Centre for Internet and Society

Can Judges Order ISPs to Block Websites for Copyright Infringement? (Part 1)

ananth — 2014-01-31T06:00:47Z

In a three-part study, Ananth Padmanabhan examines the "John Doe" orders that courts have passed against ISPs, which entertainment companies have used to block dozens, if not hundreds, of websites. In this part, he looks at the theory behind John Doe orders and finds that it would be wrong for Indian courts to grant "John Doe" orders against ISPs.

The Madras High Court, in its 2012 order in R.K.Productions v. B.S.N.L.,[1] has affirmed the possibility of a suit against internet service providers (ISPs) to block access to certain webpages upon notification by the copyright owner. Though this appears to be a reasonable order at first glance, keeping in mind the fact that access to identified copyrighted works alone is targeted and not websites in their entirety, the legal basis for the same is highly questionable. In this two-part study, Ananth Padmanabhan explores the legal sanctity of these orders, especially post the coming into force of the Copyright Amendment, 2012. The first part of this study explores the genesis of John Doe orders and proceeds to examine the conceptual problems arising from tagging along website blocking orders within the broad sweep of John Doe action. This part concludes that website blocking orders against ISPs stand separately from, and cannot be justified in the same manner as, John Doe orders.

[1]. (2012) 5 LW 626. Hereinafter referred to as R.K. Productions.

John Doe Orders and their Conceptual Understanding

The concept of John Doe Orders in ex parte proceedings for copyright infringement came in due to the peculiar character of copyright piracy. Orders of this nature were being passed in jurisdictions across the world till they were, probably for the first time, passed in India in 2003. Since then, such orders have become a somewhat regular feature. In short, such orders permit the plaintiff to enforce an injunction order against unidentified / unnamed defendants, ‘John Doe’ being a generic name for such defendants. To understand the nature and mechanism of such enforcement and the various guidelines governing such orders, exploring the genesis of these orders is imperative.

In Billy Joel v Various John Does,[2] one of the earliest instances of a John Doe order, the plaintiff who was a musician and a successful recording artist, found to his annoyance that his success had spawned an underground industry that capitalised on his popularity through the sale of merchandise, usually T-shirts bearing his picture and name. These sales were carried on by unauthorised persons who showed up at his concerts with the merchandise and sold them outside the concert halls where he was performing. The plaintiff had in fact granted his recording company the exclusive right to market such merchandise, and the company was doing so inside the concert halls. Obviously, the presence of the unauthorised vendors outside the concert halls hurt the company’s sales and the plaintiff’s revenue share. This compelled him to approach the district court in Wisconsin seeking injunctive relief against various "John Does" or unidentified defendants who were carrying on the unauthorised sale of merchandise. The order was specifically sought seeking an ex parte temporary restraining order prohibiting certain unnamed persons from selling merchandise bearing the plaintiff’s name or likeness outside the Milwaukee Arena where he was scheduled to perform on that day. Thus, the order sought was confined to one particular instance and the situation demanded expedient preventive action since the concert was on the very same day.

The district court, while finding the propriety of an order against unidentified defendants "troubling", still went ahead and passed the order sought for. The court felt that the problem of the defendants’ identities would be met if the copies of the summons, complaint, and restraining order itself were to be served on all persons from whom merchandise connected with the plaintiff was seized on the night of the concert. Additionally, the court clarified that all these parties would be entitled to have their names added as parties to the cause title and even otherwise, to contest the seizures. The plaintiff had also furnished a bond to cover damages that may arise due to the awarding of such relief. The court applied the principle of ubi jus ibi remedium – where there is a wrong done, there has to be a remedy in law – while granting this relief. This is clear from the last paragraph of the judgement where the Court says : "Were the injunction to be denied, plaintiffs would be without any legal means to prevent what is clearly a blatant infringement of their valid property rights. While the proposed remedy is novel, that in itself should not weigh against its adoption by this court. A court of equity is free to fashion whatever remedies will adequately protect the rights of the parties before it."

Subsequently, various courts in the United States have granted such relief. However, most such instances of judicial intervention in cases of piracy have confined themselves to specific instances of piracy as opposed to orders of wider applicability extending to more than one instance of apprehended or real piracy. For instance, in Brockum Intern., Inc. v Various John Does,[3] the plaintiff sought a nation-wide order prohibiting the same activity in other cities visited by the popular rock band, The Who, on its national tour. The court declined to do so.

The Metallica Order

In New Zealand, the High Court has specifically applied the principle of ubi jus ibi remedium while justifying the issuance of John Doe Orders. In Tony Blain Pty.Limited v Splain and other Persons Unknown,[4] the court likened this kind of relief sought against unidentified defendants, to an order in the nature of Anton Piller remedy. The court stated that both these orders involved a common feature, being an intrusion into the privacy of the defendants. However, such an intrusion would be justified applying the maxim of ubi jus ibi remedium. According to the court, "in circumstances where it is plain that persons are infringing proprietary interests which the law recognises, or deceiving the public by way of trade in a manner which may indirectly affect the commercial interests of others, the law should, if it reasonably can, provide a remedy". Emphasising on the conduct-centric nature of these reliefs, the court held that John and Jane Does will be known by their works.

However, in its attempt to bring in some safeguards before passing such an order, the court held that it would be better in the future to bring such applications a little in advance so that amicus curiae could be appointed to represent the view point of the John and Jane Does. Further, the court observed that it was important to build into the procedure appropriate protections, including means of informing persons served with orders for injunction in clear language and simple terms what their remedies were. These remedies, in turn, would include a right to apply to the court within twenty four hours for a review of the order and a right to claim damages in an appropriate case, not merely on the basis of the usual undertaking to be given by plaintiffs, but also on the basis of the tort of misfeasance of public office. It will also be necessary for the plaintiff to file before the court, a full report verified by affidavit, of the process of execution of the particular orders.

It is thus seen that the High Court, though keen to do justice by providing a remedy that is effective enough to protect the plaintiff’s rights, also tried to mitigate the harshness of the measures proposed by bringing in some safeguards. This decision gave birth to the Metallica Order in New Zealand, the New Zealander’s equivalent of a John Doe Order. It has to be added that the nature of the order passed by the High Court in this case is very detailed and can be used as precedent, even for the requisite format, by all courts that pass similar orders.[5]

John Doe Orders in India

The decision in Tej Television Ltd. v Rajan Mandal,[6] will have to find first mention since these kind of orders against unidentified defendants hit the shores of the Indian legal landscape through this decision. Here, the plaintiff owned the Ten Sports television channel and had procured the broadcasting rights to several important sporting events including the 2002 Football World Cup matches. Being a paid channel, the cable operators had to part with royalty to the plaintiff for airing the programs broadcasted on this channel. To the plaintiff’s consternation, many local cable operators were airing these sporting events without taking licenses from the plaintiff / its authorised marketing agency. This resulted in the channel approaching the Delhi High Court and seeking, for the first time, a John Doe order against unidentified defendants. The channel had some evidence of unauthorised broadcasting of the initial matches by certain cable operators and apprehended that this conduct by more operators would not only result in revenue loss but also cause the 1377 cable operators, who had taken licenses from the plaintiff, to re-think the very necessity of doing so when they could air the sporting events in an unauthorised manner without any fear of liability. Another concern was the ease with which those who carried on the practise of unauthorised transmission could destroy any evidence of such conduct. The prayer sought by the plaintiff was an ex parte order against six named cable operators and “John Doe” orders against a further fourteen unnamed persons who, the plaintiff claimed, were wrongfully transmitting the Ten Sports channel. The order against unidentified defendants was sought to be justified on two broad grounds: (i) Section 151 of the Code of Civil Procedure, 1908, which gives courts the inherent power to evolve a fair and reasonable procedure for meeting exigent situations, and (ii) international practise in the form of John Doe orders issued by courts in various countries including the United States, United Kingdom, Canada and Australia.

The High Court refused to grant a John Doe order on the facts and circumstances of this case but also clarified that in an appropriate situation, courts could well award a John Doe order even in India. The court granted relief to the plaintiff by appointing a Court Commissioner who was authorised to visit the premises of various cable operators, and search, make an inventory, and take into custody all equipment / wires used for the broadcast of the plaintiff’s channel. The court empowered the Commissioner to take the assistance of technical experts and police officials in carrying out this order, and directed him to prepare a report after gathering evidence of cable piracy in the form of video recordings and photographs. The court also considered itself at liberty, on the basis of this report, to issue notices to all alleged violators, and after the hearing, to initiate civil and criminal action against them in accordance with law. The Court Commissioner was also empowered to issue warnings to such prospective violators though there was no mention of any contempt proceedings against the violators for ignoring the warning given by the Commissioner. Upon close examination, this order was nothing but a mild modification of the power vested in the court under Order XXVI, Rule 9 of the CPC.

Final and Interim John Doe Orders

The Delhi High Court has, in some subsequent decisions, considered the possibility of a John Doe order without expressly granting the same. In Ardath Tobacco Co. Ltd. v Munna Bhai & Ors.,[7] the plaintiff was the proprietor of a tobacco brand, “State Express 555”. Aggrieved by the conduct of the defendants who were distributing "Peacock" cigarettes in packaging and trade dress that bore deceptive similarity to that of the plaintiff’s brand, the plaintiff sought a John Doe order against all such distributors including unidentified ones. From the report, it appears that an ex parte order appointing Court Commissioners, similar to the order in Tej Television, was awarded by the High Court initially. In the final order, the court was constrained to confine the order of permanent injunction to the named defendants since the plaintiff had failed to identify any John Does and add them to the array of parties for the purpose of securing injunctive relief. The same was again found to be the case in 3M Company v A. Patel,[8] where the final order of injunction was granted only against the 2 identified defendants.

Thus, in these cases, a distinction seems to be made between the interim orders that may be passed against the unidentified defendants, and the final relief granted by the court. The principle that emerges from these decisions is that orders against unidentified defendants can only go to the extent of collecting evidence against them through search of their premises by the Court Commissioner, or with the assistance of the Station House Officer (S.H.O) as was directed in ESPN Software India Private Ltd. v Tudu Enterprises.[9] No final relief can be granted against any person who is unnamed in the array of parties as a defendant. The purpose of an Ashok Kumar order (as such orders are branded in India) is only to bring such persons on record.

John Doe Orders – Procedure and Guidelines

Recently, the Delhi High Court has enunciated, with sufficient clarity, the procedure to be followed while granting interim orders against unidentified defendants. In Luxottica S.R.L v Mr. Munny & Ors.,[10] the plaintiff which owned the popular trade mark "Ray Ban" in respect of sunglasses, sought John Doe orders from the Delhi High Court with the aim of tacking rampant piracy and counterfeiting of its products. Surprisingly, there was no exigent necessity cited by the plaintiff for justifying the grant of such an order, unlike in Billy Joel, Metallica, Brockum, or Tej Television. Piracy had been going on in the past, and it continues to occur – that was broadly the case of the plaintiff here. Despite this, the Delhi High Court went on to issue an order of ex parte injunction restraining third parties from carrying on such counterfeiting activities. Extending the powers of the Court Commissioner, the High Court held:

The Commissioners are also authorized to visit any other premises/warehouse/store where they may have reason to suspect and/or information be received that counterfeit optical sunglasses bearing the Plaintiffs trademark RAY BAN are being stored/sold/offered for sale and thereafter. In respect of such Ashok Kumar Defendants, upon the seizure of any infringing/counterfeit products, the Commissioners shall forthwith serve such Ashok Kumar Defendants with a complete set of papers and a copy of the notice and summons. The Commissioners will seize and make an inventory of all the infringing goods including packaging material, cartons, stationery, literature, dyes, blocks, moulds, etc. bearing the impugned RAY BAN trademark and sign all books of accounts including ledgers, cash books, purchase and sale records etc., and return the seized goods on suprdari to such Ashok Kumar defendants and obtain undertakings from each of them that they will produce the seized goods as and when directed by the court.

The object behind this order seems to be the prevention of any destruction of the evidence. In consonance with this object, the High Court has even made provision for return of the seized material to the unnamed defendants during the pendency of this order, and given them the option of approaching the court and vacating the ex parte order of injunction issued against them. This Luxottica decision can be considered as India’s equivalent of the Metallica Order, as it gives a clear roadmap for courts that pass such orders in the future. Considering that John Doe orders have attracted criticism on the ground that they make serious inroads into the rights of the defendant, these safeguards specifically articulated by the Court do go some way in addressing these concerns and mitigating the hardship caused to the defendants.

Website Blocking Orders

An extension of the John Doe orders discussed above is the recent spate of decisions from various High Courts blocking access to certain websites that upload, or permit the uploading of, copyrighted content such as sound recordings and cinematograph films, without authorisation from the copyright owner. The relief granted is either movie-specific but against unknown persons, or website-specific.

To give a sample of the movie-specific relief: For the foregoing reasons, defendants and other unnamed and undisclosed persons, are restrained from copying, recording or allowing camcording or 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 ‘DON2’ in any manner without a proper license from the plaintiff or in any other manner which would violate/infringe the plaintiff?s copyright in the said cinematograph film ‘DON2’ through different mediums like CD, DVD, Blue- ray disc, VCD, Cable TV, DTH, Internet services, MMS, Pen drives, Hard drives, Tapes, CAS or in any other like manner.[11]

Similarly, in R.K.Productions Pvt. Ltd. v B.S.N.L. & Ors.[12]an order of the above nature has been passed in respect of the Tamil film "3". There are a few more that have already been passed by the Delhi and Madras High Courts, indicating that these kind of protective orders under Or.XXXIX R.1 and 2, read with Section 151 of the Code of Civil Procedure, 1908 are well going to be the order of the day, especially when it comes to online piracy of copyrighted content.

The Indian Music Industry and a sound recording label have also approached the Calcutta High Court and obtained an order of the second kind, ie. a direction to the known defendants who are Internet Service Providers (ISPs), to block access to various websites listed in the Schedule to the Plaint, which are used exclusively for providing unauthorised access to copyrighted sound and video recordings. The order[13] is extracted below:

This is an application by the plaintiffs in aid of a suit complaining of copyright infringement. The plaintiff no. 1 and the members of the plaintiff no. 2 are the copyright owners of Hindi film songs. It is argued that the website mentioned in the prayers are posting and playing the songs, without any copyright or licence. This application is made ex parte on the apprehension that if notice of this application was served on the website they would shift their service to a different website.

In those circumstances, I pass an order of injunction in terms of prayer (a) of the Notice of Motion till further orders. I direct the respondent ISPs to indicate to the plaintiff the address of the website owner/operator referred to in the prayers.

I also make it clear that the above order of blocking should be confined to the above website only and should not otherwise interfere with internet service.

The last part of the last sentence extracted above has been emphasised as this is precisely what is happening as a consequence of the dual kind of orders discussed in this section. Though the first kind of order is, on its own terms, confined to only the film that is the subject matter of the suit, ISPs have used it to block access to entire websites in contravention of all recognised principles of network neutrality. Even in the case of the second kind of orders, there is absolutely no transparency as to how ISPs have been interpreting the order, and what websites are being targeted by them under the garb of such an order.[14] It is a well-established maxim that courts and judicial orders cannot be used as a vehicle for oppression, harassment, or to perpetrate abuse of power. This is precisely what has been witnessed since the last year in relation to the website blocking, and film-access blocking, orders passed by different courts. It is felt that legislative intervention is absolutely necessary in this field without any further delay to lay down parameters for exercise of judicial power under Section 151 of the Code of Civil Procedure, which power can otherwise be construed in any manner by any Court with little checks and balances on the possibility of such exercise of power.[15]

Conceptual Differences between John Doe and Website Blocking Orders

The most crucial point of distinction between these two types of orders is that while John Doe orders speak to the primary infringer, website blocking orders impose onerous responsibility on the ISP. John Doe orders as used in India thus far have served the purpose of a blanket search and seize mandate to gather evidence of direct infringement. As seen above, the final relief in the suit is granted only against those John Does who are subsequently identified and arrayed as parties to the main suit.[16] Website blocking orders, on the other hand, amount to granting the final relief at the interim stage itself, as access is blocked to web links hosted by unknown persons by taking recourse to the ISP.

Moreover, there is a vital difference between holding primary infringers liable and making mere conduits, such as ISPs. parties to a civil suit. The maxim ubi jus ibi remedium is clearly applicable in the former case, because the remedy is fashioned to bring on board the primary infringer and then afford him an opportunity of hearing before confirming the ex parte order against him. In the case of website blocking orders, the court straightaway directs the ISP to block access to the content, and the third party infringer is really a non-entity in the whole process as the attempt is not to bring him on board or to gather evidence. Hence, it is impermissible for an Indian court to grant an ex parte order directing the denial of access to a website or webpage by taking umbrage under its power to grant a John Doe order. However, Indian courts have done so, and the recent decision of the Madras High Court in R.K.Productions v. B.S.N.L.[17] has also affirmed the legality of such action. The court has judicially created a responsibility on ISPs that is akin to the take-down requirements thrust upon file-sharing websites, and which kicks in upon notice of infringing content given to the ISP by the copyright owner. This decision deserves serious critical evaluation, and an understanding of the different types of liability for copyright infringement is material for the same.

[2]. 499 F.Supp. 791 (1980). Hereinafter referred to as Billy Joel.

[3]. 551 F.Supp. 1054 (D.C.Wis.,1982). Hereinafter referred to as Brockum.

[4]. [1994] F.S.R. 497. Hereinafter referred to as Metallica. The plaintiff here was the exclusive authorised merchandiser for Metallica and Sir Paul McCartney, and the piracy alleged was similar to the one in Billy Joel’s case. Here too, the order was sought in respect of a specific concert to be held in Auckland within the next few days. The plaintiff innovatively sought an order by virtue of which certain solicitors named in the plaintiff’s application would, due to their status as officers of the court, be authorised to accost bootleggers at the concert venues and require them to provide their current addresses and evidence of identity, and these bootleggers would have to surrender up to these named solicitors all merchandise including T-shirts, head-bands, badges, or programmes in their possession or control.

[5]. See Bloomsbury Publishing Group Limited v News Group Newspapers Ltd. [2003] 3 All E.R. 736.

[6]. [2003] F.S.R. 22. Hereinafter referred to as Tej Television.

[7]. 2009 (39) PTC 208 (Del).

[8]. Order dated 15.01.2009 in C.S. (O.S.) 1771 / 2006, reported as MANU/DE/1991/2009.

[9]. MANU/DE/1061/2011.

[10]. Order dated 25.09.2009 in C.S. (O.S.) 1846 / 2009, available at http://courtnic.nic.in/dhcorder/dhcqrydisp_o.asp?pn=173895&yr=2009 (last accessed on 24.03.2013)

[11]. Order of the Delhi High Court dated 19.12.2011 in I.A. No.20510/2011 in C.S.(O.S.) No. 3207/2011 (Reliance Big Entertainment Pvt Ltd v Multivision Network & Ors.), available at http://delhihighcourt.nic.in/dhcqrydisp_o.asp?pn=269404&yr=2011 (last accessed on 24.03.2013)

[12]. Order of the Madras High Court dated 29.03.2012 in O.A.No. 230 of 2012 in C.S.No. 208 of 2012, the link to which is provided at http://spicyipindia.blogspot.in/search?q=madras+high+court+first+john+doe (last accessed on 24.03.2013)

[13]. Order of the Calcutta High Court dated 27.01.2012 in GA No. 187 of 2012 in CS No. 23 of 2012 (Sagarika Music Pvt. Ltd. & Ors. v Dishnet Wireless Ltd. & Ors.), available at http://www.indiankanoon.org/doc/147345981/ (last accessed on 24.03.2013)

[14]. The prayers sought in some of these civil suits are in complete contravention of the salutary principle in Or.VII, R.7 of the Code of Civil Procedure, 1908, that “every plaint shall state specifically the relief which the plaintiff claims”.

[15]. The website blocking order dated 29.01.2013 passed by a District Court in Dabra near Gwalior in respect of websites that posted content related to the Indian Institute of Planning and Management, a Business School, and the subsequent unblocking order by the same Court dated 28.02.2013 have again brought back the spotlight on the legality of such orders passed by the judiciary. See http://economictimes.indiatimes.com/tech/internet/unblock-urls-about-iipm-court/articleshow/18743461.cms (last accessed on 24.03.2013).

[16]. Ardath Tobacco Co. Ltd. v Munna Bhai & Ors., 2009 (39) PTC 208 (Del); 3M Company v A. Patel, MANU/DE/1991/2009.

[17]. (2012) 5 LW 626. Hereinafter referred to as R.K.Productions.

For more details visit https://cis-india.org/a2k/blogs/john-doe-orders-isp-blocking-websites-copyright-1

Open Letter to the Vatican: Request for Holy See to Comment on IPR

samantha — 2014-01-31T07:14:07Z

Due to the Holy See’s demonstrated pro-access position to medicines and published materials for persons with disabilities, the Centre for Internet and Society (CIS) requested for His Excellency, Archbishop Silvano M. Tomasi, to also consider copyrights, patents or IPR more generally, as the Holy See’s Permanent Observer at WIPO. We strongly encourage other organizations and civil society groups to modify this letter, as needed, and to contact the Holy See Mission to the United Nations (and WIPO) in Geneva in order to help us prompt His Excellency to contribute to the international dialogue on IPR.

You may view the original letter sent by CIS here.

His Excellency, Archbishop Silvano M. Tomasi, Apostolic Nuncio
Holy See Mission to the United Nations in Geneva
P.O. Box 28
1292 Chambésy
Geneva, Switzerland
mission.holy-see@ties.itu.int
+41 22 758 98 20

Friday, January 24, 2014

Your Excellency Archbishop Silvano M. Tomasi,

Subject: Call for the Holy See’s comment on Intellectual Property Rights

On behalf of the Centre for Internet and Society (CIS), Bangalore, India, I, Samantha Cassar, write to Your Excellency’s opinion on copyrights, patents and intellectual property rights.

We are a not-for-profit, non-governmental research organization that works on addressing policy issues related to access to knowledge and intellectual property law reform (http://cis-india.org/a2k), and accessibility for persons with disabilities (http://cis-india.org/accessibility) among other areas related to internet and information and communication technologies.

CIS is an accredited organization with the World Intellectual Property Organisation (WIPO) and a regular participant at the meetings of the Standing Committee on Copyrights and Related Rights (SCCR), the Standing Committee on the Law of Patents (SCP), as well as the Committee on Development and Intellectual Property.

At the outset, we commend Your Excellency for signing the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled. As one of the contributors to this treaty, we appreciate the concern of the Holy See for those who are marginalised within our information society by their disabilities.

As Pranesh Prakash, Policy Director from CIS noted at Marrakesh during the adoption of this treaty, “When copyright doesn't serve public welfare, states must intervene, and the law must change to promote human rights, the freedom of expression and to receive and impart information, and to protect authors and consumers.” We are happy to see this being done through a treaty as such.

Also said by Your Excellency, within the Holy See’s statement at the 9th Ministerial Conference of the World Trade Organization (WTO), “Among the most damaging concessions developing countries make in regional and bilateral agreements are those enhancing the monopolies on life-saving medicines, which reduce access and affordability and those that provide excessive legal rights to foreign investors, limiting the policy space for nations to promote sustainable and inclusive development.”

Given the Holy See’s demonstrated standpoint on the accessing of medicines and published works, we at the Centre for Internet and Society would like to request Your Excellency to also consider copyrights, patents or more generally, intellectual property rights (IPR), as Permanent Observer of the Holy See to the United Nations and Other International Organizations in Geneva.

On behalf of CIS, I am honoured to be writing to Your Excellency and for this request to be considered. Due to the ability of copyright and other forms of IPR to obstruct the access of one’s own human rights and even the sustainable development of one’s country, we feel this area must be crucially considered within an international dialogue—not only from a place of political strategy but also from principles of mercy and compassion.

With meetings approaching for both WIPO’s Standing Committee on the Law of Patents (January 27-31, 2014) and WIPO’s Committee on Development and Intellectual Property (May 19-23, 2014), we are very excited at the possibility of the Holy See enriching this discussion, and hope for such a contribution to take place when the international community is listening—at these meetings, or in any other form.

With Every Best Wish,
Sincerely Yours,

Samantha Cassar

Programme Associate
The Centre for Internet & Society

For more details visit https://cis-india.org/a2k/blogs/open-letter-to-the-vatican-request-for-holy-see-to-comment-on-ipr

The Game of IPR: Insights from the 6th Global Intellectual Property Convention in Hyderabad

samantha — 2014-01-31T09:56:10Z

IP practitioners and IP creators were among the 1700 participants to gather at the Hyderabad International Convention Centre earlier this month. Here, CIS had the opportunity of listening in on perspectives around the “Optimization of economic value of innovation & IPR in the global market” while attending numerous talks and sessions that were held over the course of the convention’s three days.

One of the event's speakers, Mr. Narendra Sabharwal, IPR-Chair of FICCI, speaks of the immense value of IPR, while serving as protection as well as collateral for investors. (Photo credit: GIPC 2014)

This year’s Global Intellectual Property Convention (GIPC) was held in Hyderabad January 16-18, 2014 by ITAG Business Solutions Ltd. in association with the Institute of International Trade (iitrade). As the 6th of its kind, the event was held in hopeful contribution “towards society with the active support and cooperation of the IP fraternity,” says ITAG Founder and Director, Dr. D. R. Agarwal, while offering a “good opportunity for learning and business networking through one to one interaction in a pre-arranged manner under a conducive environment.”

The theme at bay had been “Optimizing the economic value of innovation & IPR in global market.” In respect of this central focus, common themes across panel discussions and workshops included IP management, monetisation, application drafting, and litigation, with particular emphasis on India’s ‘Pharma’ industry. Over 100 speakers and panelists shared their personal knowledge from experience in the industry, and largely consisted of representatives from law firms, IP consultancies, pharmaceutical companies, and business organisations; all of which from India, Europe and the USA. As an attendee representing the Centre for Internet & Society (CIS), a research institute that works to address issues related to intellectual property (IP) reform, I had the privilege of listening to such perspectives on intellectual property from an alternative outlook.

On the other hand, if exploiting too much by “abusing one’s monopoly, you are [setting] certain conditions, which are neither germane nor connected to the patent, and more than what is statutory permissible.” Kumaran stresses the necessity for the intellectual property right (IPR) holder to comply to the rights given by statutory law.

The name of the game is the quality of drafting. It is the first and last chance." Vaidya D.P.,

Lakshmi Kumaran & Sridharan

Mr. Narendra Sabharwal, Panellist and IPR-Chair for the Federation of Indian Chambers of Commerce (FICCI), sought to demonstrate the immense value of innovation and IPR in technology, arts and culture globally, in explaining that a large portion of the EU’s GDP (39%), and employment (26%) are derived from IP-intensive industries (See study by European Patent Office here). Also argued was that enterprises and institutions can increase value through licensing of products and services, while also serving as protection, and which can then become “excellent collateral for investors,” he says. Among other points made, Sabharwal mentioned the need for more incubators in India. Currently, India acquires 200 new incubators each year compared to China’s 8000 new incubators annually. Opening more incubators will encourage innovation, he argues, leading to more marketable products and solutions.

Mr. William H. Manning, Partner of Robins, Kaplan, Miller & Ciresi L.L.P (USA), took on the role of the story teller while sharing particularly interesting cases of previous clients. Manning had explained the necessity to ask one question over and over throughout the entire IPR application process; that question being: “What difference does the invention make?”

In doing so, Manning was even able to take what would have been an ‘incremental’ patent—which is just distinct enough from prior art to get by—and turn it into a ‘foundational’ patent—generally adopted by the industry for 10-20 years before moving to a different technology. The better of these two types, however, is the ‘pioneering’ patent, an inventive leap in itself. This client success story definitely affirmed Speaker and Director of Lakshmi Kumaran & Sridharan, Vaidya D. P., when he said that “the name of the game is the quality of drafting. It is the first and last chance.” Manning had also claimed that 99.9% of patent in India are said to be incremental patents, with none being pioneering—at least not from the patent applications he’s seen in his 34 years of experience, anyway.

Also a rule of this game is the “Take now—pay later” rule, according to Manning, in which enterprises may “ignore the problem for now and move ahead with the product. If somebody sues you for patent litigation…. Take now—pay later.” Here, he makes reference to the judgements enterprises may make when misusing or infringing upon an IPR, while assessing the worth of doing so with the risks that may lie ahead. Often, an enterprise may find that it is more worthwhile to misuse or infringe and reap the benefits in the “now” while knowing there may be a chance they will have to “pay later.”

Throughout the convention, what I expected to be the elephant in the auditorium was surprisingly addressed quite often. Best said by Panellist, Mr. Mohan Dewan, “IPR only becomes an asset when it is misused or infringed upon.” Principal to R K Dewan & Co., Dewan compares IP rights with car insurance, which can only be cashed in when the car is stolen.

Applying for an IPR is a game in itself, that requires much knowledge of how it is played. Grab those power-ups or get eaten.	He then posed the question “how can we increase the economic value of an asset?”—presumingly so that one can capitalize when opportunity comes knocking—and responded to it in recommending the following measures: 1) ensuring one’s IPR is as strong as possible by drafting it according to national standards, 2) optimal protection—it is easier to register more than one at once! 3) diligence in auditing and licensing, and 4) staying alert and questioning what people are doing around you. These are only a few excerpts of the event’s many talks and panel discussions, yet these insights alone help to reveal the nature of the system where intellectual property rights reign. This is surely a system to be familiar with if it is within one’s interest to receive IPR for protection, yet I find it difficult to stop at the word “protection.” When you must learn how to play the game to ensure that you stay in it, I would say that IPR can extend well beyond protection, to be better off referred to as strategy. A strategy that enables you to reach a higher level and protects you from your opponents’ wrath. The higher the level, the more power-ups in reach and the higher you go. All the while undermining their chances of climbing up to where you are, and knocking them to even lower levels when possible. Lucky for you the majority of players are still stuck at level 1, but the nasty ones may be right behind you.

Applying for an IPR is a game in itself, that requires much knowledge of how it is played. Grab those power-ups or get eaten.

He then posed the question “how can we increase the economic value of an asset?”—presumingly so that one can capitalize when opportunity comes knocking—and responded to it in recommending the following measures: 1) ensuring one’s IPR is as strong as possible by drafting it according to national standards, 2) optimal protection—it is easier to register more than one at once! 3) diligence in auditing and licensing, and 4) staying alert and questioning what people are doing around you.

These are only a few excerpts of the event’s many talks and panel discussions, yet these insights alone help to reveal the nature of the system where intellectual property rights reign. This is surely a system to be familiar with if it is within one’s interest to receive IPR for protection, yet I find it difficult to stop at the word “protection.” When you must learn how to play the game to ensure that you stay in it, I would say that IPR can extend well beyond protection, to be better off referred to as strategy.

A strategy that enables you to reach a higher level and protects you from your opponents’ wrath. The higher the level, the more power-ups in reach and the higher you go. All the while undermining their chances of climbing up to where you are, and knocking them to even lower levels when possible. Lucky for you the majority of players are still stuck at level 1, but the nasty ones may be right behind you.

For more details visit https://cis-india.org/a2k/blogs/the-game-of-ipr-insights-from-the-6th-global-intellectual-property-convention-in-hyderabad

Can Judges Order ISPs to Block Websites for Copyright Infringement? (Part 2)

ananth — 2014-03-06T16:48:18Z

In a three-part study, Ananth Padmanabhan examines the "John Doe" orders that courts have passed against ISPs, which entertainment companies have used to block dozens, if not hundreds, of websites. In this, the second part, he looks at the law laid down by the U.S. Supreme Court and the Delhi High Court on secondary and contributory copyright infringement, and finds that those wouldn't allow Indian courts to grant "John Doe" orders against ISPs.

In the second part of his study, Ananth Padmanabhan proceeds to examine applying a general theory of secondary or contributory copyright infringement against ISPs. He traces the basis for holding a third party liable as a contributory by closely examining the decisions of the U.S. Supreme Court in Sony Corp. v Universal City Studios[1] and MGM Studios, Inc. v Grokster, Ltd.[2] and concludes that this basis does not hold good in the case of a mere conduit intermediary such as an ISP.

[1]. 464 U.S. 417 (1984). Hereinafter referred to as Betamax.

[2]. 545 U.S. 913 (2005). Hereinafter referred to as Grokster.

Primary and Secondary Infringement

Liability for copyright infringement can either be primary or secondary in character. In the case of ISPs, liability as primary infringers does not arise at all, and it is in their capacity as conduit pipes facilitating the transmission of information that they could be held secondarily liable. Even in such cases, the contention of copyright owners is that once the ISP is notified of infringing content, it has the primary responsibility of preventing access to such content. This contention is essentially rooted in a theory of secondary infringement based on knowledge and awareness, and the means to prevent further infringement.

The controversy around a suitable model of secondary infringement is reflected in two judicial pronouncements – separated by a gap of more than two decades – delivered by the U.S. Supreme Court. In Sony Corp. v Universal City Studios,[3] the US Supreme Court held that the manufacturers of home video recording devices known in the market as Betamax would not be liable to copyright owners for secondary infringement since the technology was capable of substantially non-infringing and legitimate purposes. The U.S. Supreme Court even observed that these time-shifting devices would actually enhance television viewership and hence find favour with majority of the copyright holders too. The majority did concede that in an appropriate situation, liability for secondary infringement of copyright could well arise. In the words of the Court, “vicarious liability is imposed in virtually all areas of the law, and the concept of contributory infringement is merely a species of the broader problem of identifying the circumstances in which it is just to hold one individual accountable for the actions of another”. However, if vicarious liability had to be imposed on the manufactures of the time-shifting devices, it had to rest on the fact that they sold equipment with constructive knowledge of the fact that their customers may use that equipment to make unauthorized copies of copyrighted material. In the view of the Court, there was no precedent in the law of copyright for the imposition of vicarious liability merely on the showing of such fact.

Notes of dissent were struck by Justice Blackmun, who wrote an opinion on behalf of himself and three other judges. The learned Judge noted that there was no private use exemption in favour of making of copies of a copyrighted work and hence, unauthorised time-shifting would amount to copyright infringement. He also concluded that there was no fair use in such activity that would exempt it from the purview of infringement. The dissent held the manufacturer liable as a contributory infringer and reasoned that the test for contributory infringement would only be whether the contributory infringer had reason to know or believe that infringement would take place and not whether he actually knew of the same. Off-the-air recording was not only a foreseeable use for the Betamax, but also its intended use, for which Sony would be liable for copyright infringement.

This dissent has considerably influenced the seemingly contrarian position taken by the majority in the subsequent decision, MGM Studios, Inc. v Grokster, Ltd.[4] This case called into question the liability of websites that facilitated peer-to-peer (P2P) file-sharing. Re-formulating the test for copyright infringement, the US Supreme Court held that ‘one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties’. In re-drawing the boundaries of contributory infringement, the Court observed that contributory infringement is committed by any person who intentionally induces or encourages direct infringement, and vicarious infringement is committed by those who profit from direct infringement while declining to exercise their right to limit or stop it. When an article of commerce was good for nothing else but infringement, there was no legitimate public interest in its unlicensed availability and there would be no injustice in presuming or imputing intent to infringe in such cases. This doctrine would at the same time absolve the equivocal conduct of selling an item with substantial lawful as well as unlawful uses and would limit the liability to instances of more acute fault than the mere understanding that some of the products shall be misused, thus ensuring that innovation and commerce are not unreasonably hindered.

The Court distinguished the case at hand from Betamax, and noted that there was evidence here of active steps taken by the respondents to encourage direct copyright infringement, such as advertising an infringing use or instructing how to engage in an infringing use. This evidence revealed an affirmative intent that the product be used to infringe, and an active encouragement of infringement. Without reversing the decision in Betamax, but holding that it was misinterpreted by the lower court, the Court observed that Betamax was not an authority for the proposition that whenever a product was capable of substantial lawful use, the producer could never be held liable as a contributory for the use of such product for infringing activity by third parties. In the view of the Court, Betamax did not displace other theories of secondary liability. This other theory of secondary liability applicable to the case at hand was held to be the inducement rule, as per which any person who distributed a device with the object of promoting its use to infringe copyright, as evidenced by clear expression or other affirmative steps taken to foster infringement, would be liable for the resulting acts of infringement by third parties. However, the Court clarified that mere knowledge of infringing potential or of actual infringing uses would not be enough under this rule to subject a distributor to liability. Similarly, ordinary acts incident to product distribution, such as offering customers technical support or product updates, support liability etc. would not by themselves attract the operation of this rule. The inducement rule, instead, premised liability on purposeful, culpable expression and conduct, and thus did nothing to compromise legitimate commerce or discourage innovation having a lawful promise.

These seemingly divergent views on secondary infringement expressed by the U.S. Supreme Court are of significant relevance for India, due to the peculiar language used in the Indian Copyright Act, 1957.[4]

Section 51 of the Act, which defines infringement, bifurcates the two types of infringement – ie. primary and secondary infringement – without indicating so in as many words. While Section 51(a)(i) speaks to primary infringers, 51(a)(ii) and 51(b) renders certain conduct to be secondary infringement. Even here, there is an important distinction between 51(a)(ii) and 51(b). The former exempts the alleged infringer from liability if he could establish that he was not aware and had no reasonable ground for believing that the communication to the public, facilitated through the use of his “place”, would amount to copyright infringement. The latter on the other hand permits no such exception. Thus, any person, who makes for sale or hire, or by way of trade displays or offers for sale or hire, or distributes for the purpose of trade, or publicly exhibits by way of trade, or imports into India, any infringing copies of a work, shall be liable for infringement, without any specific mens rea required to attract such liability. It is in the context of the former provision, ie. 51(a)(ii) that the liability of certain file-sharing websites for copyright infringement has arisen.[5]

Mere Conduit ISPs – Secondary Infringement Absent

In MySpace, the Delhi High Court examined the liability for secondary infringement on the part of a website that provides a platform for file-sharing. While holding the website liable, the Single Judge considered material certain facts such as the revenue model of the defendant, which depended largely on advertisements displayed on the webpages, and automatically generated advertisements that would come up for a few seconds before the infringing video clips started playing. Shockingly, the Court even considered relevant the fact that the defendant did provide for safeguards such as hash block filters, take down stay down functionality, and rights management tools operational through fingerprinting technology, to prevent or curb infringing activities being carried on in their website. This, in the view of the Court, made it evident that the defendant had a reasonable apprehension or belief that the acts which were being carried on in the website could infringe someone else’s copyright including that of the plaintiff. The logic employed by the Court to attribute liability for secondary infringement on file-sharing websites is befuddling and reveals complete disregard for the degree of regulatory authority available on the internet even where the space, i.e., the website, is supposedly “under the control” of a person. However, a critical examination of this decision is not relevant in understanding the liability of mere conduit ISPs. This is for the reason that none of the factual considerations relied on by the Single Judge to justify imposition of liability on a file-sharing website under Section 51(a)(ii) arise when the defendant is an ISP that only provides the path for content-neutral transmission of data.

This was completely ignored by the Madras High Court in R.K.Productions v. B.S.N.L.,[6] where the producers of the Tamil film “3”, which enjoyed considerable pre-release buzz due to its song “Kolaveri Di”, sought an omnibus order of injunction against all websites that host torrents or links facilitating access to, or download of, this film. Though this was worded as a John Doe plaint by branding the infringers as unknown administrators of different torrent sites and so on, the real idea was to look to the resources and wherewithal of the known defendants, ie. the ISPs, to block access to the content hosted by the unknown defendants.

This prompted the ISPs to file applications under Or. VII, Rule 11 of the Civil Procedure Code, seeking rejection of the plaint on the ground that the suit against them was barred by law. The Single Judge of the Madras High Court dismissed these applications for rejection of the plaint, after accepting the contention that the ISPs are necessary parties to the suit as the act of piracy occurs through the channel or network provided by them. The High Court heavily, and incorrectly, relied on MySpace without appreciating the distinction between a mere conduit ISP and a file-sharing website such as MySpace or YouTube, as regards their respective roles and responsibilities, the differing degrees of regulatory control over content enjoyed by them, and most importantly, the recognition and formalisation of these distinctions in the Copyright Act, 1957, vide the Copyright (Amendment) Act, 2012.

[3]. 464 U.S. 417 (1984). Hereinafter referred to as Betamax.

[4]. 545 U.S. 913 (2005). Hereinafter referred to as Grokster.

[5]. Hereinafter the Act.

[6]. Super Cassette Industries Ltd. v MySpace Inc., MIPR 2011 (2) 303 (hereinafter referred to as MySpace). This decision of the Delhi High Court has been rightly criticised. See http://cis-india.org/a2k/blog/super-cassettes-v-my-space (last accessed on 24.03.2013).

For more details visit https://cis-india.org/a2k/blogs/john-doe-orders-isp-blocking-websites-copyright-2

Can Judges Order ISPs to Block Websites for Copyright Infringement? (Part 3)

ananth — 2014-02-14T05:13:36Z

In a three-part study, Ananth Padmanabhan examines the "John Doe" orders that courts have passed against ISPs, which entertainment companies have used to block dozens, if not hundreds, of websites. In this, the third and concluding part, he looks at the Indian law in the Copyright Act and the Information Technology Act, and concludes that both those laws restrain courts and private companies from ordering an ISP to block a website for copyright infringement.

In the third part of his study, Ananth Padmanabhan looks into the fair use provisions recently introduced in respect of mere conduit intermediaries by the Copyright (Amendment) Act, 2012, and concludes that there is no scope for any general, or specific, access blocking orders at the behest of the plaintiff in a civil suit, in India. He also argues that the Information Technology Act, 2000 read with the Information Technology (Intermediaries Guidelines) Rules, 2011 do not in any manner permit the Government to override the provisions of the Copyright Act, 1957 (as amended) while facilitating the denial of access to websites on grounds of copyright infringement, because the Copyright Act, 1957, is a complete code by itself.

Fair Use Provisions Introduced by the Copyright (Amendment) Act, 2012

In 2010, the controversial Copyright (Amendment) Bill came up for deliberation before the Parliamentary Standing Committee on Human Resource Development headed by Mr. Oscar Fernandes. While a major part of the discussion on this amendment revolved around the altered royalty structure and rights allocation between music composers and lyricists on the one hand and film producers on the other, it can be safely stated that this is the most significant amendment to the Copyright Act, 1957 for more than this one reason. The amendment seeks to reform the Copyright Board, bring in a scheme of statutory licenses, expand the scope of performers’ rights and introduce anti-circumvention measures to check copyright piracy. As part of its ambitious objective, the amendment also attempts a new fair use model to protect intermediaries and file-sharing websites.

The Copyright (Amendment) Act, 2012, which gives expression to this fair use model through Sections 52(1)(b) and (c), reads thus:

52. Certain acts not to be infringement of copyright. - (1) The following acts shall not constitute an infringement of copyright, namely:

(a) to (ad) - *****

(b) the transient or incidental storage of a work or performance purely in the technical process of electronic transmission or communication to the public;

(c) transient or incidental storage of a work or performance for the purpose of providing electronic links, access or integration, where such links, access or integration has not been expressly prohibited by the right holder, unless the person responsible is aware or has reasonable grounds for believing that such storage is of an infringing copy:

Provided that if the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the work, complaining that such transient or incidental storage is an infringement, such person responsible for the storage shall refrain from facilitating such access for a period of twenty-one days or till he receives an order from the competent court refraining from facilitating access and in case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access;

From a plain reading, it is clear that two important exceptions are carved out: one, in respect of the technical process of electronic transmission and the other, in respect of providing electronic links, access or integration. The material distinction between these exceptions is the presence of a take-down proviso in respect of the latter kind of activity, ie. when providing electronic links, access or integration. This window of opportunity is not provided to the copyright owner when the third party is an ISP involved in the pure technical process of electronic transmission of data.

In R.K. Productions, the court was not informed of the introduction of these provisions vide the Copyright (Amendment) Act, 2012, despite the hearing happening on a date subsequent to the amendment coming into force. This probably influenced the outcome as well, since the court held that ISPs were liable to block access to infringing content, once the specific webpage was brought to the notice of the concerned ISP. Newly introduced Section 52(1)(b) however makes it abundantly clear that ISPs cannot, in any manner, be held liable when they are acting as mere conduit pipes for the transmission of information. This legal position is also materially different from jurisdictions such as the United Kingdom where, the ISPs though not liable for copyright infringement, are statutorily mandated to lend all possible assistance such as take-down or blocking of access upon notice of infringement being furnished to them. This dichotomy between liability for infringement on the one hand and a general duty to assist in the prevention of infringement on the other is explained clearly by the Chancery Division in Twentieth Century Fox Film Corporation v. British Telecommunications Plc.[1]

In Newzbin2, the Chancery Division took note of the safe harbour provisions created by the E-Commerce Directive,[2] particularly Articles 12 to 14 that dealt with acting as a “mere conduit”, caching and hosting respectively. The interesting feature with the “mere conduit” exception, which in all other respects is akin to the exception contained in Section 52(1)(b) of the Copyright Act, 1957, is the additional presence of Article 12(3). This provision clarifies that the “mere conduit” exception shall not stand in the way of a court or administrative authority requiring the service provider to terminate or prevent an infringement. Article 18 of this Directive also casts an obligation upon Member States to ensure that court actions available under national law permit the rapid adoption of measures, including interim measures, designed to terminate any alleged infringement and to prevent any further impairment of the interests involved. Similarly, the court looked into the Information Society Directive,[3]

Article 8(3) of which provides that “Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.” This Directive was transposed into the domestic law in UK by the Copyright and Related Rights Regulations 2003, SI 2003/2498, resulting in the insertion of Section 97A in the Copyright, Designs and Patents Act 1988. This provision empowers the court to grant an injunction against a service provider who has actual knowledge of another person using their service to infringe copyright, such as where the service provider is given sufficient notice of the infringement. Finally, the Chancery Division also took note of the Enforcement Directive,[4]

Article 11 of which provided that Member States shall ensure that copyright owners are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right. This entire legislative scheme compelled the court in Newzbin2 to conclude that an order of injunction could be granted against ISPs who are “mere conduits”, restraining them from providing access to websites that indulged in mass copyright infringement. The court reasoned that the language used in Section 97A did not require knowledge of any particular infringement but only a more general kind of knowledge about certain persons using the ISPs’ services to infringe copyright. Thus, it is seen that in the United Kingdom, though a “mere conduit” activity is not infringement at all, the concerned ISP can be directed by the court to block access to a website that hosts infringing content on the basis of the above legislative scheme. The enquiry should therefore be directed towards whether India has a similar scheme for copyright enforcement.

The Information Technology Act – An Inapplicable Scheme for Website Blocking

The Information Technology Act, 2000[5]read with certain recently framed guidelines provides for a duty that could be thrust upon even “mere conduit” ISPs to disable access to copyrighted works. This is due to the presence of Section 79(2)(c) of this Act, which makes it clear that an intermediary shall be exempt from liability only where the intermediary observes due diligence as well as complies with the other guidelines framed by the Central Government in this behalf. Moreover, Section 79(3) provides that the intermediary shall not be entitled to the benefit of the exemption in Section 79(1) in a situation where the intermediary, upon receiving actual knowledge that any information, data, or communication link residing in or connected to a computer resource controlled by the intermediary is being used to commit an unlawful act, fails to expeditiously remove or disable access to that material on that resource without vitiating the evidence in any manner. In pursuance of Section 79(2)(c), the Central Government has also framed the Information Technology (Intermediaries Guidelines) Rules, 2011, which came into effect on 11.04.2011. Rule 4 of these Rules, when read along with Rule 2(d), casts obligation on an intermediary on whose computer system, copyright infringing content has been stored, hosted or published, to disable such information within thirty six hours from when it is brought to actual knowledge of the existence of such content by any affected person.

One way of understanding and interpreting in harmonious fashion, the provisions of the IT Act and the Rules therein and the recent amendments to the Copyright Act, is to contend that the issue of infringement of copyright by “mere conduit” ISPs is governed by Section 52(1)(b), which completely absolves them of any liability, while that of enforcement of copyright through the medium of such ISPs is governed by the IT Act. This bifurcation suffers from the difficulty that Section 79 of the IT Act is not an enforcement provision. It is a provision meant to exempt intermediaries from certain kinds of liability, in the same way as Section 52 of the Copyright Act. This provision, read with Section 81, makes it clear that the IT Act does not speak to liability for copyright infringement. From this, it has to necessarily follow that all issues pertaining to liability for such infringement have to be decided by the provisions of the Copyright Act. Therefore, the scheme in the IT Act read with the Intermediaries Guidelines Rules cannot confer additional liability for copyright infringement on ISPs where the Copyright Act exempts them from liability. More to the point, the intermediary cannot be liable for copyright infringement in the event of non-compliance with Section 79(3) or Rule 4 of the Intermediaries Guidelines Rules read with Section 79(1)(c) of the IT Act. Rule 4 of the Intermediaries Guidelines Rules, 2011, to the extent that it renders intermediaries outside the protective ambit of Section 79(1) upon failure to disable access to copyrighted content, is of no relevance as “mere conduits” have already been exempted from liability under Section 52(1)(b). Moreover, since these provisions in the IT Act do not deal with enforcement measures such as injunction orders from the court to disable access to infringing content in particular or infringing websites in general, it would be wrong to contend that the scheme in India is similar to the one in the United Kingdom where the issue of infringement has been divorced from that of enforcement.

To conclude, Section 52(1)(b) is a blanket “mere conduit” exemption from liability for copyright infringement that stands uninfluenced by the presence of Section 79 of the IT Act or the Intermediaries Guidelines Rules. In the absence of a legislative scheme for enforcement in India akin to Section 97A of the UK Copyright, Designs and Patents Act 1988, Indian Courts cannot grant an injunction directing such “mere conduit” ISPs to block access to websites in general or infringing content in particular and any such action is not even maintainable in law post the insertion of Section 52(1)(b). The decision to the contrary in the R.K.Productions case is incorrect.

[1]. [2011] EWHC 1981 (Ch.). Hereinafter referred to as Newzbin2.

[2]. European Parliament and Council Directive 2000/31/EC on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (8 June 2000). This Directive was transposed into the domestic law in UK by the Electronic Commerce (EC Directive) Regulations 2002, SI 2002/2013.

[3]. European Parliament and Council Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society (22 May 2001).

[4]. European Parliament and Council Directive 2004/48/EC on the enforcement of intellectual property rights (29 April 2004). This Directive was transposed into the UK domestic law primarily by the Intellectual Property (Enforcement, etc.) Regulations 2006, SI 2006/1028.

[5]. Hereinafter referred to as the IT Act.

For more details visit https://cis-india.org/a2k/blogs/john-doe-orders-isp-blocking-websites-copyright-3

WIPO Standing Committee on Copyright and Related Rights (SCCR) 26th Session- Consolidated Notes (Part 2 of 3)

nehaa — 2014-03-20T04:52:53Z

From December 16 to 20, 2013, the Standing Committee on Copyright and Related Rights (SCCR) of the World Intellectual Property Organization (WIPO) met for the 26th session. This blog post (Part 2 of 3) summarizes Days 3 and 4 of the proceedings of the 26th SCCR, based on my notes of the session and WIPO's transcripts.

Many thanks to Varun Baliga for putting this together, and to Alexandra Bhattacharya of the Third World Network for her notes and inputs.

26th SCCR – Consolidated Notes

Day 3

The Chair commenced proceedings by noting the need to take stock of the work done over the course of the first two days of proceedings. He stated that we needed to see the points of agreement as well as sticking points that persisted in order to chart a path towards resolution. There was an urgent need for clarity.

The floor was opened to Delegations and Regional Groups. The document before the countries is the one on draft conclusions for the discussions surrounding the Broadcast Treaty.

Belarus starts by expressing its support for the document before it and is ready to engage with any proposals that nations might have on it. Poland wanted the wording changed to broadcasting an cablecasting organizations in the traditional sense, but expressed its support for the document otherwise. A few other delegations, such as the one from Trinidad and Tobago, also expressed unease at the terminology of ‘traditional broadcasting organizations” in the document and much preferred broadcasting and cablecasting organizations in the traditional sense. Notwithstanding these concerns, there was considerable support for the draft conclusions.

The EU wants its discussions on transmissions over the internet to also be included as a part of the draft conclusions.

Libraries and Archives

Trinidad and Tobago expressed its full support for the exceptions and limitations for libraries and archives. They were keen to “close this gap to strengthen the copyright system as well as the human and collective rights for the benefit of creators and users alike”. It stated that the progress made in this regard was entirely consistentwith the Millennium Development Goals and the Development Agenda of WIPO. The CEBS group also came out in support of this framework. Further, it added that it would benefit greatly from the sharing of national experiences in this matter. It was stated that the modern copyright system should have a licensing system that is supportive of libraries, archives and other every day research. CEBS was sceptical however of the need to enter into any sort of international treaty in this regard. The delegate from Bangladesh pointed out the acute need for this limitation and exception particularly from the perspective of a developing nation in dire need of free flow of information. In this context, the Indian delegate was invited to make comments. The EU put on record its opposition to any sort of binding international instrument in this regard, and they wished to see this desire reflected in the title of the document. Iran called for the commencement of text-based negotiation since it was fairly clear that there was a need for an international instrument in this matter. Colombia concluded by stating that access to knowledge should be the guiding principle for the exceptions and limitations. It was very important for the libraries to fulfil the public interest for there to be copyright protection to its activities. It stresses however the need to continue to provide incentive and legitimate copyright protection even within this framework.

Day 4

Discussions continued on the first topic of preservation as found in the SCCR/26/3 which focusses on exceptions and limitations enabling libraries and archives. For this session, the Chair outlined the issue up for comments as the right of reproduction and safeguarding copies.

Azerbaijan, speaking for the first time, stated that it took cognizance of the importance of exceptions and limitations and supported an international instrument on it. The purpose of limitations and exceptions should be to allow librarians and archives to preserve the documents. The documents protected should be used solely for research purposes and must be in accordance with fair practice. Australia clarified the role of preservation to be the continuing availability of physical and digital works already held in the collections of a library or archive for the benefit of present or past users. Critical to be very specific when talking about preservation in order to prevent the proliferation of rights. It stated that it was yet to be convinced of the need for an international instrument. Belarus noted that it supported the need for an international legislation. It supported the formulation of rules in this regard on the basis of the three step test, in order to maintain the balance of interests at play. It is imperative that strict rules of interpretation are employed while introducing this into domestic legislation in order to avoid ambiguous approaches that will lead to the abuse of the freedoms codified. The non-commercial and non-profit making nature of libraries and archives were emphasized. In explaining the merits of the three step test that would facilitate the entry of this international document into domestic law, Poland shared its national experiences in this regard with the group. Brazil suggested that the concern of proliferation of works voiced by many countries could be resolved by engaging in deliberations that result in clear definitions. It suggested that the intervention made by Canada be made into an annex as a subject that can discussed in the text in the future. Russia noted that the Berne Convention is the bedrock of international intellectual property and copyright law and coupled with reference to national legislation would help in reaching a common understanding on preservation. Morocco was in support of an international legislation since dealing with the problem nationally would be woeful piecemeal approach. Senegal pointed out definitional issues that were plaguing the discussion. If there was no common ground on the idea of a library and an archive, then the discussions on exceptions and limitations would not break any new ground. Therefore, the discussions appeared to be proceeding on two tracks – nature and scope of the exceptions and limitations for libraries and archives and the need for an international instrument that went beyond national legislation. The Chair opened comments on the latter track since that is foundational. The United States reiterated its opposition to any agreement that transcended national legislation. It also wished to introduce a bit of complexity in its discussions by pointing out that its domestic copyright law had no understanding of a library or archive. Therefore, it was going to be difficult to come to an understanding at the international level when national legislations themselves have not reached that point in their trajectory. Both El Salvador and Ecuador tacitly stated that they were in favour of an international legislation by continuing the discussion on merits. El Salvador opined that there was some degree of good faith involved and that was unavoidable in the pursuit of the desire to facilitate the sharing of knowledge. Greece stated that limitations and exceptions should only be applicable when an additional copy is not available in the market. Significantly, it stated that libraries and archives could enter into agreements with the rights holders by themselves. A flexible international framework was what Greece was aiming at, not an international legislation that went beyond national legislation. Both Greece and the EU suggested using the EU Copyright Directive as a starting point for defining libraries and archives. It asked for the flexibility it already had within the EU framework to be respected. Italy stated that it saw no international interest in a transnational agreement on exceptions and limitations. India emphasized the point that there was an international interest in preserving the culture of countries. The international dimension was in the context of cross-border cultural exchange. Congo came out in support of an international agreement as well. There was some degree of opposition from Greece that questioned India on why either manuscripts on cross-border cultural exchange had anything to do with preservation. In its opinion, those two goals could be achieved even without the formation of an international agreement on exceptions and limitations. India responded by clarifying that it did not use the example about ancient manuscripts in the context of copyright but the existence of an international interest in the matter of preservation. The issue of preservation of works within a library are for present and future use. This use, in today’s globalized world, is not just for the citizens of that country but for researchers the world over. In order to allow for thus cultural exchange, it was imperative that the copyright of the work not come in the way. Hence, there was the need for an international, and not merely national, legislation on the issue.

On France’s concern about Ecuador’s vague understanding of fair use, Ecuador clarified that this would be the same as in the Berne Convention and the three step test would apply. Finland, Jordan and Senegal then shared their countries’ national experience in this regard.

The Chair concluded the discussion on the first topic by articulating what he saw as a principle that is in the common agreement of all. In order to ensure that libraries and archives can develop their public service of the preservation of works in order to preserve knowledge and heritage, we need exceptions and limitations. Certain circumstances and guarantees are yet to be discussed and disagreements persist but none that threaten the need for a discussion.

Topic 2 – Right of Reproduction and Safeguarding of Copies

The Secretariat noted that there were proposals from the African Group, Brazil, Ecuador, India and the United States.

The EU opened the discussion with the suggestion that the title of this topic should only be focussed on the right to reproduction. This was in light of the nature of the proposals made by the various groups and nations. Ecuador situated the debate on the right to reproduction within the broader framework of limitations and exceptions for libraries and archives. It was imperative, it stated, that a right for libraries be carved out in order to facilitate the important social role they discharge. France added to the concern voiced by the EU in stating that it felt that safeguarding was already covered within the ambit of the previous topic. Brazil responded to this by drawing a clear cut distinction between the first and second topics. The right of reproduction was applicable to libraries while safeguarding was for archives. Both the role of the library and that of the archive merit discussion, it was emphasized, and both should equally be included in the second topic. Senegal supported the idea of an inclusive topic that mentions both the right of reproduction and safeguarding of copies. It stated that a distinct right of safeguarding was crucial at a time when vital cultural artefacts are vulnerable to destruction. The example of the museum in Timbuktu that was ravaged by militants leading to the irreparable loss of invaluable manuscripts was cited in support.

Italy voiced a two-pronged opposition to the very idea of articulating a right to reproduction. First, it stated that allowing for reproduction, even in University libraries, would open the floodgates to copyright violations. It was afraid that copyrighted material would be reproduced within the library which would then lead to that material appearing on for a not envisaged within the rubric of the treaty. Second, it was against the extension of the idea of research to private research. The transmission of the reproduced material to third parties would lead to a loss of revenue to the rights holder in question. To Italy, the latter was even more egregious since the former at least allowed for the possibility of, via the money paid for the reproduction, monetary compensation of the rights holder. The latter however had no room for this to be effected.

Belarus supported the EU position on the exclusion of safeguarding from the present discussions. Further, Belarus stressed that it wanted a caveat to the exception for scientific and educational research. It wanted the kind of material that would fall under the exception to be limited to “just articles or short works or excerpts from books” since “the student or researcher probably doesn’t need the whole book”.

Brazil assuaged the concerns of the right holders by pointing out that its proposal in paragraph 2 makes national legislation the focus. Fuether, it added that with respect to the international dimension to the rights, the GA had already stated that there would be an “international legal instrument”. Therefore, the multilateral nature of both the subject matter and scope of the negotiations is beyond the pale of doubt.

The representative from the International Council of Museums noted that all of the rights were equally applicable to museums as well. Very often, museums suffered from a lack of uniformity and harmonization of rules across multiple jurisdictions. This was the need it saw for an international treaty on the issue.

The Chair summed up the discussions. Despite the emergence of any sort of consensus, most countries had agreed for a need to have exceptions and limitations for libraries and archives. Further, a right to reproduction of works for libraries was recognized to facilitate the reproduction of certain works under certain conditions for the purposes of research. The scope of none of these terms have been agreed upon by states nor has there been much agreement on whether this extends to distribution of the material and to what extent. The EU and the USA mentioned that they did not think there was a need for an international agreement on this and the GA wording was not binding in any sense.

Topic 3 – Legal Deposit

The Secretariat noted that there were proposals from the African Group and India on this. This was not received very warmly by the delegates. Most thought it was out of the place in the current discussions. The US opposed the need for any discussion at the international level since the issues in question were codified in domestic law to varying degrees. Therefore, it could not be said that it was “ripe for harmonization”. Colombia found the concept of legal deposit “strange” in a document on exceptions and limitations.

Topic 4 – Library Lending

The Secretariat noted that there were proposals from the African Group, India, Brazil, Ecuador and Uruguay.

Ecuador explained in great detail that the reason behind this was to allow for libraries to lend copyrighted works to its users or to another library. Very often, research necessitates the movement of the physical copy of a particular work. In other instances, the presence of a particular copyrighted work in a specific library has great symbolic and cultural value, apart from its patent value for research activities. In furtherance of its earlier objections, Italy explained that lending could also lead to egregious copyright violations. Along these lines, it objected to the idea of digital lending since it went against the grain of lending because returning a digital copy was not possible or meaningful. The International Federation of Libraries, representative from civil society, pointed out that there were technological tools that would prevent the unintended and harmful proliferation of lent digital copies. Digital lending could take place by passing along a password encrypted digital copy that would expire after a set period of time.

Greece furthered the harm that this would have on copyrighted works by asking why anybody would want to get the original if lending is applied to the realm of films via digital transmission. Responding to the African Group proposal, it asked how this was in conformity with the three step test. The US responded by drawing a positive causal link between lending and commercial purchase of the product. Again, the Chair summed up by stating that agreement was that exceptions and limitations must extend to library lending but agreement on the scope and nature of this extension evaded consensus.

Additional Links

For more details visit https://cis-india.org/a2k/blogs/wipo-sccr-26-session-consolidated-notes-part-2

004: A License to Share

nehaa — 2014-03-20T05:38:34Z

In this blogpost Devika Agarwal, a 4th year student at Dr. Ram Manohar Lohiya National Law University, Lucknow, takes a first look at the Creative Commons 4.0 Licence.

With the increasing amount of information being uploaded online every day, it becomes imperative to facilitate the sharing of this information legally. Creative Commons (CC) license is a tool developed especially with the objective of allowing widespread dissemination of information in a manner so as not to infringe the copyright of a person over the work.

A CC license is a valid license. It is ‘non-exclusive’ in nature; this means that the author of a work is free to enter into a different licensing agreement with anybody he wishes despite holding a CC license (the different licensing contracts must also be ‘non-exclusive’ in nature). Simply put, licensees of a CC license will be governed by the terms of the CC license unless they have a different agreement with the license holder.

In India, works licensed under the CC license include digital copies of educational material by NCERT.

With the first version of the license being published in 2002, Creative Commons has witnessed a number of changes to help serve the needs of internet users better. Version 4.0 of the Creative Commons License was released on November 25, 2013.

A more global license

What sets the latest version of the Creative Commons license apart from its precursors is the fact that CC license 4.0 is an ‘international license’. The earlier versions of CC license required the license to be “ported” to the different jurisdictions; ‘porting’ was a process which involved the translation and legal adaptation of CC’s core license suite (also known as ‘generic’ license suite’ ) to conform to the languages and copyright laws of individual jurisdictions). This means that earlier one had to obtain a CC license ported to one’s country; the “ported version of the license” was a modification of the generic CC license, suited to meet the copyright requirements of a particular country.

The CC license 4.0, on the other hand, is an international license, i.e., the 4.0 license is ‘jurisdiction neutral’ in nature and a single version of the license exists for all persons.

Sui generis database rights:

The CC license 4.0 also provides explicitly for protection to sui generis databases in jurisdictions which recognize copyright related to sui generis databases. Sui generis databases were not expressly covered by the earlier versions of the CC license. (India does not extend copyright protection to sui generis databases).

Non-attribution

The one element common to all the CC licenses is ‘attribution’ or acknowledgement of the licensor as the author of the work by “giving appropriate credit and providing a link to the license. Where the earlier licenses provided that a licensor may request a licensee to remove attribution from adaptations of the work (in order to preserve anonymity), the 4.0 license extends the right of ‘non-attribution’ of a licensor to works which have not been adapted.

This right of attribution is recognized under section 57 (1) (a) of The Copyright Act, 1957 in India which states that “even after the assignment either wholly or partially of the said copyright, the author of a work shall have the right to claim authorship of the work.”

30-day period to remedy breach of CC license terms

A significant change in the CC 4.0 version is that unlike the earlier licenses which terminated the CC license in case of failure to comply with the license terms, the 4.0 licenses allow a 30-day period to the licensees to remedy the breach, after which the license shall resume.

The terms incorporated in the 4.0 license are aimed at making the license more compatible with the copyright laws of various jurisdictions and at the same time ensure that information can be shared with more freely, thus preserving the spirit of Access to Knowledge.

(Creative Commons re-launched its India chapter in November last year.)

Similarly, right of ‘non-attribution’ is recognized under section 21 of The Copyright Act, 1957 which provides for relinquishment of copyright by the author. This may be done “by giving notice in the prescribed form to the Registrar of Copyrights or by way of public notice.” A CC license where attribution has been removed at the instance of the licensor will serve as a ‘public notice’.

For more details visit https://cis-india.org/a2k/blogs/a-license-to-share

WIPO Standing Committee on Copyright and Related Rights (SCCR) 26th Session- Consolidated Notes (Part 3 of 3)

nehaa — 2014-04-01T09:48:59Z

From December 16 to 20, 2013, the Standing Committee on Copyright and Related Rights (SCCR) of the World Intellectual Property Organization (WIPO) met for the 26th session. This blog post (Part 3 of 3) summarizes Day 4 of the proceedings of the 26th SCCR, based on my notes of the session and WIPO's transcripts.

Many thanks to Varun Baliga for putting this together, and to Alexandra Bhattacharya of the Third World Network for her notes and inputs.

Day 5 – 26th SCCR

The agenda for the final day of the 26th SCCR was set as limitations and exceptions for educational and research institutions and for persons with other disabilities.

Trinidad and Tobago, speaking on behalf of the GRULAC group of nations, supported the idea of an international convention on this agenda. It was of the opinion that such an instrument would work for the benefit of the economic development and socioeconomic enablement of millions of people in the GRULAC region. Algeria, speaking on behalf of the African Group, emphasized the digitalization of education, research and living across the world and the impact that this has on the right of peoples of all nations to access knowledge. Responding directly to sustained opinion from the developed world of the absence of a need for an international convention, Algeria spoke about the need for balance and uniformity in regulations. This balance between the right to access knowledge and to protect intellectual property is often achieved through the concept of limitations and exceptions. This balance also requires uniformity because conflicting cross-border norms in our digitally borderless world would render the ameliorative effects of limitations and exceptions moot. Further, the Berne Convention has proved to be of minimal help since interpretations have emerged of its dissonance with the tools needed for distance education. Therefore, in order to cover the digital dimension of limitations and exceptions, an international treaty is critical. In the words of the Algerian delegate, “We know that the balance between Intellectual Property rights and public interest are generally translated by exceptions and limitations. Unfortunately in the area of education and scientific research, national legislation does not seek this balance in a uniform and comprehensive manner.”

The delegate also responded to concerns about the text proposed by the African Group. The proposal, he said, was a text-oriented tool to find an apt balance. Further, it was also imbibed with a certain degree of flexibility to allow for its adaption to the needs of development as understood by nations, various kinds of copyright protections and various treaties in literary and artistic property. Furthermore, the African Group wished for this text, if adopted, to move on the principle of consensus and expressed a willingness to incorporate any constructive concerns that delegates may have in order to stay true to the ideal of consensus-based diplomacy.

A number of developing and developed countries supported the need for greater discussion at the international paradigm on the topic of limitations and exceptions, and also the swift adoption of an international instrument in this respect. Kenya and the Islamic Republic of Iran put their weight behind the African Group, emphasizing similar values of digitalization of information and communication, right to access knowledge, public interest and need for an international instrument. Tunisia also supported the notion that an international instrument would lead to the harmonization of standards and benefit the international community. China came out in strong support of further negotiations. Russia noted that it was in support of a single document for limitations and exceptions that covers within its ambit the entire gamut of protections discussed at this forum. Further, it also supported the contention of the Japanese delegation that the international instrument should not include contentious issues such as instance liability.

It is also pertinent to note that Japan, on behalf of Group B, came out against the idea of a treaty based approach to the negotiations, much preferring “constructive work on principles and updating of studies by the Secretariat”. The European Union submitted that the extant international copyright framework was both adequate and ideal for the needs of both the digital and analog world of education, research and needs of persons with other disabilities. The EU proceeds to draw a distinction between the needs of educational and research institutions and persons with other disabilities vis-à-vis needs of persons with visual and print impairment. In drawing this distinction, it seeks to achieve principled coherence across its support for the Marrakech Treaty and its opposition to any treaty on limitations and exceptions. It expressed concern that the working document was not an accurate reflection of the views of those countries that were of the opinion that present negotiations should be confined to the sharing of national experiences. Given the diversity in domestic regulations, any international treaty should seek to achieve domestic regulatory harmony and then proceed, assuming that the need argument fails to hold water.

The Indian delegate submitted that the discussions were in furtherance of earlier deliberation on limitations and exceptions for libraries and archives. There was a dire need to understand libraries and education not in a parochial, institutional sense but in a broad and enabling manner to meet the needs of developing and least developed nations. Both the material and transmission should be covered in order for distance learning to be enabled in any meaningful manner. Further, it was also of the opinion that an expansion of ISP liability is needed, citing the IT Act in support of this.

At this point, the developing nations made their voice heard in opposition to the fundamental premise of the ongoing negotiations – that an international treaty is a worthwhile goal to work towards. Poland, on behalf of the CEBS Group, commecnced his statement by taking cognizance of the importance of educational and research institutions and activities in our society and economy. The delegate recognized the existence of the knowledge triangle of education, research and innovation. Proceedings from this premise, it was the view of the CEBS Group that the best way to hone this innovation is by establishing a robust and strong system of intellectual property. Further, it went on to draw the link between the critical activities of distance learning, collaborative research with the activities of publishing and other aspects of the creative sector. Copyright policies therefore have to also take into the account the economic and social effects of not enabling access to research. The CEBS Group argued for a balanced copyright approach. It went on to support the idea of each WIPO member incorporating enabling limitations and exceptions within their domestic copyright regimes through a mutual sharing of best practices and national experience using multilateral for a such as this one. It was of the belief that modern copyright systems should provide for efficacious licensing mechanisms that are flexible, supportive and enabling to education, research and teaching activities as well as the needs of persons with other disabilities. Supporting the values emphasized by the developing world does not necessarily require the adoption of a binding international instrument. It concluded that the need to develop a comprehensive understanding of limitations and exceptions should not come at the flexibility that is conventionally afforded to WIPO member states to determine their own educational, research and teaching policies and norms to enable the lived experience of persons with disabilities.

The United States started by submitting their own document – SCCR/23/4 – on objectives and principle for limitations and exceptions for libraries and archives. The US chose to further the CEBS submission by underscoring the potency of the extant copyright regime – Berne Convention 1886 and WIPO Copyright Treaty 1996. Both have a balance between copyright and education and have the promotion of education, research and teaching as their stated goals. Therefore, notwithstanding the contention that they are anachronistic given the digitalization of information and communication, it is possible to accommodate contemporary needs within existing regimes. The US stated that it was of the opinion that finding common ground on principles and an examination of the diverse national treatment of the issue of limitations and exceptions would render a more productive, positive solution than foisting a treaty or international legal instrument on the domestic regimes of WIPO members. It was of the opinion that this would “permit progress by promoting steps forward on shared goals and principles while enhancing international understanding and maintaining flexibility at the national level. We do not support work towards a treaty.” It also went on to voice concerns about the inclusion of controversial and broad areas of protection within the rubric of the treaty – topics such as public health and ISP liability were causing much consternation to the delegate of the United States. A plethora of reasons were advanced by the US that articulated its layered opposition to this entire process. There was a concern that given fundamental differences of opinion, inclusion of contentious protection would be pernicious to the negotiation itself. It was also of the opinion that a lot of the provisions had only incidental relevance to the central question of education and rights of persons with other disabilities would distract the nations from the purpose of the proposed international instrument. This proliferation of protections would in turn harm the considerable economic, social and political capital invested in the negotiation process.

Senegal affirmed the idea of an international agreement on limitations and exceptions. It believed that the contemporary is far removed from the world in which the Berne Convention and extant international copyright regime was conceptualized. Therefore, Senegal was in favour of a flexible international instrument that responded to digitalization and was proactive rather than reflexive. Sudan also threw its weight behind the African Group proposal and offered a scathing critique of the exclusivist tendencies of the contemporary copyright regime. It called for “efforts to break the current situation faced by certain countries in communication or in building the infrastructure and bridging the digital gap.

Columbia, on the other hand, spoke about the need to understand if there is a lacuna in the present international copyright regime and understand the implications of adding to existing corpus of limitations and exceptions.

At this juncture, the Chair opened the floor for contributions from civil society representatives. Knowledge Ecology International focussed its submissions on three foci – specific exceptions, three-step test and the corporate system. KEI acknowledged the raft of protections for limitations and exceptions within existing copyright structures but articulated the need for specific exceptions. Further, it reasoned out the incompatibility of the Berne three-step test with the needs of contemporary knowledge creation, research and access. Transplanting the Berne Convention to this context would render it moot and have far-reaching pernicious consequences on the international community’s reactions to dire questions of access particularly in the developing and developed world. KEI acknowledged the underlying premise of US/EU/Group B objections to an international instrument by pointing out the difference in national treatment of limitations and exceptions. As a response to this legitimate concern, it suggested that complimentary confidence building measures such as a multi-stakeholder platform work alongside the treaty negotiations so as to ensure that it is an inclusive process that alienates no stakeholder.

IFRRO came out in strong support of the position against an international treaty. It stated that in pursuit of limitations and exceptions, one must not lose sight of the legitimate rights that creators have over their work. Diluting that principle would do harm to the idea of copyright and by extension creative and innovative thought. In support of this contention, studies were cited that showed a causal link between IP protection and income of authors.

The Centre for Internet and Society underscored the value of universal access to education and knowledge. Information and communication technology in the contemporary carry the tantalizing prospect of the realization of this ideal without excessive expenditure. It is also critical for this access question to be all-inclusive, for “formal and informal institutions and for environments and in digital and non-digital formats”. The experience of developing and least developed nations is a feeling of exclusion from the silos of knowledge in the west and it falls upon the international community to disrupt these silos to ensure equitable access to knowledge and, as a consequence, power. Individuals in these countries not only have to spend more on each book but have to spend a higher proportion of household income on it vis-à-vis Western households. The present international copyright framework lacks the ability to facilitate the realization of this ideal for three reasons. First, the myopic and complex compulsory licensing provisions in the Berne Convention. Second, the incompatibility of the three step test to contemporary limitations and exceptions. And finally, the need for harmonization of national practices and facilitation of cross-border exchange of information and knowledge.

On being called on by the United States, Ecuador and Egypt, it was decided that the Secretariat would study the possibility of a study on the ambit of copyright and related rights as also limitations and exceptions for persons with disability and from the perspective of learning concerns. It was also decided that the Secretariat would update regional studies on limitations and exceptions for educational, research and teaching institutions.

The next session, SCCR 27, would focus on a discussion on exceptions and limitations with a focus on libraries and archives.

Draft Conclusions

The draft conclusions to this year’s SCCR was put up by the Chair for comments by all members. Belarus and CEBS fully supported the text and praised it for its balanced approach. The United States also supported it but requested an edit to Paragraph 6 Line 4 – a ‘to be defined’ in parenthesis after the words ‘on demand transmissions’. India expressed gratitude that everyone’s views were taken into account in the draft conclusions and asked for two edits. It stated that parts of the discussion on Article 9 were absent from the text. Further, the words beneficiaries in the draft conclusions was included when it had no definition in the document. Finally, it suggested that the word last line in paragraph 5 be changed to might or may. The Chair responded to India’s concerns on paragraph 5 by directing attention to the word ‘if’ in the text. Ecuador and Brazil both supported India’s opinion that the word should be may or might and not should. India submitted that this is not simply an editorial or cosmetic change but one that reflected a substantive issue. Ecuador also stated that countries might in the future want to include internet transmissions and the word should conditions the negotiations, lending it a restrictive air. Brazil also stated that it was crucial for the text to be both balanced and reflective of every stakeholder’s concerns. India stated that this was a demand from two or three groups. The lack of consensus on this point implies that the word should be may and not should. The EU, US, Japan, Switzerland and Poland (on behalf of the CEBS) supported the text in toto- a tacit snub to India’s suggestion. Italy stated that the word ‘if’ in the text provides the kind of flexibility that India is seeking and that altering the word should to may would rob the provision of meaning and be grammatically grotesque. Looking for alternatives, India also requested that the words ‘at least’ be deleted in order for some aspect of its concerns to be taken into account. Belarus characterized the text as entirely factual and accurate portrayal of the negotiations that took place-gave its support to the entire text. The Chair then offered an explanation of the terminology and showed how the wording allowed for both possibilities of inclusion and exclusion of transmission over the internet.

Indian then turned attention to the lack of a definition to the word beneficiaries. The Chair acknowledged India’s concerns and accepted the US suggestion to add the words ‘to be defined’ after both beneficiaries and on demand transmissions. Brazil also suggested traditional broadcasting/cablecasting or broadcasting/cablecasting organizations in the traditional sense as possible ways to word the text. The EU requested the Chair for some language suggestions on how best to resolve this. The proposals (and not issues, after a request from India) on Articles 5,6,7,9 and 12 were added to the annex. After the incorporation of all these concerns and compromises, the Chair approved this section.

Libraries and Archives

On the limitations and exceptions for libraries and archives, the United States made two suggestions. First, that the word may be removed from paragraph 18 as it detracta from the nature of the deliberation on that point. Second, the inclusion of the phrase “other proposals submitted” in paragraph 21. Brazil stated that it stood for the draft conclusions to be a clear picture of the positions adopted by WIPO members. In this light, it called for the inclusion of the names of member states that wished to discuss national laws in paragraph instead of the nebulous phrase ‘some member states’. He also requested a clarification on the last line of paragraph 16. Trinidad and Taboga indicated that it was adopting a flexible approach; it supported the suggestions by the US and Brazil but were also willing to work with the text.

The European Union wanted the word ‘also’ to be removed from paragraph 14. It also suggested that the final sentence of paragraph 16 be “these studies will serve as information and work resources for the committee”. Ecuador agreed with the US working document. It was of the opinion that the document should better reflect a spirit of compromise. On limitations and exceptions for museums, given the study reflected in the plenary for persons with other disabilities – there was a discrepancy between the discussions and the text. One was with the understanding that it was subject to the availability of resources while the other implied that it was mandatory in nature. The EU wanted licensing to be included in the text. The US thanked Ecuador for working out a compromise on the language and accepted it. Algeria expressed its desire to stick to the language proposed by the Chair on paragraph 13.

The Brazilian delegate called for flexibility on paragraph 14 in light of the proposal by the EU delegation on the point of discussion on national laws. The United States responded that it didn’t quite follow the position being adopted by the Brazilian delegate on paragraph 14 and much preferred a return to the text originally adopted by the Chair. Egypt pointed out the possible confusion that could emerge between paragraph 16 and 21, and in light of this expressed a willingness to engage in a full scale discussion on proposals from Canada and the EU. The EU responded directly to paragraph 14 in particular. It spoke out against the idea of listing the WIPO members that asked for a discussion on national laws as this would be against WIPO practice both in other parts of the same document as well as in other deliberations. EU stated that it saw no need to list out WIPO members and stood firmly against it. Brazil responded with a modicum of alarm at the opposition to the simple proposal to introduce the elements of precision in a document that is meant to be factual. It is far better for readers to understand the precise picture rather than having a general understanding of issues. Italy, Belarus and Greece threw their collective weight behind the EU opposition to this. All stated that this would be highly inappropriate and would amount to the singling out of the EU and other nations that took a stance, something that they didn’t see a need for. The US proposed a compromise where instead of naming the member states, ‘some member states’ would be used. Brazil said that this term was not just nebulous but could give the wrong impression to future delegates of the precise number of states that wished for discussion on national laws. Ecuador played the role of the voice of reason and stated that the progress of negotiations shouldn’t be hampered because of such a cosmetic set of differences. There was no need for the level of precision that was exemplified by the naming of WIPO members. Instead, it stated that it advocated for a general references to nations that asked for a discussion on national laws. This general reference was supported by Algeria and finally adopted by the Chair as a compromise between the opposing factions. On paragraph 16, the Chair called for the part on limitations and exceptions on museums to be deleted with the understanding that there would be an update by Professor Kenneth Cruz that would include all aspects of this issue. On paragraph 14, the Chair was in favour of the compromise suggested by the United States. It stated that in using the word ‘some’ no particular number or indication thereof was intended and that caveat was always there; instead what was only meant through the word ‘some’ was that the number of was more than one. Asked for Brazil to show some flexibility in this situation. Egypt raised the important issue of not conflating the fundamental disagreement on the nature of the proposed instrument and the desire to have discussions on national laws. It stated that in case both were being included, they be mentioned in separate paragraphs because a conflation would lead to misplaced conclusions being drawn.

Deliberations on paragraph 16 ensued and the Chair clarified that on paragraph 16, the first and third sentence were being retained while the second was done away with. Ecuador asked for thereto be no confusion between studies on limitations and exceptions and those on museums. Its objection does not extend to the latter. The Chair suggested that all references to museums be deleted. Algeria wanted the words on preparation not being delayed to be retained and applied to all studies being proposed. US agreed with the Chair’s proposal but added that perhaps a separate study on limitations and exceptions on museums be included. Algeria insisted that this principle be applicable to all studies and not just studies on museums. The Chair stated that a separate study on limitations and exceptions for museums be included with the understanding that this would not delay general discussions on limitations and exceptions. The last sentence was also retained. With this, deliberations on this topic were closed.

Limitations and Exceptions For Educational and Research Institutions and for Persons with Other Disabilities

The European Union delegate stated that it was in support of the inclusion of the point on licensing as an appropriate point in the text. Sharing Algeria’s concern, it also called for the deletion of the word ‘understood’ in paragraph 23. Algeria had earlier raised a problem with the use of the word ‘understood’, preferring the phrase ‘agreed on’. The EU also called for the text to be accurate reflection of the negotiations. Brazil responded to the concerns of the EU delegate by stating that he would not be in support of a suggestion that this document not be the basis for future work on this topic. Ecuador supported Brazil’s point on this being a text-based negotiations and that this should be the basis for future deliberations. Brazil also expressed a bewilderment at the EU insistence of the inclusion of the point on licensing. It asked for its relevance in an agreement on educational institutions; a clarification was sought from the EU. The EU responded that it was of the opinion that we’re dealing with related subjects that deserve equal treatment. In this context, since licensing was included in the previous agreement, it must also be reflected in these conclusions.

Egypt supported the Chair’s language in paragraph 23. Further, it went on to attempt a compromise by suggesting that this text be not the basis for future text-based work but a basis. This would lend the issue a degree of much-needed flexibility. The US, on the side, supported the EU on including licensing schemes. The EU responded favourably to the compromise suggested by Egypt and said that a text where the word the is replaced by a is one that is agreeable to the EU.

The Chair outlined the three issues as

The word ‘the’ in Item 27
The inclusion of the point on licensing and the tussle between the EU (arguing for inclusion, supported by the US) and Brazil (against the inclusion).
The point of this being the basis for future text-based negotiations and the compromise suggested by Egypt and accepted by the EU.

A compromise was worked out on licensing where the words “but other delegations do not see it that way” be included as a rider. Differences on points 1 and 3 were also ironed out as the Egyptian compromise was accepted. On this point, the third section was approved and deliberations came to an end.

Other Matters

It was announced that the reports of the Stakeholders’ Platform – SCCR/26/5 and SCCR/26/7 – be put up on the web page. Finally, suggestions were wielded and discussed for future meetings of the SCCR.

It was agreed that SCCR 27 would be dedicated to the protection of broadcasting organizations (two-and-half days), limitations and exceptions (two days) and conclusions and discussions on future work (half a day).

Additional Links

For more details visit https://cis-india.org/a2k/blogs/wipo-sccr-26-session-consolidated-notes-part-3

CIS Statement at 27th SCCR on the WIPO Proposed Treaty for the Protection of Broadcasting Organizations

nehaa — 2014-05-01T14:27:48Z

The 27th Session of the WIPO Standing Committee on Copyright and Related Rights is being held in Geneva from April 28, 2014 to May 2, 2014. Nehaa Chaudhari, on behalf of CIS made the following statement on April 29, 2014.

This statement was in response to the Chairperson seeking NGO inputs specifically on the Scope of the Treaty and the Rights of Broadcasting Organizations. The statement makes references to a specific Working Document available here. CIS statement is quoted in Knowledge Ecology International on April 29, 2014 and in the Intellectual Property Watch on May 1, 2014.

Thank you, Mister Chair.

We have some concerns regarding the intended scope and language of Article 9 in Working Document SCCR/27/2 Rev. We believe that this expands the scope of this proposed treaty and is likely to have the effect of granting broadcasters rights over the content being carried and not just the signal. On this issue, we have two brief observations to make:

First- Article 9 envisages fixation and post fixation rights for broadcasting organizations- for instance among others, those of reproduction, distribution and public performance This, we believe is not within the mandate of this Committee, being as it is, inconsistent with a signal based approach.

Second- we express our reservations on the inclusion of “communication to the public” reflected in Article 9 Alternative B, which also relates to the definition of communication to the public under alternative to d of Article 5 of this document. Communication to the public is an element of copyright and governs the content layer, as distinct from the “broadcast” or “transmission” of a signal. Therefore, attempts to regulate “communication to the public” would not be consistent with a signal based approach, which we believe is the mandate binding on this Committee.

That is all, Mr. Chair. Thank you very much.

In response to CIS' statement, the Chair had this to say:

Thank you, CIS,. That was a very clear statement and gave us a very clear explanation of the situation. We will indeed take due account of that in the course of this afternoon's further discussion.

For more details visit https://cis-india.org/a2k/blogs/cis-statement-27-sccr-on-wipo-proposed-treaty-for-protection-of-broadcasting-organizations

Transcripts of Discussions at WIPO SCCR 27

nehaa — 2014-05-25T04:50:59Z

We are providing archival copies of the transcripts of the 27th session of the WIPO Standing Committee on Copyright and Related Rights, which is being held in Geneva from April 28, 2014 to May 2, 2014.

Note: This is an unedited transcript of the discussions at SCCR 27. We are hosting the text for archival purposes:

Day 1: April 28, 2014:

Day 2: April 29, 2014:

Day 3: April 30, 2014

Day 4: May 1, 2014

Day 5: May 2, 2014

Click for WIPO Signing Ceremony for Marrakesh Treaty

For more details visit https://cis-india.org/a2k/blogs/wipo-sccr-27-discussions-transcripts

Signing and Ratification of the Marrakesh Treaty to Facilitate Access to Published Works for Persons who are Blind, Visually Impaired, or Otherwise Print Disabled

nehaa — 2014-05-06T08:32:58Z

The Centre for Internet and Society sent the following letter to the Secretary, Ministry of Human Resource Development on March 14, 2014.

14 March 2014
Shri Ashok Thakur
Secretary, Ministry of Human Resource Development
Government of India
New Delhi

Dear Sir,

Subject: Signing and Ratification of the Marrakesh Treaty to Facilitate Access to Published Works for Persons who are Blind, Visually Impaired, or Otherwise Print Disabled

I write to you on behalf of The Centre for Internet and Society, Bangalore, India (“CIS”). CIS is actively involved in work on accessibility[1] and access to knowledge[2]
The Marrakesh Treaty to Facilitate Access to Published Works for Persons who are Blind, Visually Impaired or Otherwise Print Disabled (“Marrakesh Treaty”) was signed on June 28, 2013 at Marrakesh, Morocco. Reportedly, the Marrakesh Treaty was signed by over fifty countries on the final day of the Diplomatic Conference held to finalize this treaty, in late June, last year.
We are given to understand that reportedly[3] the Union Cabinet had in its meeting held at the end of last year cleared the Marrakesh Treaty for both, signature and ratification.
We write this letter to enquire about the status of India’s signing of the Marrakesh Treaty.
We strongly believe that the signing and ratification of the Marrakesh Treaty would be in India’s best interests, and in consonance with the amendments made to India’s copyright law in 2012, as reflected in India’s Closing Statement at Marrakesh on the Marrakesh Treaty.[4]
In light of this we request you to take the necessary steps for the signature and ratification of the Marrakesh Treaty as a consolidation of India’s long standing commitment to providing access to books and printed material to the blind, visually impaired and persons with other print disabilities.
We would be deeply obliged to provide you with any assistance necessary.

[1]. See http://cis-india.org/accessibility (last accessed 14 March, 2014).

[2]. See http://cis-india.org/a2k (last accessed 14 March, 2014).

[3]. Email correspondence from Dr. Sam Taraporevala, available here- https://groups.google.com/forum/#!topic/daisyforumofindia/tksq9kAdD0Q (last accessed 13 March, 2014). and here- http://lists.keionline.org/pipermail/marrakesh_lists.keionline.org/2013-November/000240.html (last accessed 13 March, 2014).; Email correspondence from Shamnad Basheer, available here- https://groups.google.com/forum/#!topic/spicyip/DupESMX2lkg (last accessed 13 March, 2014). See also http://spicyip.com/2013/12/marrakesh-blind-treaty-okayed-for-signature-and-ratification.html (last accessed 13 March, 2014).

[4]. See http://cis-india.org/a2k/blog/india-closing-statement-marrakesh-treaty-for-the-blind (last accessed 13 March, 2014).

For more details visit https://cis-india.org/a2k/blogs/signing-and-ratification-of-marrakesh-treaty-to-facilitate-access-to-published-works-for-persons-blind-visually-impaired-print-disabled

India's Opening Statement on the Treaty for the Visually Impaired at SCCR 24

pranesh — 2012-07-23T15:24:26Z

This was the opening statement of the Indian delegation, delivered by G.R. Raghavender, on Thursday, July 19, 2012, at the 24th meeting of the SCCR at WIPO in Geneva. The statement called upon all countries to conclude textual work on the treaty and call for a Diplomatic Conference to finalize it. This statement received applause, which is highly unusual at the SCCR.

Thank you, Mr. Chairman.

The Indian delegation is a little bit disappointed about the way we have started this topic of the Treaty for the Visually Impaired. Forgive me, Mr. Chairman, we have confidence in your abilities, but unfortunately we have already lost one hour in this afternoon session. We have only two hours left, unless and until we decide to work beyond 6:00 P.M.

We have a document, SCCR/23/7, on the table. Everybody has this document. We all decided in the last SCCR that we will work on this document and move towards a meaningful treaty. We said, in this very 24th SCCR, we will be ready for that. We should have started article-by-article discussions by now. And as we are involved in the general statements in our agenda, I can go on reading a statement for another 20 minutes as I have about five pages written out. But given our support for the treaty, I won't.

I'm sorry, I respect all the distinguished delegations: they have their own concerns, but Mr. Chairman, under your leadership we should have started article-by-article discussions by now. Yesterday, in the evening at the Chairman plus group leaders plus 3, we all requested that. Whatever happened during the 14, 15 intersessional meetings, we have no objection to that, but people raise the issue of transparency and availability of the document. Whatever changes have been made to the document must be public. If no one is ready to post that document either during the informal discussions, or here in the plenary, they can always come out with the changes made to particular articles, or para in the preamble, when the discussion starts.

We should be ready to work towards finalizing this treaty. We are even open to working on Saturday and Sunday, Mr. Chairman.

If we don't finalize in this SCCR, we cannot go to the General Assembly in the first week of the month of October. If we lose that time, we will have to wait until the next General Assembly, because we cannot have a General Assembly in between.

So we will be simply wasting our time in the November SCCR and again next July SCCR, waiting for the next General Assembly.

So kindly guide us to start text-based article-by-article discussions, so that we won't go back empty-handed. The Indian delegation won't go back empty-handed, facing the 15 million blind people in India, which is almost 50 percent of the world blind population, that is 37 million.

Thank you.

For more details visit https://cis-india.org/a2k/india-opening-statement-sccr24-tvi

Transcripts of Discussions at WIPO SCCR 24

pranesh — 2012-07-31T12:35:43Z

We are providing archival copies of the transcripts of the 24th session of the WIPO Standing Committee on Copyright and Related Rights, which is being held in Geneva from July 16 to 25, 2012.

This is an unedited rough transcript of the discussions at SCCR 24, which is live-streamed and made available by WIPO at http://www.streamtext.net/player?event=WIPO. We are hosting the live-streamed text for archival purposes:

WIPO SCCR 24 Pre-lunch Text (July 19, 2012)
WIPO SCCR 24 Post-lunch Text (July 19, 2012)
WIPO SCCR 24 Pre-lunch Text (July 20, 2012)
WIPO SCCR 24 Post-lunch Text (July 20, 2012)
WIPO SCCR 24 Pre-lunch Text (July 23, 2012)
(There was no post-lunch plenary session on July 23, 2012)
WIPO SCCR 24 Pre-lunch Text (July 24, 2012)
WIPO SCCR 24 Post-lunch Text (July 24, 2012)
WIPO SCCR 24 Pre-lunch Text (July 25, 2012)
WIPO SCCR 24 Post-lunch Text (July 25, 2012)

For more details visit https://cis-india.org/a2k/wipo-sccr24-discussions-transcripts

WIPO SCCR 24 Pre-lunch Text (July 24, 2012)

praskrishna — 2012-07-25T03:51:38Z

This is a rough transcript of the WIPO-SCCR discussions.

For more details visit https://cis-india.org/a2k/2012-07-24-sccr-24-pre-lunch.txt

Consumers International IP Watchlist 2012 — India Report

pranesh — 2012-08-16T10:23:36Z

Pranesh Prakash prepared the India Report for Consumers International IP Watchlist 2012. The report was published on the A2K Network website.

Summary

India's Copyright Act is a relatively balanced instrument that recognises the interests of consumers through its broad private use exception, and by facilitating the compulsory licensing of works that would otherwise be unavailable. However, the compulsory licensing provision have not been utilized so far, because of both a lack of knowledge and more importantly because of the stringent conditions attached to them. Currently, the Indian law is also a bit out of sync with general practices as the exceptions and limitations allowed for literary, artistic and musical works are often not available with sound recordings and cinematograph films. There are numerous other such inconsistencies. Positively retrogressive provisions, such as criminalisation of individual non-commercial infringement also exist. India's Copyright Act is a relatively balanced instrument that recognises the interests of consumers through its broad private use exception, and by facilitating the compulsory licensing of works that would otherwise be unavailable. However, the compulsory licensing provision have not been utilized so far, because of both a lack of knowledge and more importantly because of the stringent conditions attached to them. Currently, the Indian law is also a bit out of sync with general practices as the exceptions and limitations allowed for literary, artistic and musical works are often not available with sound recordings and cinematograph films. There are numerous other such inconsistencies. Positively retrogressive provisions, such as criminalisation of individual non-commercial infringement also exist.

It is unfortunate that the larger public interest in copyright-related issues are never foregrounded in India. For instance, the Standing Committee tasked with review of the Copyright Amendment Bill has held hearings without calling a single consumer rights organization, and without seeking any civil society engagement, except for the issue of access for persons with disabilities. This was despite a number of civil society organizations, including consumer rights organizations, sending in a written submission to the Standing Committee.

This lopsidedness in terms of policy influence is resulting in greater imbalance in the law, as evidenced by the government's capitulation to a handful of influential multinational book publishers on the question of allowing parallel importation of copyrighted works. Furthermore, pressure from the United States and the European Union, in the form of the Special 301 report and the India-EU free trade agreement that is being negotiated are leading to numerous negative changes being introduced into Indian law, despite us not having any legal obligation under any treaties. Such influence only works in one direction: to increase the rights granted to rightsholders, and has so far never included any increase in user rights.

It is true that copyright infringement, particularly in the form of physical media, is widespread in India. However this must be taken in the context that India, although fast-growing, remains one of the poorest countries in the world. Although India's knowledge and cultural productivity over the centuries and to the present day has been rich and prodigious, its citizens are economically disadvantaged as consumers of that same knowledge and culture. Indeed, most students, even in the so-called elite institutions, need to employ photocopying and other such means to be able to afford the requisite study materials. Visually impaired persons, for instance, have no option but to disobey the law that does not grant them equal access to copyrighted works. Legitimate operating systems (with the notable exception of most free and open source OSes) add a very high overhead to the purchase of cheap computers, thus driving users to pirated software. Thus, these phenomena need to be addressed not at the level of enforcement, but at the level of supply of affordable works.

Source URL: http://bit.ly/QEJf5l
Click to download the report [PDF, 201 Kb]

For more details visit https://cis-india.org/a2k/consumers-international-ip-watchlist-report-2012