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Locus Standi of copyright societies in infringement suits

Issue: May 2009

Keywords (click to search): copyright infringement India locus standi copyright society IP

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Manisha Singh Nair

Lex Orbis

manisha@lexorbis.com

Both protection and monitoring of works of copyright often pose a challenge owing to the large volumes in which a work may exist in the market and among the public. In order to protect the rights of copyright owners, performers and other holders of copyright, the Copyright Act, 1957, keeping pace with international treaties, provides for the establishment of copyright societies in India to enable the protection of such moral and economic rights. Functioning as licensing and regulatory authorities, these bodies aid the enforcement of performer's rights through their operational mechanisms. In the presence of a system of Public Performance Licenses they not only ensures effective enforcement of the law, but also prevent further squandering and misuse of copyright works. At present there exist four copyright societies in India, each dedicated to managing copyrighted works of a different nature. These societies include:

(i) Society for Copyright Regulation of Indian Producers for Film and Television (SCRIPT) for cinematograph and television films;

(ii) The Indian Performing Right Society Limited for musical works;

(iii) Phonographic Performance Limited (PPL) for sound recordings; and

(iv) Indian Reprographic Rights Organization (IRRO) for reprographic (photo copying) works.

In 1994, as a result of an amendment to the Copyright Act, the scope and role of these societies was enlarged. Before this, the functionality of these bodies was limited to granting performing rights. However, collective administration of copyright by societies is a concept where the management and protection of copyright in works is undertaken for the owners of such works. The primary functions of these organisations include:

(i) licensing works in which they hold the copyright or for which they act as an agent on behalf of the members for specific uses;

(ii) monitoring use of works and collecting revenues;

(iii) distributing revenues as royalties to members; and

(iv) entering into reciprocal arrangements with foreign collecting societies to collect and distribute local royalties earned overseas to local rights holders.

It is nearly impossible for an owner of the copyright in any work to keep track of all the uses others make of his or her work. As a result the locus standi of a collective society to file an infringement suit came up for deliberation before the Delhi High Court. The earlier decision rendered by the Delhi High Court in Phonographic Performance Ltd. v. Hotel Gold Regency & Ors. (2008 (37) PTC 587 (Del.)) went into appeal whereby it was held that copyright societies were not liable to institute a suit for copyright infringement without making the copyright owner a party to the same. The appeal (Phonographic Performance Limited v. Hotel Gold Regency & Ors. (RFA (OS) No. 57 & 58 of 2008)) reversed the earlier finding of the Delhi High Court.

In deciding the appeal, the court visited the various provisions alluded in the Copyright Act, 1957 governing the institution and functioning of copyright societies. The court also took into consideration the Supreme Court decision rendered in M/s Entertainment Network (India) Ltd. Vs. M/s. Super Cassette Industries Ltd. (2008 (9) SCALE 69), which also dealt with the issue of the role of copyright societies as bodies eligible to file infringement suits.

The Supreme Court in the M/s Entertainment decision (supra) had unequivocally observed that for all intents and purposes, the copyright society steps into the shoes of the author, a conclusion drawn after due consideration of the provisions of the Act. The Division Bench of the Delhi High Court, answering the appeal and taking note of the Supreme Court decision, rendered an additional perspective to the same, opining that the copyright society may not have exclusive rights over the subject matter of copyright, inasmuch as the owner continues to simultaneously have rights to deal with his Copyright in the work. However, they observed that the Statement of Objects and Reasons and the provisions if read pari materia clearly reflect the intent of the legislature while incorporating the provisions. They also opined that in view of Section 17 of the Act, the copyright owner could certainly appoint an agent to institute legal proceedings.

In the light of the cited propositions by the Court, it is clear that copyright societies have the locus standi to institute copyright infringement suits. The civil remedies available in a suit against infringement of performer's rights are as under Sections 55 and 63 to 70 of the Copyright Act, 1957 which include injunction orders and claims to damages. Criminal remedies include imprisonment, which may extend from a minimum period of six months to a maximum period of three years, or a fine of the order of between Rs50,000 (US$996) and Rs200,000, or both. The vesting of copyright societies with the right to institute and carry forward infringement suits is a primary step towards ensuring effective enforcement of rights by these societies in these works.