assign or waive the right to receive royalties to be shared on an equal basis with the assignee of copyright for any utilization of such work except to the legal heirs of the authors or to a collecting society for collection and distribution and any assignment to the contrary shall be void.
(2) Where the assignee of a copyright becomes entitled to any right comprised in the copyright, the assignee as respects the rights so assigned, and the assignor as respects the rights not assigned, shall be treated for the purposes of this Act as the owner of copyright and the provisions of this Act shall have effect accordingly.
(3) In this section, the expression "assignee” as respects the assignment of the copyright in any future work includes the legal representatives of the assignee, if the assignee dies before the work comes into existence.
ANSWERS
Answer 1(a)
Section 31D of Copyrights Act, 1957 deals with the statutory licence for 10 marks broadcasting of literary and musical works and sound recording. According to this Section:
(1) Any broadcasting organisation desirous of communicating to the public by way of a broadcast or by way of performance of a literary or musical work and sound recording which has already been published may do so subject to the provisions of this section.
(2) The broadcasting organisation shall give prior notice, in such manner as may be prescribed, of its intention to broadcast the work stating the duration and territorial coverage of the broadcast, and shall pay to the owner of rights in each work royalties in the manner and at the rate fixed by the Appellate Board.
(3) The rates of royalties for radio broadcasting shall be different from television broadcasting and the Appellate Board shall fix separate rates for radio broadcasting and television broadcasting.
(4) In fixing the manner and the rate of royalty under sub-section (2), the AppellateBoard may require the broadcasting organisation to pay an advance to the owners of rights.
(5) The names of the authors and the principal performers of the work shall, except in the case of the broadcasting organisation communicating such work by way of performance, be announced with the broadcast.
(6) No fresh alteration to any literary or musical work, which is not technically necessary for the purpose of broadcasting, other than shortening the work for the convenience of broadcast, shall be made without the consent of the owners of rights.
(7) The broadcasting organisation shall maintain such records and books of account, and render to the owners of rights such reports and accounts.
Answer 1(b)
Whether the Plaintiff was legally right or wrong As per the prevailing circumstances, the plaintiff (RTB) was legally wrong.
The Supreme Court ruling in IPRS v. EIMPA case stated that though the right of a composer or lyricist in respect of a song that was put into the sound track of a film was "extinguished” when he was paid, he could however still claim copyright in his song and reserve his right to assign it to others for commercial exploitation of his work in other modes if there was an express agreement between him and the producer of the film reserving his copyright. This judgement went in favour of lyricists, composers and other artists, who were the members of the IPRS, the defendant in this case. Also, the plaintiff did not contend that the IPRS members had assigned their exclusive rights to the producers by agreement. The court held that unless it was shown that these exclusive rights of the IPRS members were expressly assigned in favour of the members of PPL, IPRS was entitled to claim royalties from the plaintiff if it wanted to exploit the work by broadcasting the songs on its proposed radio station.
Answer 1(c)
Whether the plaintiff was eligible to get a remedy.
Section 60 of the Copyright Act, 1957 deals with a remedy in the case of groundless threat of legal proceedings — where any person claiming to be the owner of copyright in any work, by circulars, advertisements or otherwise, threatens any other person with any legal proceedings or liability in respect of an alleged infringement of the copyright,any person aggrieved thereby may, notwithstanding anything contained in section 34 of the Specific Relief Act, 1963, institute a declaratory suit that the alleged infringement to which the threats related was not in fact an infringement of any legal rights of the person making such threats and may in any such suit –
(a) obtain an injunction against the continuance of such threats; and
(b) recover such damages, if any, as he has sustained by reason of such threats.
However, this section shall not apply if the person making such threats, with due diligence, commences and prosecutes an action for infringement of the copyright claimed by him. In the present case, the defendant (IPRS) allegedly intimidated the plaintiff(RTB) to pay a royalty. But this was considered by the Court legal because the alleged intimidation was supported by reasonable grounds. Hence, the plaintiff was not entitled to get remedy in this case as per Section 60.
Answer (d)
Section relating to 'assignment of copyright and the Court observations
Section 18 of the Copyright Act provides that the owner of the Copyright in an existing work or the prospective owner of the Copyright in a future work may assign to any person copyright. In both cases the assignment may be made of the copyright either wholly or partially and generally or subject to limitations and that too for the whole period of copyright or part thereof. However, in case of assignment of copyright in any future work, the assignment has a real effect only when the work comes into existence.
If a work is done by an author for consideration for a publisher, the copyright in it would normally vest in the publisher subject to any contract to the contrary, as is provided by Section 17 of the said Act.
Secondly as provided by Section 18, the copyright could be assigned, and if it is so done it would be vested in the purchaser. In the present case, the plaintiff radio station did not contend that the IPRS members had assigned their exclusive rights to the producers by agreement.
The court held that unless it was shown that these exclusive rights of the IPRSmembers were expressly assigned in favour of the members of PPL, IPRS was entitled to claim royalties from the plaintiff if it wanted to exploit the work by broadcasting the songs on its proposed radio station.
DISCLAIMER: The case study presented here is only for sharing information with the readers. The views are personal, shall not be considered as advice. In case of necessity do consult with professionals for more clarity and understanding on subject matter.
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