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Broadcasting and Live Performances in Sporting Events

October 25, 2019
VOL XI
ISSUE No. 11
October 25, 2019

Broadcasting and Live Performances in Sporting Events

By Lucy Rana and Meril Mathew Joy

Media houses and corporations pay huge amounts of money for exclusive right to broadcast events of national and international importance. Broadcasting organizations are given certain special economic rights in order to protect their investments. Per se the broadcaster’s rights are not based upon any creative work but a derivative work of other’s performance. In view thereof, the protection accorded to broadcasters is very limited in nature and thus needs to be protected adequately.

Initially, there was no provision in the Copyright Act which protected the rights of broadcasters and live performers. However, with an amendment in 1994, Section 37 and 38 were substituted with a new section that provided for broadcasting reproduction rights and performer’s rights

Broadcasting

As per Section 2 (dd) of the Copyright Act, 1957, the term broadcast means communication to the public through wired or by any means of wireless diffusion. It also includes a re-broadcast.

Live Performance

Section 2 (q) of the Copyright Act, 1957 defines the term “performance” which is in relation to performer’s right, means any visual or acoustic presentation made live by one or more performers.

The broadcasting right is an independent subject-matter therefore the broadcasting authorities should obtain a license from the owners of the copyrighted content before broadcasting the work. Broadcasting without consent of the owner amounts to infringement under Section 51 of the Copyright Act, 1957.

Special Rights to Prasar Bharti?

The statutory provision under Section 3 of the Sports Broadcasting Signals (Mandatory Sharing with Prasar Bharti) Act, 2007 mandates all contents rights owner to share broadcast signals of sporting events of national importance without its advertisements with the Prasar Bharti to enable them to re-transmit the same on its terrestrial networks and DTH networks. The said law was enacted in order to provide access to large number of viewers access national importance sporting events.

The Supreme Court of India in Star Sports India Private Limited vs. Prasar Bharati and Ors[1] held that broadcasters of ‘sporting events of national importance’ must share the feed of the broadcast with Prasar Bharati free of all forms of digital commercial inserts such as advertisements, sponsor logos and credits.[2]

The term ‘sporting events of national importance’ has not been defined in the Act. In this regard, the Ministry of Information & Broadcasting in consultation with the Ministry of Youth Affairs and Sports and Prasar Bharti determines and notifies a list of sporting events of national importance. As per the Government’s notification, the said term also covers certain matches irrespective of the participation of the Indian team. This is not just restricted to the sport of cricket but other sports such as Tennis, Football, Olympics, Asian Games, Commonwealth Games, etc. as well.[3]

Further, it shall not be out of place to mention that a settlement agreement between Prasar Bharti and Star India establishes that certain important IPL matches shall be aired live on DD Sports after being delayed by an hour.[4]

Non-compliance of the aforesaid law by the content owner shall invite penalties, including suspension or revocation of license, permission or registration for such violation. The amount of pecuniary penalty shall not exceed one crore rupees.[5]

Broadcasting in Public Places

Apart from Prasar Bharti, every other private entity mandatorily requires permission to be taken from the content owner / broadcaster before further broadcasting it into any medium.

Live Screening of Cricket Matches

In Star India Pvt. Ltd. & Anr. v. Haneeth Ujwal & Ors., the Delhi High Court granted injunction against known and unknown defendants (John Doe) and websites hosting, broadcasting, and transmitting infringing content, the exclusive rights of which belonged to the Plaintiff.

While dealing with live telecast of cricket matches, the division bench of Delhi High Court held that the websites that predominantly host infringing content (rogue websites) could be blocked completely rather than a single URL being blocked.[6]

Further, as per Section 65B of the Copyright Act, 1957, any person who knowingly distributes, imports for distribution, broadcasts or communicates to the public, without authority, copies of any work, or performance knowing that electronic rights management information has been removed or altered without authority shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.

Valuable Media Ltd. (VML) has the sole rights to screen IPL matches commercially in India. Recently, a hotel paid price for screening IPL match without taking any consent from VML.

Public Screening ICC 2019 World Cup

For screening of ICC 2019 World Cup, the International Cricket Council opened an online portal for parties interested in public screening of ICC Cricket World Cup for commercial and non-commercial purposes. It lays down guidelines, permissions and license fees for staging a public screening event. The International Cricket Council has identified Public screening events are classed as any commercial or non-commercial event where the ICC Cricket World Cup 2019 matches are made available for viewing by an audience, at locations which do not normally broadcast sporting events, such as beaches, parks, recreational areas, army bases, embassies and oil rigs.[7]

Internet Broadcasting

With the advent of technology, broadcasting is no longer limited to radio, newspaper and television but also to internet broadcasting and live streaming. The major problem arises when the law does not evolve with technology. The emergence of internet has increased the number of problems in the statutory licensing for broadcasting. This majorly revolved around legality of internet broadcast and the ambit of coverage under Section 31D of the Copyright Act, 1957.

In this regard, the Hon’ble Bombay High Court in Tips Industries v Wynk Music,[8] has held that Section 31D contemplates only television and radio broadcasting and not internet broadcasting. Further the court observed that section 31D of the Copyright Act has been used to exploit copyrighted works through either internet broadcast or download features, without seeking/ obtaining a license from the owners and therefore held that “such use of the copyrighted works, through internet broadcast or download features, without obtaining a license from the owners of the copyright amounts to usurpation of the exclusive rights of the owners to commercially rent, sell or communicate to the public their sound recordings.” In view thereof, no statutory license can be claimed by the internet broadcasters/ streamers, to exploit the exclusive rights granted to the owners/ licensee.

[1] S.L.P. (Civil) No. 8988 OF 2014

[2] Mandatory Sharing of Sports Broadcast Signals in India: Part 1 – A review of STAR Sports v. Prasar Bharati by Roshan Gopalakrishna. Available at https://www.lawinsport.com/topics/articles/item/mandatory-sharing-of-sports-broadcast-signals-in-india-part-1-a-review-of-star-sports-v-prasar-bharati?tmpl=component&print=1

[3] https://mib.gov.in/sports-broadcasting-signals-0

[4]https://www.hindustantimes.com/india-news/star-india-and-dd-to-broadcast-some-matches-of-the-ipl-together/story-qEEJsIcsWjrmJmgsa4EnvJ.html

[5] Section 4, THE SPORTS BROADCASTING SIGNALS (MANDATORY SHARING WITH PRASAR BHARATI) ACT, 2007

[6] Department of Electronics and Information Technology v. Star India Pvt. Ltd. [R.P. 131/2016 in FAO(OS) 57/2015 decision dated 29th July, 2016]

[7] The International Cricket Council, ICC opens online portal for public screening requests of ICC Cricket World Cup 2019, available at https://www.icc-cricket.com/media-releases/975578

[8] COMMERCIAL SUIT IP (L) NO. 114 OF 2018 and COMMERCIAL SUIT IP (L) NO. 113 OF 2018

 


India: Intermediary’s Liability for Infringing Content

By Pranit Biswas and Isheta Srivastava

Recently, the Delhi High Court adjudicated upon a case of trademark infringement in the case of Surrendra Malik v. Facebook Inc & Ors., where Surrendra Malik (hereinafter referred to as the ‘Plaintiff’) was seeking removal of infringing content by intermediaries including Facebook and Instagram (hereinafter referred to as the ‘Defendant’) from their platform. The Delhi High Court relied upon the case of Shreya Singhal v. Union of India[1] to decide the present suit filed by Surrendra Malik who is the owner of the trademark ‘DA MILANO.’

Brief Facts

  • The suit was filed for permanent injunction against infringement of trademark and passing off, and under Section 74 of the Information Technology Act, 2000 seeking protection of the registered trademark ‘DA MILANO’.
  • The Plaintiff is the owner of the mark ‘DAMILANO’ in various forms which also include logo and label forms.
  • The alleged infringers have uploaded posts on social media platforms like Facebook and Instagram advertising and offering to sell products that bear the mark ‘DA MILANO’.

Contentions of the Plaintiffs

  • The Plaintiff sought permanent injunction against the alleged infringers and also pleaded that directions should be issued against Facebook and Instagram to ensure that such posts that contain the infringing marks are removed.
  • The Plaintiff also seeks direction for the personal presence of the Defendants.
  • It was also contended that the Plaintiff would like to inform the Defendants as and when an infringing post comes to their knowledge and accordingly the Defendants shall take down such posts.

Contention of the Defendants

  • Facebook and Instagram acknowledged the rights of the Plaintiff on the mark ‘DA MILANO’ but contend that they are exempted from liability under Section 79 of the IT Act, as they are merely intermediaries.
  • The Counsel for the Defendants claimed that they are not challenging the matter on merits against the Plaintiff but they are mere intermediaries and their personal presence is not necessary.

Court Decision and Analysis

  • The Court borrowed the interpretation in Shreya Singhal v. Union of India and stated, “Considering the provisions of the IT Act and Information Technology (Intermediaries Guidelines) Rules, 2011, platforms such as Facebook and Instagram, which claim to be intermediaries not performing any active role in the posting of such information by third party alleged infringers, have a duty only to take down the posts which are brought to their notice by the Plaintiff in terms of Section 79(3), by following due diligence.
  • The Court after clarifying the stance on Section 79 of the IT Act, acknowledged the Defendant’s submission that so long as the infringing mark is identical and the Plaintiff notifies the platforms, they are willing to remove the posts.
  • The Court said, “The legal position is thus settled insofar as Section 79 is concerned. The Plaintiff does not allege that the said two platforms have any active role. Ld. Counsel for the Plaintiff has shown to the Court illustrative printouts of the posts which were using the mark DA MILANO. There is no doubt that such posts which use the mark DA MILANO in any form, when brought to the notice of the platforms, have to be removed.”
  • The Court decided that the Plaintiff shall inform the platforms when they see the use of the mark ‘DA MILANO’ in any form and upon receiving such information, as per Rule 3(4) of the 2011 Guidelines, the said post shall be taken down, within the time period prescribed. The Court further added, “If the platforms have any doubt as to the violative or offending nature of the post (s), they shall intimate the Plaintiff, within the time prescribed, who shall avail of its remedies in accordance with law;”

[1] (2015) 5 SCC 1

 


INDIA: Delhi High Court issues directions for Mandatory Documents to be filed in Trade Mark Infringement Suit

By Tulip De and Kiratraj Sadana

The Hon’ble High Court of Delhi has recently issued a set of practice directions pertaining to the documents which are to be filed mandatorily along with the plaint in Trademark Infringement disputes. The directions were given in the case Amrish Agarwal v M/s Venus Home Appliances Pvt Ltd. vide judgement dated August 27, 2019.

The Petitioner, Amrish Agarwal, filed the present appeal against the order dated August 04, 2018 by the Trial Court. In the said order, the Trial Court took on record the Legal Proceedings Certificate relating to the trademark ‘Venus’, which according to the Petitioner was filed at a belated stage by the Respondent, M/s Venus Home Appliances, as the evidence was already concluded and the matter was listed for final arguments.

The Petitioner relied on the decision passed by the Single Judge of Delhi High Court in Gold Rock World v Veejay Lakshmi Engineering Works Ltd[1], to argue that the document could not be taken into record at this belated stage.

The Court observed that the Court ought to be able to see the mark. Therefore, either the Legal Proceedings Certificate or the Registration Certificate along with the Journal extract should be filed by the Petitioner along with the Plaint.

The Court further observed that trademark registration are matters of public records which can be accessed by visiting the Indian Trade Mark Registry’s website. However, the Certificate of Registration along with the journal extract or the Legal Proceedings Certificate are to be placed as documentary evidence for the Court to consider the registration of the trade mark in question.

The Court, after going through the Petitioner’s contentions, was of the view that the Trademark Registration Certificate should have been filed at the initial stage, however in the interest of justice the Court took on record the Legal Proceedings Certificate, subject to payment of Rs. 50,000 as costs to be paid to the Defendants.

Thereafter, the Court passed the following directions pertaining to the documents that are necessary to be filed in a suit for Trade mark infringement –

i. Legal Proceedings certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licences granted, renewals etc.;

ii. If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licences and assignments ought to be pleaded;

iii. Usually, at the time of admission/denial, parties ought not to be permitted to deny the factum of registration and other facts accompanying the registration as the same are easily verifiable from public record online;

iv. In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trade mark registration is being disputed by the opposite side;

The Court directed the Registrar General to communicate these directions to the Districts Judges, especially the Judges of the Commercial Courts, so that the judgement can be complied with. Furthermore, the order is to be communicated to the Controller General of Patents, Designs and Trade Marks and the Joint Secretary, DPIIT to ensure that the Legal Proceedings Certificates are issued without delay and within a period of 30 days.

 

[1] (208) 149 PLR 40

 


CAUSE & EFFECT: COUNTERFEITING IN THE COSMETIC INDUSTRY

By Sanjana Kala and Paridhi Tyagi

The importance of trademarks as a source identifier in commercial industries ranging from pharmaceuticals to apparel cannot be discounted. This is because a trademark enables consumers to recognize and associate with their preferred brands which in turn helps brand owners to develop their reputation and grow their business in a competitive market. However, when third parties in an unlawful and illegal manner misrepresent their goods as originating from another source mostly associated with a popular/famous brand in order to to ride on the goodwill and reputation associated with that brand, and to unjustly enrich from the same, such products/goods are termed as ‘counterfeit goods’ i.e. goods that are fake and do not originate from the legitimate brand owner. The Trade Marks Act, 1999, in this regard provides for imprisonment of three (3) years and a fine up to two lakh rupees (USD 2814.10) as penalties for counterfeiting under Section 103, in addition to Sections 102 and 135 which deal with falsification and false application of a trademark.
In industries dealing with consumer health and safety, the offence of counterfeiting becomes all the more serious as the element of public policy comes into play. One such industry is the cosmetic and personal care products industry which is now becoming all the more popular owing to an increase in commercialization and consumer consumption. Consequently, brands that are engaged in manufacturing/selling make-up, skin-care and/or hair-care products are now investing considerable resources into the research and development of cosmetics that are safe to use and do not have any adverse effects on consumers. Given that cosmetics deal with the upkeep and care of consumers’ skin and/or hair, the effects of toxic ingredients and chemical formulas that have not undergone the mandated testing procedure can be very harmful to an unwary consumer and can prompt the onset of additional medical conditions/diseases.

STATUTORY FRAMEWORK IN INDIA
The Drugs and Cosmetics Act, 1940 (hereinafter “the Act”) regulates the import, manufacture and distribution as well as labelling and packaging of drugs and cosmetics in India.
The Act defines ‘cosmetic’ as, “any article intended to be rubbed, poured, sprinkled or sprayed on, or introduced into, or otherwise applied to, the human body or any part thereof for cleansing, beautifying, promoting attractiveness, or altering the appearance, and includes any article intended for use as a component of cosmetic ”
The primary objective of the Act is to inter alia ensure that the cosmetics sold in India are safe, effective and conform to prescribed quality standards. In this regard, the Act has defined ‘misbranded cosmetics’ and ‘spurious cosmetics’ in the following manner:

Cosmetics shall be deemed to be misbranded —
(a) if it contains a colour which is not prescribed; or
(b) if it is not labelled in a prescribed manner; or
(c) if the label or container or anything accompanying the cosmetic bears any statement which is false or misleading in any particular.
Whereas cosmetics shall be deemed to be spurious —
(a) if it is imported/manufactured under the name which belongs to another cosmetic; or
(b) if it is an imitation of, or is a substitute for, another cosmetic or resembles another cosmetic in a manner likely to deceive or bears upon it or upon its label or container the name of another cosmetic, unless it is plainly or conspicuously marked so as to reveal its true character and its lack of identity with such other cosmetic; or
(c) if the label or the container bears the name of an individual or company purporting to be the manufacturer of the cosmetic, which individual or company is fictitious or does not exist; or
(d) if it purports to be the product of a manufacturer of whom it is not truly a product.”
Furthermore, Sections 10 and 18 of the Act prohibits the import, manufacture, sale and distribution of such
• misbranded and/or spurious cosmetics
• cosmetics which are harmful or unsafe to use
• cosmetics not of standard quality (as prescribed by the Act)
Notably, Sections 10A and 26A confers power on the Central Government to prohibit the import, manufacture and sale of cosmetics if it is in ‘public interest’. Lastly, the Act also mandates for stringent punishments extending from fines to confiscation and even imprisonment for contravening any provisions laid down under the Act.
Clearly, the above statutory framework is squarely applicable on counterfeit or fake cosmetics and the remedy stipulated for misbranded and spurious cosmetics therein can be availed by brand owners in addition to the remedies provided under the Trademarks Act, 1999.

The Role of E-commerce Website
With the advancement in technology and ease of availability of cosmetics and personal care products on social media and e-commerce websites, the likelihood of counterfeit cosmetics pervading in the market has increased manifold. The threat of unregulated and untested cosmetics that do not prescribe to the import and/or manufacturing standards laid down under the Act is now a cause of alarm for regulatory bodies. For instance, in 2018, the Drug Controller General of India (DCGI) issued notices to popular e-commerce websites for selling/offering for sale “adulterated”, “unregulated”, “spurious”, “unlicensed” and “illegally imported” cosmetics that were being sold without evaluating their safety and quality, and were thereby not fit for human application. As per a statement issued by the DCGI, online retailers have been ordered to remove unregulated and counterfeit cosmetics from their platforms and have been further asked to enter into “agreements with sellers to prevent sale of fake cosmetics.” The DCGI further put the onus on online retailers to be aware and take responsibility of whether the cosmetics available on their platforms are genuine or not. Although, this seems unlikely as e-commerce websites can always take the defense of being ‘intermediaries’ under the Information Technology Act, 2000, with the liability resting with the seller/manufacturer of the counterfeit product.
However, the Delhi High Court in a recent 2018 judgment refused to grant such protection to an online retailer claiming to be ‘intermediary’ under the Information Technology Act, 2000 in a case filed by the luxury brand L’Oreal against sale of counterfeit L’Oreal cosmetics on the defendant’s e-commerce website ShopClues. The Hon’ble court enumerated several factors, demonstrating that the role of the defendant was more than that of a mere intermediary, as below:
“For example: i. the website guarantees that “all products are 100% genuine”; ii. repeated sales of counterfeits have been encountered on the website; iii. despite several infringement actions against it, the website doesn’t seem to be taking precautions to stop sale of counterfeits; iv. there is a separate category for replicas on its website. On this window, various lookalike products are advertised and sold. The use of the term replica itself denotes that it is a lookalike or a copy of the original. While the PIP programme appears to be effective, the display of a replica window is definitely not condonable. v. this REPLICA window encourages sellers to post lookalike products as the feature of the replica window would constitute aiding and abetment of violation of intellectual property.”
As such, the court was of the view that these aforementioned acts disqualify the defendant from claiming the exemption provided under Section 79 of the Information Technology Act, 2000, and thereby restrained them from using, manufacturing, supplying, selling, displaying, advertising on the online marketplace through the defendant’s website or any other mode, with respect to the trademark L’Oreal and/or its formatives.

Steps Taken by Brand Owners
Since the dissemination of counterfeit products results in loss of reputation and revenue for brand owners themselves, brand owners are now capitalizing on increased consumer sophistication and the internet to better educate their customers into not being deceived by fakes in the market. For example, several cosmetic brands operate their own e-commerce websites from where they provide online retailing services that eliminate the chances of purchasing a counterfeit altogether. Apart from this there are cosmetic brands which on their website regularly post blogs spreading awareness about how to identify fake cosmetics in the market. Additionally, brand owners now provide authentication certificates to consumers along with their products or a list of authorized retailers so that consumers can steer clear of independent sellers who deal in counterfeits.
As regards the Indian market, the All India Cosmetics Manufacturers Association (AICMA) (representing small scale cosmetic manufactures in India) along with big market players such as L’Oreal and Hindustan Unilever Ltd have also weighed in on curbing brand dilution owing to the circulation of counterfeit cosmetics in the Indian market. They have identified some important factors that are contributing to the menace of counterfeiting in the Indian cosmetic industry, as below:
• Rising demand for heavily discounted cosmetic products
• Parallel imports
• Anti-competitive pricing
• Decline in domestic manufacturing of cosmetics and personal care products
• Lack of enforcement by regulatory bodies to curb IP violations
With increasing dialogue around IP rights and enforcement, brand owners are now taking prompt action including conducting criminal raids and filing suits against third parties that are infringing their trademark rights in the domestic market. Even at the import stage, brand owners can take steps to record their trademarks with the Customs Authority of India for the purposes of monitoring and confiscation. Such recordal can be done under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 which can act as a preventive measure on part of brand owners wherein counterfeit goods can be detected and disposed off at the border itself. However, a crackdown on counterfeiters can only be achieved once the regulatory bodies and the consumers themselves make a concerted effort towards aiding brand owners in mitigating this menace of counterfeiting.

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