Centre for Internet and Society

Comments on the Draft Copyright (Amendment) Rules, 2019 concerning Statutory Licensing

sinha — 2019-07-11T07:04:35Z

The Centre for Internet & Society gave its comments on the proposed rules 29,30,31 of the Draft Copyright (Amendment) Rules, 2019. The comments were made in response to Notification G.S.R 393(E) published in the Gazette of India on May 30, 2019.

Preliminary

1. This submission presents comments to the Department for Promotion of Industry and Internal Trade (“DPIIT”), Ministry of Commerce and Industry pertaining to the notification G.S.R 393(E) containing the draft Copyright (Amendment) Rules, 2019 issued on 30^th May 2019.

2. We commend DPIIT on the release of the draft Copyright (Amendment) Rules, 2019 (“Draft Rules”) and are thankful for the opportunity to put forth its views via this public consultation.

3. This submission is divided into three main parts. This part, ‘Preliminary’, introduces the document; the second part provides an overview of the organization and its research in the field of intellectual property rights; and the third part contains CIS’ comments on the Draft Rules 29, 30, 31.

4. The third part contains two sections. In the first section, we discuss the legal validity of the Draft Rules 29,30,31. In the second part we discuss the general implications of extending the legal regime of broadcasting rights under the Indian Copyright Act, 1957 (“Act”) to works on the Internet.

About The Centre for Internet and Society

5. The Centre for Internet and Society (“CIS”) is a non-profit organisation that undertakes interdisciplinary research on internet and digital technologies from policy and academic perspectives. The areas of focus in respect of intellectual property rights include research on domestic copyright and patent laws, international trade agreements and treaties pertaining to these subjects, promotion of creators’ and users’ rights with a view to furthering access to knowledge and openness in the public interest. CIS has also been participating at WIPO-SCCR negotiations in the capacity of an Observer since 2009.

6. CIS values the fundamental principles of justice, equality, freedom and economic development. This submission is consistent with CIS' commitment to these values including the safeguarding of general public interest. Accordingly, the comments in this submission aim to further these principles.

Comments

7. Draft Rules 29, 30 and 31 pertain to section 31D of the Indian Copyright Act, 1957. The proposed change in Rule 29 seeks to expand the modes of broadcast for which notice for invoking statutory license under section 31D may be issued - which previously was restricted to only radio and TV modes of broadcasting; and the change in Rule 31 will permit the Appellate Board to determine royalties for all modes of broadcast.

8. In view of current state of technological advancement, it is safe to deduce that the new mode of broadcasting whose inclusion is being contemplated in relation to s. 31D via the changes is “internet broadcasting”. The changes will allow entities that operate over the Internet medium to apply for a statutory license under s. 31D of the Act. In the following part, we submit our specific comments in respect of Draft Rules 29,30,31.

a) Legal validity of the Rules: Vires vis á vis the Parent Act

As per s. 78(2)(cD), the power of the Central Government to make rules in respect of s. 31D expressly exists in respect of “the manner in which prior notice may be given by a broadcasting organisation under sub-section (2) of section 3ID.” Apart from this clause, a general rule-making power is conferred via s. 78(1) only for carrying out the purposes of the Act. We submit that this general power should be exercised within limits of rule-making in the nature of administrative and procedural detail, and should be in consonance with purposes of the Act. In respect of s. 31D especially, the purpose can be inferred from the legislative history of the provision. This was analysed by the Bombay High Court in Tips Industries v. Wynk Music,[1] where the court noted that the concerns raised before the Rajya Sabha Parliamentary Standing Committee (on the Copyright Amendment Bill (2010)) related to radio and television industries only, and in the court’s opinion those two modes specifically were contemplated while introducing s. 31D.[2] Primarily basis this rationale, the court concluded that “internet broadcasters” offering on demand streaming services cannot avail of s. 31D. Further, s.31D(3) expressly permits the Appellate Board to fix royalty rates only in respect of radio broadcasting and television broadcasting.

Hence, we submit that there is no power under s.78 or any other provision in the Act afforded to the Central Government to expand the scope of s.31D, directly or indirectly. In State of Karnataka v. Ganesh Kamath[3] the Supreme Court held that “it is a well settled principle of interpretation of statutes that the conferment of rule-making power by an Act does not enable the rule-making authority to make a rule which travels beyond the scope of the enabling Act or which is inconsistent there with or repugnant thereto”.

Thus, the extent to which the Draft Rules 29,30,31 alter the intent and scope of s.31D clearly leaves them ultra vires the parent Act. Rules that are ultra vires the parent Act for exceeding the limits of subordinate executive power are void.[4] Hence, the proposed Draft Rules 29,30,31 are both ultra vires their parent Act and void.

b) Implications of extending legal regime of broadcasting rights to works on the public Internet

The release of the Draft Rules 29,30,31 is another attempt to extend the statutory licensing to “internet broadcasters”. The first attempt was when the Central Government released an Office Memorandum[5] (dated 5^th September 2016) to extend statutory licensing under s.31D to “internet broadcasting” companies. We submit that this was based on an incorrect statutory construction by the Department of Industrial Policy and Promotion (“DIPP”) and was arbitrary in nature. Noted academics and scholars have highlighted several constitutional infirmities in respect of this memorandum.[6] Unfortunately, the current Draft Rules (29,30,31) raise similar concerns.

Separately, in the context of introducing a broadcasting right for works shared over the Internet – we submit that if the line of argument taken by DIPP that s. 2(dd) read with s. 2(ff) supports the inclusion of “internet broadcasting” is taken to its logical conclusion, any person/ entity communicating to the general public via the public Internet can claim protection of their broadcasters’ reproduction right under our Copyright Act. This “broadcast” will happen via multiple platforms such as YouTube, Facebook Watch, live-streaming platforms, on-demand platforms, etc., and such entities will be entitled to enjoyment of this right. This will lead to a dangerous accumulation of undeserved property rights in Internet giants; unlike traditional broadcasters these companies never put up initial upfront economic investment to distribute works to the public. They were launched on the public internet, and currently thrive primarily off user-generated content. Even in respect of protecting content that is actually created with their investment, copyright law will suffice with its remedies for infringement. Hence, there is currently very little economic and legal basis for extending the legal regime of broadcasting rights for works on the Internet. Thus, we submit that in the domestic approach to modernising our copyright legislation, we must refrain from considering distribution of born-digital/ digitised works over the public Internet equivalent to the function of broadcasting works over cable/ satellite.

9. We are thankful to DPIIT and the Ministry of Commerce and Industry for the opportunity to make these submissions. It would be our pleasure and privilege to discuss these submissions and recommendations in detail with members of DPIIT if the opportunity presents itself.

[1] See Bom (HC) judgment in Case No. NMCD/72/2019

[2] See 227^th Report of the Rajya Sabha Parliamentary Standing Committee on the Copyright Amendment Bill (2010) available at http://164.100.47.5/newcommittee/reports/EnglishCommittees/Committee%20on%20HRD/227.pdf

[3] (1983) 2 SCC 40

[4] See Supreme Court Welfare Association (1989) 4 SCC 187 and State of Karnataka (1983) 2 SCC 402.

[5] See ‘Office Memorandum’ available at https://dipp.gov.in/sites/default/files/OM_CopyrightAct_05September2016.pdf

[6] See Letter to Government on Internet Broadcasts (2016) by Shamnad Basheer available at https://spicyip.com/2016/09/letter-to-government-on-internet-broadcasts.html ; and Licensing of Internet Broadcasts under the Copyright Act: Key Constitutional Issues (2019) available at https://indconlawphil.wordpress.com/2019/01/25/guest-post-licensing-of-internet-broadcasts-under-the-copyright-act-key-constitutional-issues/

For more details visit https://cis-india.org/a2k/blogs/comments-on-the-draft-copyright-amendment-rules-2019-concerning-statutory-licensing

WIPO: Scope and rights of potential broadcasting treaty clarified

praskrishna — 2014-05-28T07:03:17Z

This post by Alexandra Bhattacharya was published in SUNS #7796 dated 5 May 2014.

Read the story posted on Third World Network here. CIS is quoted.

Integral concepts and the options on the scope of a proposed broadcasting treaty, and the substantive rights envisaged for broadcasting organisations have been further elucidated.

The 27th session of the WIPO Standing Committee on Copyright and Related Rights (SCCR) completed its two- and-half-day discussion on 30 April of the agenda item on a proposed Treaty on the Protection of Broadcasting Organisations - a 16-year-old issue in WIPO.

However, a number of member states (India and Brazil) pointed out that there was further need to tackle the technical issues and that there was still no clear consensus.

The results of the informal consultations (Regional Coordinators plus six) held by the committee's Chair have produced two tables based on Article 6 which deals with the "Scope of Application" of the proposed treaty, and with Article 9 on "Protection for Broadcasting Organisations" in the working document (SCCR/27/2 Rev).

There is no clear consensus on most of the elements in the tables, but they are meant to consolidate all the options and proposals currently in place.

The 27th session of the SCCR is taking place in Geneva from 28 April to 2 May.

In 2007, WIPO's General Assembly agreed to pursue a "signal-based approach" to drafting a new treaty to provide protection for broadcasting organisations, to ensure that provisions on signal theft in themselves did not give broadcasters additional rights over program content.

Results of Informal Consultations: Tables on Scope of Application and Rights

The informal consultations have resulted in a table on the Scope of Application of the treaty which relates to Article 6 of the proposed treaty. The potential applicable areas identified include:

(i) traditional broadcasting [and cablecasting](wireless or by wire)(+pre-broadcast signal);

(ii) simultaneous and unchanged transmission of broadcast program (simulcasting);

(iii) deferred linear transmission of broadcast program;

(iv) on-demand transmission of broadcasting program (catch up) and program-related material (to be defined); and

(v) internet originated linear transmission (webcasting).

Elements (ii) to (v) relate to transmission over the Internet [if included, only for traditional broadcasters/cable casters]. The Chair stated that there was greater emphasis on traditional broadcasting which included both wireless or by wire along with pre-broadcast signals. There was greater divergence with respect to transmissions over the internet with a majority position that simultaneous and almost simultaneous broadcasting should be part of the treaty. Some had also expressed the opinion that webcasting should be beyond the scope of the treaty.

The second table relates to rights for broadcasting organisations and is in the context of Article 9 on "Protection for Broadcasting Organisations".

This table includes: (i) simultaneous re-transmission of the broadcast signal to the public over any medium; (ii) Near simultaneous re-transmission of the broadcast signal to the public over any medium (to be defined); (iii) Transmission of the broadcast signal to the public from a fixation and over any medium (not limited in time) including the making available right; (iv) Fixation of a broadcast signal, reproduction of fixation of broadcasts, distribution of fixations (copies) of broadcasts, performance of broadcast signal in places accessible to the public [against payment of an entrance fee]; (v) Protection of pre-broadcast signals; and (vi) National Treatment when the protection is equivalent; reciprocity when there is a difference in the protection.

After the presentation of the tables in the plenary, Brazil said that "for the sake of transparency", it wanted to state that the informal discussions were helpful in the sense that they had produced a "deeper understanding of what we are talking about".

It stressed that it had tremendous difficulty in referring to the word "consensus", as many aspects were yet to be clarified. It underlined the need to see the discussion with a "grain of salt".

India supported the statement by Brazil, noting that although the committee had "grappled with many issues," there was need for a more technical discussion. In this context, it proposed that broadcasting engineering experts be invited to an informal experts' meeting during the next session of the SCCR.

Support for India's proposal was voiced by the United States, Brazil, El Salvador, Canada, and Colombia.

The European Union stated that the discussions showed that a number of delegations had expressed their support for covering traditional broadcasting and cablecasting transmissions. The most divergent views were with respect to simulcasting deferred transmissions and on-demand transmissions.

It also said that there was a need to have more discussion with respect to elements (ii) and (iii) of the table on Rights. It added that there could be flexibility on element four if there was a good solution for two and three.

The United States was of the opinion that the "charts" that pulled out the multiple proposals on the table allowed the delegation to understand the key elements better and also to get some initial indication of the thinking of different delegations on those elements.

It observed that there was general agreement as to the inclusion of traditional broadcasting over the air which is clearly within the mandate of the General Assembly.

Elements (i) and (ii) in the table on rights, the simultaneous and near simultaneous re-transmission of signals to the public were essentially the proposal of the United States for discussion purposes, it added.

Trinidad and Tobago stated for the record that it would like the scope of protection to include traditional broadcasting and cablecasting.

China stated that simulcasting should be included in the treaty.

Protection for Broadcasting Organisations: Exclusive Rights Discussed

The second day of the SCCR focused on Article 9 on "Protection for Broadcasting Organisations" which deals with the substantive rights envisaged in the protection for broadcasting organisations in the potential treaty.

The divergence in views related to the scope and range of the substantive rights to be given to broadcasting organisations. This issue, along with the Scope of Protection (Article 6), remains one of the integral areas of the proposed treaty where consensus is yet to be reached.

A consistent concern expressed by a number of member states and some stakeholders' groups such as those representing copyright providers (authors, actors, musicians) during the session, has been the need to ensure that the potential broadcasting treaty did not infringe or curtail the existing rights of underlying content providers of the broadcast.

As seen in the discussion on the Scope of Protection, the complexity of the issue was evident and member states were encouraged to work on a matrix of exclusive rights envisaged for broadcasting organisations in order to both cement progress and also for better conceptualisation.

[The current text of Article 9 on "Protection for Broadcasting Organisations" includes two Alternatives A and B which deal with exclusive rights to be authorised to broadcasting organisations.

[Alternative A lists fewer rights which include: (i) the re-transmission of their broadcast signals to the public, by any means; (ii) performance of their broadcast signal in places accessible to the public, for commercial advantage or using very large screens; (iii) the use of a pre-broadcast signal intended for them.

[Alternative B has a more extensive list of exclusive rights and includes: (i) the right of fixation of their broadcasts; (ii) the direct or indirect reproduction, in any manner or form, of fixations of their broadcasts; (iii) the re-transmission of their broadcasts by any means, including re-broadcasting, re-transmission by wire, and re-transmission over computer networks; (iv) the communication to the public of their broadcasts; (v) the making available to the public of the original and copies of fixations of their broadcasts in such a way that members of the public may access them from a place and at a time individually chosen by them; (vi) the transmission by any means for the reception by the public of their broadcasts following fixation of such broadcasts; (vii) the making available to the public of the original and copies of fixations of their broadcasts, through sale or other transfer of ownership.

[India's proposal in the Annex of the working document is essentially based on the right to prohibit, if done without authorisation, the following: (i) the re-broadcast of their signal through traditional broadcasting means; (ii) causing the broadcast to be seen or heard in public on payment of any charge; and (iii) make a fixation of signal for the purpose of re-broadcast.

[Additionally, for this session, Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, the Russian Federation, Tajikistan, Turkmenistan, Ukraine and Uzbekistan tabled a proposal (SCCR/27/6) in which a broad range of rights such as fixation and re-transmission rights are included.

[The United States has also included a proposal for "discussion purposes" which states that "Broadcasting organizations shall have the right to authorize the simultaneous or near-simultaneous re-transmission of their broadcast or pre-broadcast signal over any medium".]

The Chair sought comments from member states on how to move forward on the issue, particularly with respect to determining the range of rights to be given to broadcasting organisations.

Belarus, introducing the group proposal SCCR/27/6, said that adequate protection should be afforded to broadcasters, bearing in mind the economic investment required by them. It added that there should be the broadest scope for the protection to be enjoyed by the broadcasters.

Belarus stated that these rights have to be linked to re-broadcasting of any such content and with the broadcasting of the content in whatever form. It added that the exhaustion of the rights should be left to domestic legislations.
With respect to India's proposal, Belarus stated that the right to prohibit was not sufficient.

The United States stated that its proposal for discussion attempted to "cut through the debate on the scope of rights" and attempted to focus on a "single core right".

The proposal for a "right to authorize the simultaneous or near-simultaneous re-transmission" focused on the need to address the fundamental concerns of the broadcasting organisations within the scope of the 2007 General Assembly mandate on a signal-based protection.

The US added that it was suggesting no post-fixation rights at the international level and only for the protection of the signal. Any protection for post-fixation would be relying on the protection of the content.

The right to authorise the simultaneous or near-simultaneous re-transmission would include the broadcast and pre-broadcast signal, it explained.

It also noted that there had not been opposition to the treaty covering these elements during the meeting, adding that there had not been any consensus on post-fixation rights.

The US further suggested an approach which could be either (i) based on the US proposal, or (ii) used the US proposal as a basis and included some version of post-fixation rights.

It said that there was a need for something that "we can all agree to in the international level".

India stated that its proposal was based on protection for broadcasting organisations based on a "signal based" approach in the traditional sense. In this context, it supported protection for simultaneous broadcasting in the traditional sense and not for webcasting and simulcasting.

Mexico was of the opinion that there was a need to seek "the establishment of general standards" and the discussion had to focus on general principles and not on the details.

In this context, it supported the proposal by the US.

In a similar vein, South Africa noted the need for a general signal-based approach and supported the proposal by the US which was based on a narrow scope of rights.

Brazil also expressed support for the US proposal and stated that with this "narrow and simple" approach it would be possible to make progress.

It however expressed reservation about including other forms of protection other than for simultaneous and near simultaneous re-transmissions.

The European Union also agreed that there was consensus in the room as to the right to authorise or prohibit simultaneous transmissions by any means. However, there was a need to focus on transmissions from fixations where there was less clarity.

It added that there was a need to separate the discussion from fixation and post-fixation rights. There was also a need to be clear about what "near simultaneous" transmissions meant.

The EU said that there was a need to also be clear about what kind of rights were referred to with respect to the right to prohibit.

Canada stated that a single solution to signal piracy remained a challenge and that it was attached to finding a minimum standard today. It added that there was a need to look at both pre- and post-fixation.

It also noted that there were different modes of delivery of broadcasts and there were a number of alternatives in the text. In this context, it would be useful to develop a matrix to further the discussion.

The need to simplify the range of rights on the table was echoed by the US, Ecuador, Chile and Colombia.
The Russian Federation supported the approach in restricting rights in some way and to focus on agreements previously reached, particularly with reference to traditional broadcasting.

It added that with respect to including additional rights in the scope of protection, there would be a need to receive corresponding authority from the General Assembly to do that.

It reiterated that a signal-based approach had already been decided and " if we are going to keep looking at every nuance, then we will not get anywhere".

Iran stated that the aim of the exercise should focus on the "anti-piracy function" and the function of the treaty should stop all forms of piracy. It noted that one approach could be an umbrella solution as seen in the WIPO Performance and Phonograms Treaty.

The Chair proposed informal consultations (Regional Coordinators plus six) in order to make progress on a matrix with respect to the range of rights and the scope of application of the potential treaty.

Concerns Expressed by Observers

A number of observers to the SCCR representing broadcasting organisations expressed the need for a treaty for the protection of broadcasting organisations; however, a number of other organisations also expressed reservations with the current work being undertaken in the SCCR.

The Trans-Atlantic Consumer Dialogue (TACD) stated that it opposed the idea of granting any new layer of intellectual property rights for broadcasters that would make it more expensive and more complex to legally obtain access to and use of information.

It explained that this treaty could create many problems for consumers especially if it is without very clear fixation rights, the rights in literary, dramatic, musical, artistic works, performances, films, sound recordings, broadcasts and other material in which there are copyright and related rights.

The Electronic Information for Libraries (EIFL) and the International Federation of Library Associations and Institutions (IFLA) said that they saw no compelling public policy reason for a new international instrument on the protection of broadcasting organisations, because piracy of broadcast signals is already adequately dealt with under existing laws and treaties.

They explained that the creation of a new layer of rights that affects access to content is of great concern to librarians, because it imposes an additional barrier to access to knowledge, especially to content in the public domain and that libraries have practical experience of such over-protection caused by multiple layers of rights.

EIFL and IFLA urged the member states to consider the costs to taxpayers and society, as well as the perceived benefits of this proposed treaty.

The Centre for Internet & Society (CIS) also expressed concerns regarding the intended scope and language of Article 9 on "Protection for Broadcasting Organisations" in Working Document SCCR/27/2 Rev.

It was of the opinion that the current language expanded the scope of the proposed treaty and was likely to have the effect of granting broadcasters rights over the content being carried and not just the signal.

It stated that the language in Article 9 envisaged fixation and post-fixation rights for broadcasting organisations, for instance, among others, those of reproduction, distribution and public performance and this was inconsistent with a signal-based approach.

Secondly, it expressed reservations on the inclusion of "communication to the public" reflected in Article 9 Alternative B.

It stated that communication to the public was 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 the CIS believes is the mandate binding on this Committee.

The Chair's conclusions on all the agenda items are expected to be circulated and finalised on the last day of the session (2 May 2014).

The remaining days of the SCCR focused on Exceptions and Limitations for Libraries and Archives as well as Limitations and Exceptions for Educational, Teaching and Research Institutions and Persons with Other Disabilities.

For more details visit https://cis-india.org/news/third-world-network-may-5-2014-wipo-scope-and-rights-of-potential-broadcasting-treaty-clarified

5th Global Congress On IP And The Public Interest: Successes, Strategies Highlighted

Admin — 2018-10-31T01:57:59Z

More than 400 activists, academics and practitioners from over 50 countries gathered at this year’s Global Congress on Intellectual Property and the Public Interest, according to organisers.

The story by David Branigan was published in Intellectual Property Watch on October 3, 2018.

At the Congress, participants shared success stories, developed strategies, and engaged in critical dialogue to re-think and re-invent intellectual property systems that serve the public interest.

The 5th Global Congress on Intellectual Property and The Public Interest was hosted by American University Washington College of Law in Washington, DC from 27-29 September. The core goal of the Congress, according to the website, is “to promote evidence-based policy-making by fostering partnerships between academics and policy advocates from around the world.”

The Congress featured three concurrent, but interconnected, tracks centred around copyright user rights, access to medicines, and trade. A list of the many panels, workshops and other events of the Congress can be found in the event agenda.

Key themes that emerged from the plenary sessions of the Congress include the need to take a critical look at the association between intellectual property and development, the important roles that both IP activism and academic research play in shifting practice, and the complex tension between pursuing incremental IP reform in the short-term, while envisioning and building toward IP system change in the long-term.

Participants were asked by organisers to contribute statements and to vote in an online poll to chart and map participant perspectives at this year’s Congress. The interactive results of the poll can be viewed here.

Access to Medicines Track

Intellectual Property Watch followed the access to medicines track throughout the Congress, to develop a broad picture of the persistent challenges and new strategies in this field, and to identify key initiatives to feature in the coming months. Below are some of the themes that emerged over the course of the sessions, along with key highlights.

Compulsory Licensing

Some participants highlighted their countries’ use of compulsory licensing to reduce drug prices and to maximise health budget capacity, with notable examples from Ecuador, Chile and Malaysia. Participants identified that many other countries, however, are not taking full advantage of these flexibilities, which can be partly attributable to a lack of awareness regarding these flexibilities, and a lack of systems to employ them. They noted that this is often compounded by IP-centric technical assistance that frames strong IP systems as necessary for development. Many participants argued that compulsory licensing, along with other intellectual property flexibilities, should be fully normalised, and that IP law should be structured to maximize the use of these flexibilities, rather than treat them as exceptions. Some also argued for the institution of international or regional coordination mechanisms for compulsory licensing.

Competition Law

Many participants, representing activist organisations working for access to medicines, noted that their campaigns were largely focused on the price of a particular drug in a particular country. Pursuing access to medicines on such a piecemeal basis, they explained, does not produce sustainable change within the IP system itself. This, they noted, is a similar challenge faced when issuing compulsory licences. Participants explained that pursuing strategies based in competition law could perhaps offer a more sustainable solution to address excessive pricing across a range of drugs. This strategy, they explained, could move forward key legal reforms to systemically challenge pharmaceutical monopolies and bring about more competitive drug pricing.

Innovation

According to participants, the term innovation infers a particular narrative, similar to “intellectual property,” and has been used by industry to justify the pharmaceutical patent system. One participant explained that patents are currently being granted on the basis of utility, rather than real inventiveness. He explained that the term innovation has come to represent the industry-led process of shaping markets and cycles of consumption, and that therefore, we need to reconsider our use of the term.

Research and Development

Many participants highlighted the dysfunction of the current monopoly incentive system for pharmaceutical research and development, and advocated for other systems such as delinking the price of pharmaceuticals from the cost of research and development and the volume of sales. Others highlighted examples of how drugs for neglected diseases can be developed and manufactured without intellectual property incentives, and still others how drug licences can be efficiently pooled to facilitate widespread generic drug production. Another participant further illustrated the dysfunction of the current system, noting that much of the research and development of patented pharmaceuticals was publicly funded, and that there needs to be greater public accountability in drug pricing.

Medicines as Non-Patentable

One important perspective, expressed by participants across tracks, is simply that medicines should be non-patentable and accessible to all people, without restriction.

Intellectual Property Watch will feature some of the key access to medicines initiatives highlighted at the Congress in greater depth and detail in the coming months.

Background of the Global Congress

The First Global Congress on Intellectual Property and the Public Interest was held in 2011 at American University Washington College of Law in Washington, DC, and the specific policy goals of the Congress were summarized in the 2011 Washington Declaration on Intellectual Property and the Public Interest.

The Congress was subsequently hosted in 2012 by Centro de Tecnologia e Sociedade of FGV Direito, in Rio de Janeiro, Brazil, in 2013 by University of Cape Town IP Unit, in Cape Town, South Africa, and in 2015 by the Centre for Internet and Society, in New Delhi, India. Intellectual Property Watch has attended them all.

More background information on the Global Congress on Intellectual Property and the Public Interest can be found at infojustice.org.

For more details visit https://cis-india.org/a2k/news/5th-global-congress-on-ip-and-the-public-interest-successes-strategies-highlighted

Stakeholders Consultation on draft WIPO Treaty to Protect Broadcasting Organization

Admin — 2018-11-14T02:26:56Z

Anubha Sinha participated in a stakeholder consultation organized by the Ministry of Commerce and Industry, Govt. of India to discuss the various aspects of draft WIPO Treaty to Protect Broadcasting Organization, which is under discussion in Standing Committee on Copyright and Related Rights at Copyright Office in New Delhi on October 23, 2018.

Notice for the Stakeholders Consultation Meeting

SCCR 36th Session

SCCR 37th Session

For more details visit https://cis-india.org/a2k/news/stakeholders-consultation-on-draft-wipo-treaty-to-protect-broadcasting-organization

CIS Intervention on the Treaty for the Visually Impaired at SCCR/SS/GE/2/13

pranesh — 2013-04-25T11:57:02Z

The informal session and special session of the Standing Committee on Copyright and Related Rights was organised by WIPO in Geneva from April 18 to April 20, 2013. Pranesh Prakash participated in the session and spoke about the rights of the visually impaired. An abridged version of this was read out during the meeting on Saturday, April 20, 2013, at 22:15 due to time restrictions.

Thank you, Mr. Chair. I represent the Centre for Internet and Society, a policy research organization based in India. India, as everyone who has been attending these SCCR meetings since 2008 would know, has the world's largest population of blind and visually impaired persons. Two of my colleagues at CIS — Nirmita Narasimhan and Anandhi Viswanathan — are blind, and another one of my CIS colleagues who passed away recently (and whose tireless efforts were remembered here at WIPO recently with a minute of silence) — Rahul Cherian — spent many years working extensively on policy issues related to persons with disabilities, and in particular worked here in WIPO as part of Inclusive Planet, and with the World Blind Union. Hence, this issue is not an abstract one for us, but a very real one.

I commend the delegates here for taking some steps forward during this meeting. However, very disappointingly, with those few steps forward, we have seen a few things we had taken as settled being opened up again, and many steps being taken backward. The already-onerous requirements and procedures laid down in this treaty are seen by a few countries as not being onerous enough. Blind people, it is believed, might 'wrongly' take advantage of these provisions. Worse yet, there is a fear that sighted persons might take advantage of these provisions relating to the blind.

The absurdity of these fears somehow seems to have escaped the notice of many involved in these discussions. There is nothing in these provisions that would convert infringement by sighted people — even if under the pretence of this treaty — magically into lawful acts. And, indeed, there are multifarious ways of infringing copyright without such resort to this treaty. Yet, these very same onerous requirements (such as the "commercial availability" requirement) and bureaucratic processes will unrealistically increase transaction costs for the visually impaired and render infructuous the very purpose of this treaty. Those delegations who are unrelenting on these issues seem to living in a bizarre world where sighted infringers deviously use exceptions granted in an international copyright treaty to engage in piracy; a bizarre world where scanners and the Internet have not been invented. And by refusing to acknowledge these ground realities, they are merely forcing the blind into wearing eye-patches and being 'pirates'.

In particular, I would like to deplore the stand taken by the European Union, being represented here by the European Commission, whose actions run contrary to the call made in May 2011 by the European Parliament to "to address the ‘book famine’ experienced by visually impaired and print-disabled people". This is despite the European Parliament having reminded "the Commission and Member States of their obligations under the UN Convention on the Rights of Persons with Disabilities to take all appropriate measures to ensure that people with disabilities enjoy access to cultural materials in accessible formats, and to ensure that laws protecting IPR do not constitute an unreasonable or discriminatory barrier to access by people with disabilities to cultural materials". The EU, and a few countries of Group B, including the United States, have been slowly bleeding this treaty to death through over-legislation and bureaucracy.

The United States' and EU's stand on technological protection measures, if accepted, would mean that publishers will technologically be able to prevent the blind from enjoying accessible works, even when they can't do so legally on the basis of copyright law. The European Union's stand on all issues has been extraordinarily harmful, and seems to have an aim to make this treaty as unwieldy and unworkable as possible. They seem to regard the Berne Appendix as their model in this regard: an international agreement that exists on paper for the benefit of developing countries, but because of its bureaucratic processes is little used, and is widely regarded as a failure.

Here is what it boils down to: when it comes to the economic rights of copyright owners, current international law insists that there be no formalities, yet when it comes to the human rights of visually impaired person to access information — a right specifically guaranteed to them under the UN Convention on the Rights of Persons with Disabilities — some delegates in this room wish to ensure as many formalities as possible.

The rights of the visually impaired are being buried under unnecessary and complicated requirements and bureaucratic practices. This injustice must stop: the delegates here have the power to do so. And if the EU does not wish to be viewed as villains by all persons with print disabilities and all persons with conscience, it should stop trying to make this an ineffectual treaty. Many have quipped that this is fast becoming "A Treaty for Rightholders Against Persons with Visual Impairments and Print Disabilities" or alternatively "A Treaty for Morally Impaired Persons and Persons with Ethical Disabilities". That is an international shame.

Having colonized much of the world into using English, French, and Spanish, these European countries along with the USA are now in a position to be both culturally dominant and to refuse to sign up to this treaty if it helps blind persons outside of the EU and the USA who seek access to texts in these languages. These remnants of colonialism must be stamped out.

For more details visit https://cis-india.org/a2k/blogs/cis-intervention-eu-blocking-wipo-treaty-for-blind

India- EU FTA: A Note on the Copyright Issues

nehaa — 2013-07-03T06:47:08Z

In this blog post, Nehaa Chaudhari gives us an overview of some of the provisions of the Free Trade Agreement (FTA) and the copyright issues identified therein.

Click to download the India-EU FTA: A Note on Copyright Issues (PDF, 205 Kb)

Against the backdrop of ongoing negotiations dating back to 2007, and, more recently, with parties being unable to make substantial progress on the Indo-EU FTA[1] this note presents an overview on some of the provisions of the FTA and the copyright issues identified therein. This note deals with the issues on two levels- first to examine the impact of intellectual property right provisions in FTAs in general and second to apply these generic principles to the Indo- EU FTA specifically.

Introduction

Investment agreements, of which bilateral investment treaties are a part, and investment chapters in various FTAs often result in an increase in the effective levels of intellectual property protection in one of the countries that is a part to the agreement. This can be done either explicitly, where ‘investment’ may be defined to include IP, or implicitly, for instance, through an expropriation provision.[2] This has concurrently witnessed the growing realization that the promotion of these increased IP standards is not suited to the need of developing countries. Therefore, it has been observed[3]that there is now an attempt by the developed countries to use FTAs as a forum to push for higher standards of IP protection in developing countries, and to restrict the scope of the flexibilities offered by TRIPS, most notably in the sectors of protection of plant varieties, patents and access to medicine, farmers rights and access to information.[4]This approach is inherently problematic, because it then infringes on the developing countries’ ability to achieve their developmental objectives.

Dismantling the Arguments In Favour of Increased IP Protection

A prevalent view of thought is that in order to increase Foreign Direct Investment (FDI), developing countries would have to increase their IP protection. This section of the paper seeks to argue that this might not necessarily be the case.

An illustration of the aforesaid proposition may be Heald’s criticism[5] levied on Mansfield’s paper[6] arguing that there was a direct correlation between the level of intellectual property protection in a country and the foreign direct investment into that country. Further, a study[7] conducted under the aegis of the United Nations has suggested that there was a ‘considerable incentive’ for countries to use the flexibilities provided under TRIPS to maximise net benefits for their development; stating that while in countries with a capacity to innovate stronger IPR protection can reap some benefits in terms of greater innovation at home and a greater diffusion of technology, the same cannot be said about nations without such a capacity, and may in fact impose additional costs.[8]

Specifically in the area of copyright, it has been observed that increased copyright protection can hamper the growth and development of knowledge based industries. Sanya Smith argues that those who control copyright have a ‘significant advantage’ in the knowledge based economy, and says that in the current scenario where ownership of copyright is largely in the hands of industrialized nations, this places developing nations, and smaller economies at a significant disadvantage.[9] She also goes on to argue that increasing copyright protection alone does not seem to be sufficient to stimulate industries, and there may other factors involved. Additionally, copyright could also significantly increase the cost of creative industries.[10] More fundamentally however, access to information and knowledge are amongst the most affected areas as a result of tightening of copyright laws, leaving students, academicians, researchers, scientists and persons with print disability significantly disadvantaged.

Implications of the Copyright Provisions in the Proposed Indo- EU FTA

Based on the general discussion earlier, this section of the paper seeks to examine the proposed and long debated Indo- EU FTA for the concerns enumerated earlier. As things currently stand, both parties have failed to reach a consensus on various substantial differences, and a ministerial meet originally scheduled for June seems unlikely to take place.[11]

It has been observed[12] that the Indo- EU FTA[13] includes various provisions that preserve the flexibilities offered under the TRIPS framework. This is extremely critical from the perspective of developing countries, given that access to knowledge is an extremely important ideal to be preserved. For instance, as noted by Knowledge Ecology International[14]the proposed FTA includes Articles 7 (Objectives) and 8 (Principles) of the TRIPS[15] by reference. Further, the language of Article 13 under the proposed FTA explicitly recognizes the importance of the Doha Declaration, which is a positive step.[16] It has been said however, that stronger language where the parties ‘affirmed’ their obligations under the Declaration could have been used.[17] However, this does not take away from the fact that many of the provisions of the proposed FTA are extremely problematic, as will be discussed in the forthcoming parts of this paper.

Problematic Provisions

The main concern that has emerged from this FTA is the fact that some of its provisions dealing with IPR go beyond the mandate as under the TRIPS Agreement. For instance, as pointed out by Shamnaad Basheer to Intellectual Property Watch, various provisions now provide for intermediary liability, which isn’t present in TRIPS. He also adds however, that if the initial stand of the government that India would not go TRIPS plus continues to hold, the government should indeed adopt a strong stance and not cave in to the said provisions.[18] An overview of some of the problematic provisions has been presented hereafter:

International Obligations

As per the proposed treaty, protection granted by the parties should be in accordance with the Berne Convention, the Rome Convention and the WIPO Copyright and Performance and Phonograms Treaties. Snehashish Ghosh in his blog post[19] writes that the EU stipulates compliance with Articles 1 through 22 of the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (1961), Articles 1 through 14 of the WIPO Copyright Treaty – WCT (Geneva, 1996), Articles 1 through 23 of the WIPO Performance and Phonograms Treaty – WPPT (Geneva, 1996). It is critical to note that the Rome Convention is not in force in India[20], and that India is not a party to either the WCT[21] or the WPPT[22], and therefore, this provision would have the effect of substantially surpassing all obligations that India has at the moment under multilateral international agreements.

Technical Protection Measures (TPMs) and Digital Rights Management (DRM)

A TPM, understood simply, is a lock in a digital format, placed on digital material to prevent access to or copying of the material in question. The problem with such measures is that they can prevent even those forms of copying which are legal (for instance, the copying of a movie on which copyright has expired could be prevented), creating a potentially infinite monopoly over the product in question. India, in its negotiations with the EU, has agreed to sweeping language under this provision, where TPMs and DRM measures are broadly defined. The Agreement further provides for limitations on TPM protections only to persons who have “legal access to the protected work or subject matter”.[23]

Copyright Expansion

There are various provisions under the proposed FTA that have the effect of copyright expansion. To begin with, the duration of protection for photographic works is not expressly mentioned in the proposed agreement.[24] Snehashish Ghosh concludes that the term of photographic works is unclear in the proposed FTA. He writes that the proposed FTA makes it mandatory for the parties to comply with the Berne Convention, and all literary and artistic work under the proposed FTA is to be construed as the same as the Berne Convention[25]. Photographic works are included under literary and artistic works under the Berne Convention, and the rights of an author in case of photographic works are protected for a minimum period of 25 years. However, the proposed FTA extends the period of protection to beyond that prescribed by the Berne Convention and states that protection is given to literary and artistic works (as defined in the Berne Convention) for a period of the duration of the life of the author plus fifty years after this death. It further states that works for which the period of protection is not calculated from the death of the author, and which have not been lawfully made available to the public within at least 50 years from their creation, the protection shall terminate.[26]

Article 7.6 (proposed by the EU), limits the resale rights of a downstream purchaser. It has been noted by Knowledge Ecology International[27] that this seems to give the author of an original work of art a right in perpetuity, to receive a royalty for the resale of the piece of art, where such right cannot be waived or transferred by the author of the work. Therefore, a situation would arise where each time a person who has purchased the work wants to resell the same, he would have to pay royalties to the original author.[28] The observations further go on to note that royalties are not limited, and the amount has to be determined by national legislation. Further complicating the situation is the fact that the provision does not cease to apply after a given number of re-sales, and continues to the death of the author (but might not into the 50 year protection post the death of the author).[29]

Exceptions and limitations for copyright have been covered under Article 7.9(1) of the proposed FTA, and they may be created “only” in accordance with the three step test, which is essentially that (a) the exceptions and limitations must apply in certain special cases; (b) must not be in conflict with the normal course of exploitation of the subject matter in question and (c) must not unreasonably prejudice the legitimate interests of the right holders.[30] It has been observed that this test is more restrictive than TRIPS, Berne Convention, Rome Convention or the WCT.[31]

On the plus side, temporary copies have been excluded from copyright protection, as per Article 7.9(2) of the proposed FTA, which would ensure the proper functioning of technology.

Persons with Disabilities

There is nothing that deals with the import/export or cross border exchange of files/documents/books etc. for persons with disabilities.

Cross Border Measures

Cross Border Measures have been dealt with under Article 30 of the proposed FTA. It is interesting to note that under this Article the EU has proposed the application of border measures to exports as well. This is contrary to the position laid down in the TRIPS Agreement, which has this requirement only for importing infringing goods.[32] Further, the EU also seeks to expand the applicability of such measures to include those goods which also infringe designs or geographical indications. Additionally, Article 30 also leaves out certain TRIPS safeguards, for instance, one that requires the right holder to provide adequate evidence for a prima facie case of infringement.[33]

Intermediary Liability

It has been suggested that the EU, under the garb of protecting intermediate service providers from liability for infringement by users, is purporting to place a greater burden on the providers in question, of policing user activity.[34] For instance under Article 35.1.1 of the proposed FTA, while service providers are not under any general obligation to seek facts or circumstances that could indicate illegal activity, they may be obligated to promptly inform competent authorities of these alleged illegal activities undertaken/information provided by recipients of their service. [35] Otherwise, the providers may also be required to communicate to the authorities, on their request, information that would enable the identification of their service with whom they have storage agreements, as per Article 35.1.2.[36] It has been rightly identified by Glover Wright, that such provisions would only serve to increase tensions between the users and their service providers, with relations dictated by concerns about liability, and barriers in the sending, receiving and storing of information freely. It would be a tricky question for intermediate service providers to check what would constitute ‘knowledge’ and how they were to best safeguard themselves from liability.[37] Therefore, the author is inclined to agree with Wright’s submission that India needs to reject all provisions of liability of intermediate service providers as discussed above.

IP Enforcement

There exist, as regards the enforcement of rights, many problematic provisions in the proposed FTA. For starters, the EU has proposed that interlocutory injunctions may also be issued under the same conditions against an intermediary whose services are being used by a third party to infringe intellectual property rights.[38] This may be found under Article 22.1 of the proposed FTA, and is inherently problematic for being a provision far beyond the mandate as laid down by TRIPS.

The EU is also pushing for the use of very explicit language as regards seizing movable and immovable property of the alleged infringer as a precautionary measure. This also extends to the blocking of the bank accounts and other assets of the said infringer, and to this end, competent authorities may even order the communication of bank, financial or commercial documents, or access to the said information.[39] It is critical to note that such a provision is greatly problematic as being rather vague in its approach, and very readily compromising privacy for ‘alleged’ acts of infringement.

It is further critical to note that while Article 20 states that courts should have the power to grant ex parte order to collect evidence that is allegedly infringing, there are no safeguards provided for protection of a bona fide defendant whose premises might have been raided wrongly. It is submitted that provisions that safeguard the interests of defendants are of prime importance, especially in the Indian set up, where courts are as it is rather generous in their granting of ex parte orders.

Concluding Observations

While India may stand to benefit from the proposed FTA with the EU, there remain significant IP related issues that need to be ironed out before India comes to any consensus about the agreement and ratifies the same. On the basis of the discussion over the course of this paper, it may be seen that the provisions on intellectual property rights are problematic on various levels, particularly in the areas of expansion of copyright, the inclusion of TRIPS plus provisions, cross border measures, TPMs, liability of service providers and enforcement mechanisms.

Discussions in the first half of this paper have demonstrated that increased IP protections do not necessarily translate into increased FDI and may in fact stifle innovation. Further, the warning to developing countries against adopting IPR standards fixed by developed nations has been sounded many times over, and is one that needs to be heeded to very closely for developing nations to achieve their developmental objectives.

India has over a period of time established an IP regime that is consumer friendly. In adopting the proposed FTA in its current form, she risks endangering this regime that has thus far been instrumental in proliferating emerging technologies in the county.[40] Given that India has already acceded to international standards for IPRs as a result of being a member of the WTO and being TRIPS compliant, there is no cogent reason to be made out that warrants the accession to an FTA with TRIPS plus provisions. India ought to continue to push back strongly on these fronts, bearing in mind that its stance could very well set the tone for other such agreements in South Asia. From the way things stand at the moment, it is indeed a matter of some relief that the ratification of this proposed FTA still appears to be at a considerable distance.

[1].Hereafter referred to as the FTA.

[2]. Sanya Reid Smith, Intellectual Property in Free Trade Agreements, for the UNDP Regional Trade Workshop (17-18 December, Penang, Malaysia), available at http://bit.ly/11W8dqy (last accessed 04 June, 2013).

[3]. Id.

[4]. Id at 5.

[5]. Supra note 2, citing PJ Heald, Information Economics and Policy 16 (2004) 57-65

[6]. Edwin Mansfield, Intellectual Property Protection, Foreign Direct Investment and Technology Transfer, International Finance Corporation: Discussion Paper No. 19, available at http://bit.ly/18V4D5v (last accessed 05 June, 2013)

[7]. See generally- Rod Falvey et. al., The Role of Intellectual Property Rights in Technology Transfer and Economic Growth: Theory and Evidence, United Nations Industrial Development Organization: Discussion Paper (2006), available at http://bit.ly/11JBR4o (last accessed 05 June, 2013).

[8]. Id.

[9]. Supra note 2 at 23.

[10]. Supra note 2 at 23.

[11]. PTI, India – EU FTA Talks Fail to Bridge Gaps, available at http://bit.ly/19LJaeP (last accessed 05 June, 2013).

[12]. Krista Cox, Quick Reaction to the EU/India (BTIA) Negotiating Text, available at http://keionline.org/node/1693 (last accessed 04 June, 2013).

[13]. Hereafter referred to as the FTA

[14]. KEI Staff, More Notes on the India EU FTA (BTIA), available at http://keionline.org/node/1692 (last accessed 05 June, 2013).

[15]. See http://bit.ly/13XhCfZ for more details, and for the bare text of the Articles. (last accessed 05 June, 2013).

[16]. Supra note 14.

[17]. Supra note 12.

[18]. Patralekha Chatterjee, Leaked IP Chapter of India- EU FTA Shows TRIPS-PLUS Pitfalls for India, Expert Says, available at http://bit.ly/Y7w70e (last accessed 05 June, 2013).

[19]. Snehashish Ghosh, Analysis of Copyright Expansion in the India-EU FTA (July 2010), available at http://bit.ly/ysitEC (last accessed 03 June, 2013).

[20]. For the status of Contracting Parties, see http://bit.ly/UITpsX (last accessed 05 June, 2013).

[21]. For the status of Contracting Parties, see http://bit.ly/f92xL2 (last accessed 05 June, 2013).

[22]. For the status of Contracting Parties, see http://bit.ly/fEsUAF (last accessed 05 June, 2013).

[23]. Supra note 14.

[24]. Supra note 19.

[25]. Supra note 19.

[26]. Supra note 19.

[27]. Supra note 12.

[28]. Supra note 12.

[29]. Supra note 12.

[30]. Supra note 12.

[31]. Supra note 14.

[32]. Supra note 12.

[33]. Supra note 12.

[34]. See Article 35 of the Proposed FTA.

[35]. Glover Wright, A Guide to the Proposed India-European Union Free Trade Agreement, available at http://bit.ly/16Dfuga (last accessed 05 June, 2013) at 12- 14.

[36]. Id.

[37]. Id.

[38]. Thiru, EU-India FTA: EU Pushes for IP Enforcement- IP Chapter Draft Text Under Negotiation (2013), available at http://keionline.org/node/1681 (last accessed 05 June, 2013).

[39]. See Article 22.3 of the proposed FTA.

[40]. Supra note 35.

For more details visit https://cis-india.org/a2k/blogs/india-eu-fta-copyright-issues

Primer on the Treaty for the Visually Impaired

pranesh — 2013-06-25T08:47:18Z

In this primer, Pranesh Prakash and Puneeth Nagaraj explain what effects a WIPO Treaty for the Visually Impaired can have and who's opposing it.

A Primer on the provisions of the TVI and ongoing negotiations

The Treaty on Limitations and Exceptions for Visually Impaired Persons/Persons with Print Disabilities (“TVI” for short) is a landmark international instrument in recognizing the crucial link between copyright limitation and greater access to visually impaired persons / persons with print disabilities (“VIPs” for short). Below is a summary of the provisions of the Treaty and the benefit it will bring to VIPs, and the kinds of speed-bumps that rich countries are trying to place to make this treaty ineffective for the blind, the majority of whom live in poor countries.

1. Exceptions in Domestic Copyright Law

Currently, in most countries, only the owner of copyright to a particular book has the right to convert it into an “accessible format” (e.g. Braille, audio book, DAISY book, etc.). This treaty aims to create an exception to this rule by allowing print disabled persons, their representatives and non-profit ‘authorized entities’ the ability to convert books for the benefit of VIPs without seeking permission. The treaty would leave it up to each country whether their law will require such conversions to be paid or not since there is no uniformity on this question among countries that have national exceptions.

Opposition: The United States, European Union, France, Australia, Canada, and the publishing lobby have asked for multiple conditions for creation of accessible formats. They wish to confine this exception to non-profits, prevent translations, and ensure that books that are “commercially available” can be excluded, and require that countries who wish to use this exception have to comply with an onerous test called the “three step test”. Internationally, rights holders have zero formalities for gaining copyright (which, by international treaty, does not even have to be registered). But the rights holders want to ensure as many bureaucratic hurdles are put to exceptions as possible.

2. Cross-border Transfer of Accessible Works

One of the main purpose main purpose of the TVI is to increase the cross-boundary exchange of copyrighted works in accessible formats. According to the World Health Organisation, 87% of the visually impaired live in underdeveloped countries. Bangladesh and Swaziland, for instance, spend very little money on converting books, while in the USA, millions of dollars are spent both by the government and by charities. If this treaty is passed the way the World Blind Union and other pro-disability NGOs are asking, a blind girl from Bangladesh would be able register with a US-based site like Bookshare.org, after proving she’s blind, and just download the book she needs in a format that is accessible to her.

Opposition: The European Union and United States want make this non-mandatory. They also wish to restrict the ability of the Bangladeshi blind girl from accessing these books by allowing trade only between non-profit ‘authorized entities’. Unfortunately, many developing world countries (like Swaziland) don’t have any authorized entities to speak of, leaving blind people there stranded. For a treaty to be effective, individuals must be granted the right to import books as well. The European Union also wishes for a ‘commercial availability’ clause, meaning that if a book is ‘commercially available’ in the receiving country, then the authorized entity can’t export. In Europe itself there are almost no countries (with the UK being an exception) that have such a requirement when it comes to domestic conversions, but the EU still wants to ensure that as a requirement for poor countries. It is very difficult for an authorized entity located in the USA to determine in each and every case whether an accessible format of the book is ‘commercially available’ in the hundreds of countries they will receive requests from. Importantly, even a book priced exorbitantly or available only for those with expensive iPads may be considered ‘commercially available’, even if it is practically out of reach of the blind in the receiving country. This clause must go if the treaty is to be meaningful.

3. Digital locks

If digital locks (often called “Digital Rights/Restrictions Management” or DRMs) are used, then technologically, the blind can be restricted from enjoying a work which they have a legal right to access. For instance, Amazon has limited — at the behest of the Authors’ Guild of America — the ability of blind people to get their Kindle e-book readers to read aloud a book, and did so using digital locks. The TVI proposes that countries be required to ensure that the blind have effective access to books, even if they have digital locks.

Opposition: The United States and the publishing lobby is the biggest opponent of this provision. They have a system under which the blind are not required to automatically be granted the right to ‘circumvent’ the digital lock to make a book accessible even if they have bought an e-book, but have to granted permission to do so every three years by the government. The most recent three-yearly review found that the blind groups did not make out a strong enough case to justify granting them an exception, but thankfully this determination was overruled by the US Librarian of Congress. Thus the TVI must ensure that publishers cannot technologically impose restrictions on a book for the blind that they can’t do legally.

4. Translation

Another hot-button issue is the right to translation. Given that the biggest exporters of books, due to their colonial legacy, are USA, UK, France, and Spain, it is imperative that the blind in developing countries have access to these books in languages that they can understand. Very unfortunately, most of these languages are not profitable-enough markets for publishers to publish accessible translated books. Given this, it is necessary for charities to be able to make translations of accessible works specifically for the blind.

Opposition: The European Union and the publishing lobby is strongly opposing this, claiming that this will result in the blind having better access than the sighted. This is a false claim. A sighted student might have access to a translated book (made without an exception), but the blind student might not. For this has no merit as it ignores the social consequences of disability. This provision will merely bring the visually impaired to the same level as the rest of the population and not give them some illusory advantage.

For more details visit https://cis-india.org/a2k/blogs/primer-on-tvi

CIS's Closing Statement at Marrakesh on the Treaty for the Blind

pranesh — 2013-07-03T12:01:25Z

Pranesh Prakash read out an abridged version of this statement as his closing remarks in Marrakesh, where the WIPO Treaty for the Blind (the "Marrakesh Treaty") has been successfully concluded. The Marrakesh Treaty aims to facilitate access to published works by blind persons, persons with visual impairment, and other print disabled persons, by requiring mandatory exceptions in copyright law to enable conversions of books into accessible formats, and by enabling cross-border transfer of accessible format books.

Thank you, Mr. President.

I am truly humbled to be here today representing the Centre for Internet and Society, an Indian civil society organization. If I may assume the privilege of speaking on behalf of my blind colleagues at CIS who led much of our work on this treaty, and the many blindness organizations we have been working with over the past five years who haven't the means of being here today, I would like to thank you and all the delegates here for this important achievement. And especially, I would like to thank the World Blind Union and Knowledge Ecology International who renewed focus on this issue more than 2 decades after WIPO and UNESCO first called attention to this problem and created a "Working Group on Access by the Visually and Auditory Handicapped to Material Reproducing Works Produced by Copyright".

While doing so, I would like to remember my friend Rahul Cherian — a young, physically impaired lawyer from India — who co-founded Inclusive Planet, was a fellow with the Centre for Internet and Society, and was a legal adviser to the World Blind Union. He worked hard on this treaty for many years, but very unfortunately did not live long enough to see it becoming a reality. His presence here is missed, but I would like to think that by concluding this treaty, all the distinguished delegations here managed to honour his memory and work.

I am grateful to all the distinguished delegations here for successfully concluding a reasonably workable treaty, but especially those — such as Brazil, India, Ecuador, Nigeria, Uruguay, Egypt, South Africa, Switzerland, and numerous others — who realized they were negotiating with blind people's lives, and regarded this treaty as a means of ensuring basic human rights and dignity of the visually impaired and the print disabled, instead of regarding it merely as "copyright flexibility" to be first denied and then grudgingly conceded. The current imbalance in terms of global royalty flows and in terms of the bargaining strength of richer countries within WIPO — many of who strongly opposed the access this treaty seeks to facilitate right till the very end — is for me a stark reminder of colonialism, and I see the conclusion of this treaty as a tiny victory against it.

It is historic that today WIPO and its members have collectively recognized in a treaty that copyright isn't just an "engine of free expression" but can pose a significant barrier to access to knowledge. Today we recognize that blind writers are currently curtailed more by copyright law than protected by it. Today we recognize that copyright not only may be curtailed in some circumstances, but that it must be curtailed in some circumstances, even beyond the few that have been listed in the Berne Convention. One of the original framers of the Berne Convention, Swiss jurist and president, Numa Droz, recognized this in 1884 when he emphasized that "limits to absolute protection are rightly set by the public interest". And as Debabrata Saha, India's delegate to WIPO during the adoption of the WIPO Development Agenda noted, "intellectual property rights have to be viewed not as a self contained and distinct domain, but rather as an effective policy instrument for wide ranging socio-economic and technological development. The primary objective of this instrument is to maximize public welfare."

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. Importantly, markets alone cannot be relied upon to achieve a just allocation of informational resources, as we have seen clearly from the book famine that the blind are experiencing. Marrakesh was the city in which, as Debabrata Saha noted, "the damage [of] TRIPS [was] wrought on developing countries". Now it has redeemed itself through this treaty.

This treaty is an important step in recognizing that exceptions and limitations are as important a part of the international copyright acquis as the granting of rights to copyright holders. This is an important step towards fulfilling the WIPO Development Agenda. This is an important step towards fulfilling the UN Convention on the Rights of Persons with Disabilities. This is an important step towards fulfilling Article 27 of the Universal Declaration of Human Rights, Article 15 of the International Covenant on Economic Social and Cultural Rights and Article 30 of the UN Convention on Persons with Disabilities, all of which affirm the right of everyone — including the differently-abled — to take part in cultural life of the community.

While this treaty is an important part of overcoming the book famine that the blind have faced, the fact remains that there is far more that needs to be done to bridge the access gap faced by persons with disabilities, including the print disabled.

We need to ensure that globally we tackle societal and economic discrimination against the print disabled, as does the important issue of their education. This treaty is a small but important cog in a much larger wheel through which we hope to achieve justice and equity. And finally, blind people can stop being forced to wear an eye-patch and being pirates to get access to the right to read.

I also thank the WIPO Secretariat, Director General Francis Gurry, Ambassador Trevor Clark, Michelle Woods, and the WIPO staff for pushing transparency and inclusiveness of civil society organizations in these deliberations, in stark contrast to the way many bilateral and plurilateral treaties such as Anti-Counterfeiting Trade Agreement, the India-EU Free Trade Agreement, and the Trans-Pacific Partnership Agreement have been, and are being, conducted. I hope we see even more transparency, and especially non-governmental participation in this area in the future.

I call upon all countries, and especially book-exporting countries like the USA, UK, France, Portugal, and Spain to ratify this treaty immediately, and would encourage various rightholders organizations, and the MPAA who have in the past campaigned against this treaty and now welcome this treaty, to show their support for it by publicly working to get all countries to ratify this treaty and letting us all know about it.

I congratulate you all for the "Miracle of Marrakesh", which shows, as my late colleague Rahul Cherian said, "when people are demanding their basic rights, no power in the world is strong enough to stop them getting what they want".

For more details visit https://cis-india.org/a2k/blogs/cis-closing-statement-marrakesh-treaty-for-the-blind

Do You Have the Right to Unlock Your Smart Phone?

puneeth — 2013-08-07T07:32:52Z

In this blog post Puneeth Nagaraj looks at the recent controversy over the expiration of the exemption granted by the US Library of Congress for unlocking phones and compares the Indian position as per a 2005 Andhra Pradesh High Court judgment.

Being a gadget freak in India is difficult. Smartphone companies take months to release their latest product in India (if they do at all) and even when they are released, they are overpriced. For instance, Google's offering in the entry level tablet market, the Nexus 7 was released in India only in April — a full 9 months after its US debut. It is priced at Rs. 16,000 (USD 300) while it costs only USD 200 in the US. Google’s other device Nexus 10 is yet to make its way to the Indian market.

For long, the Indian gadget freak has relied on friends or family travelling abroad to get his/her hands on the latest gadgets on offer. It was not uncommon in the days following the release of the earlier models of the iPhone for eager owners of foreign bought phones to unlock or “jailbreak” their phones so they could use it in India. But the practice of “jailbreaking” or “android rooting” (hereinafter referred to as unlocking [*] for convenience) phones serves a wider purpose. Unlocking smart phones allows users to overcome limitations imposed by hardware manufacturers or carriers. As a result, users can freely switch service providers. While some manufacturers (like Apple) strongly oppose unlocking- even threatening to cancel warranty in case of unlocked devices, others do not mind it and some (like Google and HTC) even encourage it.

US Library of Congress Exemption

The whole controversy surrounding the legality of unlocking phones started in the US last October when the Library of Congress decided against renewing a copyright exemption it granted in 2006. As a result, the exemption expired in January and caused a furore in the US. The DMCA (1201 of the USC), prohibits circumvention of technological measures that protect access to a copyrighted work. This sort of protection is necessary to protecting copyrighted works in a digital format. But the US Congress was informed of the restrictive effects of such a prohibition. Consequently, the Congress created statutory exemptions to allow circumvention of these technological measures and empowered the Library of Congress to grant or renew such exemptions.

Despite the exemption granted by the Library of Congress in 2006, many phone companies successfully sued hardware providers who enabled unlocking of phones. With the expiration of the exemption in January, the status of phone unlocking hangs in a balance. This is especially troublesome as it is a widespread and in some cases essential practice. Both the White House and the FCC have been petitioned to legalise unlocking. In response, four different proposals have been tabled in the US Congress just for this purpose (here is an analysis of each of the bills).

At the moment, the unlocking of phones to run unapproved software is still legal as a result of an exemption granted in 2012. But this is also up for review in 2015. There is a need for a more comprehensive solution to address both these issues and the proposals before the Congress fall short.

Indian Position

Syed Asifuddin v. State of Andhra Pradesh
A case based on the unlocking of phones came before the Andhra Pradesh High Court in 2005. Certain Employees of TATA Indicom had facilitated the migration of customers contracted to Reliance for 3 years by unlocking their phones. Representatives of Reliance filed a criminal complaint against them alleging criminal breach of trust (IPC Section 409), cheating (IPC Section 420) and criminal conspiracy (IPC Section 120). They also claimed the violation of copyright and sought punishment under Section 63 of the Copyright Act, as well as Section 65 of the IT Act.

The court dismissed the criminal petitions under the IPC, IT Act and the Copyright Act. However, on the question of copyright infringement, the court held that if a person alters computer programme of another person or another computer company, the same would be infringement of copyright. The court also found that a cell phone would fall under the definition of a computer under Section 2(1) (i) of the Information Technology Act. Consequently, the court held that Section 65 of the IT Act, which deals with the tampering of computer source documents, would be applicable to the present case. The decision itself may not have precedent value on the issue as the High Court was merely ruling on the admissibility of the case on the basis of the above provisions and sent the matter back to the trial court to decide based on the evidence available. But the opinion of the court on copyright infringement and the IT Act is troubling.

Criticism

First, the court used the rather expansive definition of computers in the IT Act (Section 2(1) (i)) to include mobile phones as well. The definition under the above section reads as under:

any electronic, magnetic, optical or other high speed data processing device or system which performs logical, arithmetic and memory functions by manipulations of electronic, magnetic or optical impulses, and includes all input, output, processing, storage, computer software or communication facilities which are connected or related to the computer in a computer system or computer network.

It would not be unreasonable to see smartphones as being capable of “high speed data processing” or “input, output, processing, storage”. However, the phones in question here were basic Samsung N191 and LG-2030 phones (images of these phones can be seen here and here). Even if it might be conceivable that such basic phones can be put in the same bracket as desktop computers or laptops, the court had to examine the definition in the context of the substantial provision. In this case, the substantial provisions were Section 65 and 66 of the IT Act, which deal with tampering source documents and hacking computer systems respectively. So, by equating a basic mobile phone to a computer, the court equated unlocking a mobile phone to hacking a computer. This problem is exacerbated by the fact that Section 66 prescribes criminal punishment to hackers.

Second, the court also erred in its ruling on the Copyright Act. Once again, the court held a basic phone to mean a computer under Section 2(ffb). More worryingly, it was held that the Electronic Serial Number (ESN), a unique code given to every phone would qualify as a computer program under Section 2(ffc) and is thus subject to copyright under Section 14 of the Copyright Act. In doing so, the court has set the bar extremely low for copyrightablity of computer programs. Needless to say this judgment needs to be reconsidered if not watered down. While there is recognition that bootloader protection programmes barely meet the standard for copyright, the Andhra Pradesh High Court has granted protection to a randomly generated 11 digit number.

Fortunately, the case of Syed Asifuddin was not a final ruling on the issue as the court sent the matter back to the trial court. However, there is every chance that a future court can rely on the erroneous reasoning in this case. Further, fair use arguments can always be mad in the favour of an individual consumer who wishes to migrate to another service provider.

The larger problem is that by giving an expansive meaning to the provisions in the Copyright Act and the IT Act, it can be used to target businesses that facilitate unlocking devices that can be targeted (like in the US). Unlike in the US, phone unlocking is not a business in India and is usually done by small business owners who sell and repair mobiles. The consequences of suing such businesses can be worse in India as they can end up in jail for an act that falls in an undefined area of the law. It seems that the situation may be resolved in the US in the near future in favour of the consumer — although the issue of the business of unlocking phones must be resolved finally. The position in India is worrisome especially due to the threat of criminal persecution.

[*]. The term jailbreaking is used specifically in the case of iOS devices and android rooting, as the name suggests is used in the case of android devices. Technically speaking, they are very different given that most android devices do not restrict access to their “bootloaders”. Acknowledging the difference between the two, the discussion here is focused on overriding technological measures meant to protect underlying copyrighted works.

For more details visit https://cis-india.org/a2k/blogs/do-you-have-right-to-unlock-your-smart-phone

Copyrights and Copywrongs Why the Government Should Embrace the Public Domain

pranesh — 2013-09-06T04:56:42Z

Each of you reading this article is a criminal and should be jailed for up to three years. Yes, you. "Why?," you may ask.

This article by Pranesh Prakash was published in Yojana, Issue: August 2013.

Have you ever whistled a tune or sung a film song aloud? Have you ever retold a joke? Have you replied to an e-mail without deleting the copy of that e-mail that automatically added to the reply? Or photocopied pages from a book? Have you ever used an image from the Internet in presentation? Have you ever surfed the Internet at work, used the the 'share' button on a website, or retweeted anything on Twitter? And before 2012, did you ever use a search engine?

If you have done any of the above without the permission of the copyright holder, you might well have been in violation of the Indian Copyright Act, since in each of those examples you're creating a copy or are otherwise infringing the rights of the copyright holder. Interestingly, it was only through an amendment in 2012 that search engines (like Google and Yahoo) were legalized.

Traditional Justifications for Copyright

Copyright is one among the many forms of intellectual property rights. Across differing theories of copyright, two broad categories may be made. The first category would be those countries where copyright is intended to benefit society, the other where it is intended to benefit the author. Within the second category, there can again be two subcategories: those that see the need to benefit the author due to notions of natural justice and those that see the need to provide incentives for authors to create. Incentives to create are necessary only when the act of creation itself is valuable (and more so than the creator). The act of creation is valued highly as it directly benefits society. Thus, it is seen that the second sub-category is closer to the societal benefit theory than the natural justice sub-category. In the United States, the wording of the Progress Clause makes things clear that copyright is for the benefit of the public, and the author is only given secondary consideration. It is in light of this that the U.S. Supreme Court said,
"The monopoly privileges that Congress may authorize are neither unlimited nor primarily designed to provide a special private benefit. Rather, the limited grant is a means by which an important public purpose may be achieved. It is intended to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired."

Economic theories of copyright see copyright as an incentive mechanism, designed to encourage creators to produce material because they would be able to recover costs and make a profit due to the exclusionary rights that copyright law grants. Thus, the ideal period of copyright for any material, under the economic theory would be the minimum period required for a person to recoup the costs that go into the production of that material. Allowing for the great-grandchildren of the author to benefit from the author’s work would actually go against the incentive mechanism. Even if the author is motivated enough to put in even more hard work to provide for her great-grandchildren, her children, grandchildren, and great-grandchildren wouldn’t have any incentive to create for themselves (as the incentive is seen purely in terms of economics, and not in terms of creative urge, etc.), as they are already provided for by copyright. Thus, in a sense, the shift towards longer periods of copyright terms that we are seeing today can be seen as a shift from the incentive-based model to a rewards-based model of copyright.

The other standard theory of copyright justification is the natural rights theory, which deems intellectual property the fruit of the author’s labour, thus entitling them to complete control over that fruit. This brings us to the conception of property itself, and the Lockean and Hegelian justifications for personal property is what is most often used to back such an argument up.

There are many problems with the natural rights theory of intellectual property. If that theory were to hold water, copyright law would accord greater precedence to authors than to publishers. Yet, we see that it is publishers primarily, and not authors, who get benefit of copyright. The "work for hire" doctrine, embodied in Section 17 of the Copyright Act, holds that it is the employer who is treated as the owner of copyright, not the author. This plainly contradicts that natural rights theory. And it also raises the question of why we should protect certain kinds of knowledge investments in the first place. Publishing is a business, and all risks inherent with other businesses should come along with publishing. There is no reason that the State should safeguard their investment by vesting in them a right while safeguarding the investments of any other business only occasionally, and that too as an act of munificence. This problem arises because of the free transferability of copyright. This leads us to the larger problem, which is of course that of treating knowledge as a form of property. Property, as we have traditionally understood it, has a few features like excludability. Knowledge, however, does not share that feature with property. Once you know something that I created, I can’t exclude you from that knowledge that (unlike my ability to take back an apple you have stolen from me). This analysis also has the pernicious effect of excluding free speech analysis of copyright laws. An incorrect analogy is often drawn to explain why free speech analysis doesn’t work on property: you may wish to exercise your right to free speech on my front lawn, yet the State may decree that I am in full right to throw you off my property, without being accused of abridging your right to freedom of speech. So, the argument goes, enforcement of property rights is not an affront to freedom of speech. The problems with this analogy are obvious enough: the two forms of “property” cannot be equated. If you take the location of speech away, I can still speak. If, on the other hand, you restrict my ideas/expression, then I can no longer be said to have the freedom of expression.

One Size Doesn't Fit All

It is easy to see that copyright is an ill-fit for all the things that it now covers. Copyright in its present form is a historical accident, which evolved into the state it is in a very haphazard fashion. It is a colonial imposition on developing countries. It does not value that which we often value in Indian culture: tradition. Instead, copyright law values modernity and newness. It can also be seen as a trade issue imposed on us through the Trade-Related Intellectual Property Agreement (TRIPS Agreements) as part of the World Trade Organization.

Importantly, copyright is not a single well-planned scheme. In some cases — for literature, visual art works, lyrics, musical tunes, etc. — it provides rights to the artist, while in other cases — for recordings of those musical tunes, and for films — it provides rights to the producers. What are the legal reasons for this distinction? There aren't any; the distinction is a historical one (with sound recordings and films getting copyright protection after literature, etc.). At one point of time only exact copies were governed by copyright law. Hence, translations of a work were considered not to be infringement of that work (or a "derivative work"), but new independent works, since after all it takes considerable artistic effort to create a good translation of a work. However now even creating an encyclopedia based on Harry Potter (as the Harry Potter Lexicon was), is covered as infringement of the exclusive rights of the author. At one point of time photographs were not provided any copyright, being as they are, 'mere' mechanical reproductions. They were seen as not being 'creative' enough. However, around the turn of the twentieth century, that position changed, and hence every photograph you've taken of your dog is now copyrighted. According to a recent Supreme Court decision, merely adding paragraph numbering to court judgments is considered to be 'creative' enough to merit copyright protection! At one point of time, copyright existed for 14 years. Now, with the international minimum being "fifty years after the death of the author", it lasts for an average of more than a century! Once upon a time, copyright was only granted to those who wanted it and applied for it. That has now changed, and you have copyright over every single original thing that you have ever written, recorded, or otherwise affixed to a medium.

Copyright in the Digital Era

All digital activities violate copyright, since automatically copies are created on the computer's RAM, cache, etc. Because now everything is copyrighted, and copyrighted seemingly forever, each one of us violates copyright on a day-to-day basis. It is a mockery of the law when everyone is a criminal. The US President Barack Obama violated copyright law when he presented UK's Queen Elizabeth II an iPod filled with 40 songs from popular musicals like West Side Story and the King and I. When even presidents, with legal advisers cannot navigate copyright law successfully, what hopes have we ordinary people?

There is no shortage of similar examples to show that copyright law has gone out of control.

Take extradition, for instance. Augusto Pinochet was extradited, Charles Shobraj was sought to be extradited. Added to their ranks is the pimply teenager who runs TVShark, who British courts have cleared for extradition to the USA for potential violation of copyright law. The extreme injustice of copyright is easily observable if one sees the contorted map depicting net royalty inflows available on Worldmapper.org: there are a sum total of less than a dozen countries which are net exporters of IP; all other countries, including India, are net importers of IP. IP law is one area where both those who talk about social justice and those who talk about individual liberties find common ground in the monopolistic or exclusionary rights granted under copyright law. Copyright acts as a barrier to free trade, thus allowing Nelson Mandela's autobiography to be more expensive in South Africa than the United Kingdom because South Africa is prohibited by the UK publisher from importing the book from India. Mark Getty, the heir to the Getty Images fortune, once presciently observed that "IP is the oil of the 21st century".

Government Copyright

In the ivory towers of academia, there has in recent times been a clarion call that's resounding strongly: the call for open access. As the Public Library of Science states, "open access is a stands for unrestricted access and unrestricted reuse". Why is it important? "Most publishers own the rights to the articles in their journals. Anyone who wants to read the articles must pay to access them. Anyone who wants to use the articles in any way must obtain permission from the publisher and is often required to pay an additional fee. Although many researchers can access the journals they need via their institution and think that their access is free, in reality it is not. The institution has often been involved in lengthy negotiations around the price of their site license, and re-use of this content is limited." Importantly, the writers of articles (scholars) do not get paid by the publishers for their articles, and most developing countries are not able to afford the costs imposed by these scholarly publishers. Even India's premier scientific research agency, the Council for Scientific and Industrial Research, recently declared that the costs of scientific journals was beyond its means.

Why is this important? Because apart from establishing the idea of informational equity and justice, it also establishes the idea that taxpayer-funded research (as most scientific and much of academic research is) ought to belong to the public domain, and be available freely. This principle, seemingly uncontroversial, is very unfortunately not embodied in the Indian Copyright Act. Most public servants do not realize that that which they create may not be freely used by the public whom they serve.

Under the Indian Copyright Act, all creations of the government, whether by the executive, judiciary, or legislature, is by default copyrighted. This does not make sense under either of the two theories of copyright that we examined above. The government is not an 'author' who can have any form of 'natural rights' over its labour. Nor is the government incentivised to create more works if it has copyright over them. Most of the copyrighted works, such as various reports, the Gazette of India, etc., that the government creates are required to be created, and the cultural works it creates are for cultural promotion and not for commercial exploitation. Hence it makes absolutely no sense to continue with the colonial regime of 'crown copyright', when countries like the USA have suffered no ill effects by legally placing all government works in the public domain.

While there are a limited set of exceptions to government copyright provided for in the law, those are very minimal. This means that even though you are legally allowed to get a document through the Right to Information Act, publicising that document on the Internet could potentially get you jailed under the Copyright Act. This is obviously not what any government official would want. If instead of the four sub-sections that form the exception, the exception was merely one line and allowed for "the reproduction, communication to the public, or publication of any government work", then that itself would elegantly take care of the problem. This would also remove the ambiguities inherent currently in the Data.gov.in, where the central government is publishing information that it wants civil society, entrepreneurs, and other government departments to use, however there is no clarity on whether they are legally allowed to do so.

Recently, the member states of the World Intellectual Property Organization passed a treaty that would facilitate blind persons' access to books. On that occasion, at Marrakesh, I noted that intellectual property must not be seen as a good in itself, but as an instrumentalist tool which may be selectively deployed to achieve societally desirable objectives. I said: It is historic that today WIPO and its members have collectively recognized in a treaty that copyright isn't just an "engine of free expression" but can pose a significant barrier to access to knowledge. Today we recognize that blind writers are currently curtailed more by copyright law than protected by it. Today we recognize that copyright not only may be curtailed in some circumstances, but that it must be curtailed in some circumstances, even beyond the few that have been listed in the Berne Convention. One of the original framers of the Berne Convention, Swiss jurist and president, Numa Droz, recognized this in 1884 when he emphasized that "limits to absolute protection are rightly set by the public interest". And as Debabrata Saha, India's delegate to WIPO during the adoption of the WIPO Development Agenda noted, "intellectual property rights have to be viewed not as a self contained and distinct domain, but rather as an effective policy instrument for wide ranging socio-economic and technological development. The primary objective of this instrument is to maximize public welfare." 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. Importantly, markets alone cannot be relied upon to achieve a just allocation of informational resources, as we have seen clearly from the book famine that the blind are experiencing. Marrakesh was the city in which, as Debabrata Saha noted, "the damage [of] TRIPS [was] wrought on developing countries". Now it has redeemed itself through this treaty.

The Indian government needs to similarly redeem itself by freeing governmental works, including the scientific research it funds, the archives of All India Radio, the movies that it produces through Prasar Bharati, and all other tax-payer funded works, and by returning them to the public domain, where they belong.

For more details visit https://cis-india.org/a2k/blogs/yojana-august-2013-pranesh-prakash-copyrights-and-copywrongs-why-the-govt-should-embrace-the-public-domain

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).

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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.

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.

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Centre for Internet and Society

Comments on the Draft Copyright (Amendment) Rules, 2019 concerning Statutory Licensing

Preliminary

About The Centre for Internet and Society

Comments

a) Legal validity of the Rules: Vires vis á vis the Parent Act

b) Implications of extending legal regime of broadcasting rights to works on the public Internet

WIPO: Scope and rights of potential broadcasting treaty clarified

Protection for Broadcasting Organisations: Exclusive Rights Discussed

Concerns Expressed by Observers

5th Global Congress On IP And The Public Interest: Successes, Strategies Highlighted

Stakeholders Consultation on draft WIPO Treaty to Protect Broadcasting Organization

CIS Intervention on the Treaty for the Visually Impaired at SCCR/SS/GE/2/13

India- EU FTA: A Note on the Copyright Issues

Introduction

Dismantling the Arguments In Favour of Increased IP Protection

Implications of the Copyright Provisions in the Proposed Indo- EU FTA

Problematic Provisions

International Obligations

Technical Protection Measures (TPMs) and Digital Rights Management (DRM)

Copyright Expansion

Persons with Disabilities

Cross Border Measures

Intermediary Liability

IP Enforcement

Concluding Observations

Primer on the Treaty for the Visually Impaired

A Primer on the provisions of the TVI and ongoing negotiations

1. Exceptions in Domestic Copyright Law

2. Cross-border Transfer of Accessible Works

3. Digital locks

4. Translation

CIS's Closing Statement at Marrakesh on the Treaty for the Blind

Do You Have the Right to Unlock Your Smart Phone?

US Library of Congress Exemption

Indian Position

Criticism

Copyrights and Copywrongs Why the Government Should Embrace the Public Domain

Traditional Justifications for Copyright

One Size Doesn't Fit All

Copyright in the Digital Era

Government Copyright

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

John Doe Orders and their Conceptual Understanding

The Metallica Order

John Doe Orders in India

Final and Interim John Doe Orders

John Doe Orders – Procedure and Guidelines

Website Blocking Orders

Conceptual Differences between John Doe and Website Blocking Orders

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

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

Primary and Secondary Infringement

Mere Conduit ISPs – Secondary Infringement Absent

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

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

The Information Technology Act – An Inapplicable Scheme for Website Blocking