1

WHETHER COPYRIGHT CAN BE USED AS

PROTECTION TOOL FOR
CINEMATOGRAPHIC FLIM AND SOUND
RECORDING
INTRODUCTION
Intellectual Property Rights are the legal rights that are granted to a person for any
creative and artistic work, for any invention or discovery, or for any literary work or
words, phrases and symbols or designs for a stipulated period of time. The owners of
Intellectual Property are granted certain exclusive rights through which they use their
property without any disturbance and can prevent the misuse of their property.
The Copyright Act of 1914 was essentially an extension of the British
Copyright Act, 1911 which governed the country till independence. After Indias
independence, the Copyright Act, 1957 came into force which has undergone several
amendments, from time to time to meet the challenges posed by technological
developments, the latest being the 2012 amendments.
The term copyright is not defined under the Indian Copyright Act, 1957
(hereinafter referred to as Copyright Act). The general connotation of the term
copyright refers to the right to copy which is available only to the author or the creator,
as the case may be. Thus, any other person who copies the original work would be
amount to infringement under the Copyright Act. Copyright ensures certain minimum
safeguards of the rights of authors over their creations. Creativity being the keystone of
progress, no civilized society can afford to ignore the basic requirement of encouraging
the same. Economic and social development of a society is dependent on creativity.

The protection provided by copyright to the efforts of writers, artists, designers,

dramatists, musicians, architects and producers of sound recordings, cinematograph films
and computer software, creates an atmosphere conducive to creativity, which induces
them to create more and motivates others to create.
On the other hand, what is created by him/her cannot be claimed ownership for
generations all together as it might harm the social justice. Therefore, a term of life plus
sixty years is being adopted in India for the purpose of determining the period of
copyright. This period may vary from country to country. If copyright protection is
applied rigidly, it can hamper progress of the society. Therefore, copyright laws are
enacted with necessary exceptions and limitations to ensure that a balance is maintained
between the interests of the creators and of the community.
Copyright in a work is considered as infringed only if a substantial part is used
unauthorized. What is substantial varies from case to case. More often than not, it is a
matter of quality rather than quantity. For example, if a lyricist copy a very catching
phrase from another lyricists song, there is likely to be infringement even if that phrase is
very short. The best example would be Oh, Pretty women dealt in the case of
Campbell Vs Acuff Ross Music Inc.
The copyright law therefore, to strike a balance between promoting
innovativeness amongst the creators and the interest of the general public has excluded a
fair deal of works that is permitted without specific permission of the copyright owners.
In order to protect the interests of users, some exemptions have been prescribed in respect
of specific uses of works enjoying copyright such as research or private study, criticism
or review, reporting of events, judicial proceeding, performance made before a nonpaying audience etc.
The most important criteria to determine whether the said article is copyrightable
or not, is based on its originality .Also copyright can be only for things that are worth
copying and not otherwise. For example, a baby scribing in a pad cannot be copyrighted.
Copyright protects the expression and not the content or substance per se.

Copyright also does not protect the titles per se or the names, word or a set of
words. But there can be exceptions based on the facts and circumstances of each case.
For example, the actor Shah Rukh Khan has copyrights his name (SRK) and the music
composer A.R.Rahman copyrighted the title Jai Ho for the Oscar song which is
currently under litigation. It is noteworthy to mention here that the defendant can always
take a stand of cancellation of copyright in any suit unless he is estopped by any implied
or express acceptance. Copyright may also be granted for things that would come under
patents, trademarks or designs..
In fact, it is a bundle of rights including, inter alia, rights of reproduction,
communication to the public, adaptation and translation of the work. There could be
slight variations in the composition of the rights depending upon the nature of work.
WORK IN WHICH COPYRIGHT SUBSISTS (CHAPTER III, SECTION 13 OF
COPYRIGHT ACT)
1. Literary works (including computer programmes, tables and compilations
including computer literary data bases)
2. Dramatic works
3. Musical works
4. Artistic works
5. Cinematograph films
6. Sound recordings.
Foreign Works
The copyright of foreign works is also protected in India. Copyright of nationals of
countries who are members of the Berne Convention for the Protection of Literary and
Artistic Works, Universal Copyright Convention and the TRIPS Agreement are protected
in India through the International Copyright Order, as if such works are Indian works
Copyright as provided by the Indian Copyright Act is valid only within the borders of the
country. To secure protection to Indian works in foreign countries, India has become a

member of the following international conventions on copyright and neighbouring

(related) rights:
a. Berne Convention for the Protection of Literary and Artistic works.
b. Universal Copyright Convention.
c. Convention for the Protection of Producers of Phonograms against Unauthorised
Duplication of their Phonograms.
d. Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties.
e. Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement
Ownership
Generally, the creator or the author of the work is the owner of the work and therefore
entitled to get the copyright for the work. Where the author of the work is employed by
another person, the work belongs to the employer of the author. And where creation of
the works is incidental, but not the purpose, the work belongs to the authors. But in
practice, out of the contractual agreement between the employer and the employee, the
creation during the course of employment would be belonging to the employer.
There may be a situation where a particular final work involves many copyrightable subdivisions such as film wherein many works such as music, lyrics, dramatic works etc are
copyrightable. The authors in the creation of such work are many such as:
a. In the case of a musical work, the composer.
b. In the case of a cinematograph film, the producer.
c. In the case of a sound recording, the producer.
d. In the case of a photograph, the photographer.
e. In the case of a computer generated work, the person who causes the work to be
created.
f. In the case of Script, the writer. Etc.

Where the work is made by the author in the course of his employment under a
contract of service or apprenticeship, for the purpose, the said employer shall, in the
absence of any agreement to the contrary, be the first owner of the copyright in the work
in so far as the copyright relates to the publication of the work, or to the reproduction of
the work for the purpose of its being so published, but in all other respects the author
shall be the first owner of the copyright in the work. For example, where the composer of
the music copyrights his creation and later provides the same to the film for some
consideration, the work is still owned by the author only.
A.CINEMATOGRAPH FILM
A Cinematograph film can be defined as any work of visual recording on any medium
produced through a process from which a moving image may be produced by any means
and includes a sound recording accompanying such visual recording and 'cinematograph'
shall be constructed as including any work produced by any process analogous to
cinematograph

including

video

films

The author of cinematograph film is the producer, as par section 2(d)(v) of the copyright
Act. Video films are deemed to be work produced by a process analogous to
cinematography.
Section 13(10) of the U.K. Copyright Act of 1956 defines the term as follows:
Cinematograph film means any sequence of visual images recorded on material of
any description (whether translucent or not) thereby can be capable of use of that
material:(a)of

being

shown

as

moving

picture,

or.

(b) of being recorded on other material (whether translucent or not), by the use of which
it can be shown.This definition would appear to include video cassette tapes
The cine artiste who acts in the film is not protected by copyright law for his
acting.

A cinematograph film may be taken of a live performance, like sport events,

public functions, or dramatic or music performance or it may be based on the
cinematograph version of a literary or dramatic work. In the latter case if the
corresponding literary or dramatic work is copyrighted the making of the film will
require the consent or license of the owner of the copyright in the literary or dramatic
work since that copyright includes the right to make a cinematograph film. Similarly if
the film has a sound track recording of music the producer will have to obtain the consent
of the verse writer and the song writer if copyright subsists in them.
Effect of censorship on copyright
Where the owner of a cinematograph film has committed an offence under the law
relating to film censorship and is liable to prosecution for that offence, the question arises
whether it would affect his right to copyright in the film. Since the subsistence of
copyright depends only on the provisions of the Copyright Act it would appear that the
fact that the owner has not complied with the film censorship requirements will not affect
the subsistence of copyright in the film or the enforcement of remedies against
infringement.
Copyright in lyric and music and owner of cinematograph films
Once the author of a lyric or a musical work parts with a portion of his copyright
by authorizing a film producer to make a cinematograph film in respect of his work and
thereby to have his work incorporated or recorded on the sound track of a cinematograph
film, the latter acquires by virtue of section 14(d) of the Copyright Act on completion of
the cinematograph film a copyright which gives him the exclusive right inter alia of
performing the work in public for example to cause the film in so far as it consists of
visual images to be seen in public and in so far as it consists of the acoustic portion
including a lyric or a musical work to be heard in public without securing any further
permission of the author (composer) of the lyric or a musical work for the performance of
the work in public. In other words, a distinct copyright in the aforesaid circumstances
comes to vest in the cinematograph film as a whole which in the words of the British

Copyright Committee set up in 1951 relates both to copying the film and to its
performance in public.
The composer of a lyric or a musical work
However, retains the right of performing it in public for profit otherwise than as a
part of the cinematograph film and he cannot be restrained from doing so. In other words,
the author (composer) of a lyric or musical work who has authorized a cinematograph
film of his work and has thereby permitted him to appropriate his work by incorporating
or recording it on the sound track of a cinematograph film cannot restrain the author
(owner) of the film from causing the acoustic portion of the film to be performed or
projected or screened in public for profit or from making any record embodying the
recording in any part of the sound track associated with the film by utilizing such sound
track or from communicating or authorizing the communication of the film by radiodiffusion, as s. 14(1)(c) (now replaced by the new s.14(d) of the Act expressly permits the
owner of the copyright of the cinematograph film to do all these things. In such cases, the
author (owner) of the cinematograph film cannot be said to wrongfully appropriate
anything which belongs to the composer of the lyric or musical work."
The definition of cinematograph film only protects the film as well as the sound track
which is married to the film proper (i.e. the visual sequence)
The copyright in the entire film may cover portions of the film in the sense that
the owner of the copyright in the film will be entitled to the right in portions of the film;
but this idea or concept cannot be extended to encompass an idea that there would be one
owner of the cinematograph film and different owners of portions thereof in the sense of
performers who have collectively played roles in the motion picture.
Norowzian v Arks Ltd. (No.2) [2000] FSR 363 (CA). In this case the question as to
whether a short film called "joy" consisting of a man dancing to music was infringed by
another film called 'Anticipation'. In both films the visual impact was produced by an
editing technique known as 'jump cutting'. Both were advertising films. It was held by the
court of appeal that

(1) since 'joy' was a work of action capable being performed before an audience it was a
dramatic work
(2) 'joy' was not a recording of a dramatic work;
(3) 'Anticipation' was not a copy of a substantial part of 'joy'.
B.SOUND RECORDING
Copyright exist in a sound recording Sound recording means a recording of
sounds from which such sounds may be produced regardless of the medium on which
such recording is made or the method by which the sounds are reproduced.
Copyright will subsist in a sound recording only if it is made as par the Act.
Copyright will not subsist in any sound recording made in respect of literary, dramatic or
musical work, if in exist in the making the sound recording, or that copyright in such
work has been violated or infringed. The right of sound recording is different from the
subject matter recorded as they are the subject of independent copyrights. The author of a
sound recording is the producer.
In the present U.K. Copyright, Designs and Patents Act 1988, s. 5A defines "sound
recording" as follows:
"Sound recording" means(a) a recording of sounds from which the sounds may be reproduced or
(b) a recording of the whole or any part of a literary, dramatic or musical work, of
which sounds reproducing the work or part can be produced. irrespective of the medium
on which the recording is made or the method by which the sounds are reproduced or
produced.
Recording of music
Musical works and sound recording embodying the music are considered
separate subject-matters for copyright. Thus copyright in the recording of music is
separate from the copyright in the music. Copyright in the music vests in the composer
and the copyright in the music recorded vests in the producer of the sound recording.
Where the song has not been written down and the composer who is also the performer

records the song two copyrights come into existence at the same time, one for the music
and one for the sound recording.
INFRINGEMENT

IN

CINEMATOGRAPHIC

FLIM

AND

SOUND

RECORDINGS:
I.

CINEMATOGRAPHIC WORKS:

Copyright in cinematographic works is more complex in nature as there a variety of

copyrights exist in a single work and many a times these rights are also overlapping. The
first right in a film is the 'theatrical right' i.e. the right to exhibit films in theatres. The
producer is the copyright holder. The distributors buy theatrical rights from producers and
then make some arrangements with the theatre owners for actual exhibition to the public.
The theatrical rights are limited by territory and time.
Films are also released in video cassettes. In fact, these days viewing film at home
has become more popular than seeing the same at theatres. The producers sell the video
rights to another party who makes video cassettes for sale in the market. These cassettes
are meant for 'home viewing' only i.e. one can buy a copy of it for seeing at home with
family members and friends. Such cassettes cannot be used for showing the film in cables
or through satellite channels because showing films in cables or satellite channels require
acquisition of separate sets of rights namely 'cable rights' and 'satellite rights' etc. A cable
network is generally limited to local areas as it requires receivers (viewers' TVs) which
are to be physically connected through cable wire to the operators. In case of satellite
channels, however, there. is no such physical limit as transmission takes place through air
and received at the users end by dish antenna(s).
Interestingly, in India satellite transmissions, in most of the cases, reach to endusers through cable networks only. The cable networks in India works in a two-tier
system. At the top there are main operators who transmit their programmes through
numerous small local operators on a franchise basis. The programmes of satellite
channels reach to the viewers through cable networks. The (main) cable operators do not
pay anything to satellite channels for showing latter's programmes in the network except

10

for pay channels (e.g. ESPN, Zee Cinema, Movie Club etc). The small cable operators,
however, share their incomes with their respective main operators. The revenue for small
operators comes from the subscription of viewers.
Music is an integral part of any cinematographic work. In India, film sound tracks
account for almost 3 I 4th of the total music market. Even if film producer has the
copyright in the film, the music included in the film is the outcome of efforts undertaken
by a separate group of creative people such as the composer, lyricists etc. each of them is
a rightholders of its own right.
Infringement of copyright of cinematographic works takes two principal forms,
namely 'video piracy' and 'cable piracy'. However, infringement of copyright in one
form can spill over and affect the revenues of the other. 'Video piracy' takes place when a
film is produced in the form of video cassette without taking proper authorisation from
the right holder i.e. producer. Two types ofvideo piracies are common in India. One,
where video right for films has not been sold at all (by the producer) but video cassettes
are available in the market for buying or borrowing. And two, when video right is
(legally) sold to a party but cassettes are made and sold by others (pirates) as well. Cable
piracy is unauthorised transmission of films through cable network. As mentioned above,
showing a film in a cable network requires acquisition of proper authorisation from the
rightholders. But many a time, films, especially the new releases, are shown through
cables without such authorisation, which tantamount to infringement of copyright.
Infringement of copyright is a rare phenomenon in satellite channels because such
channels are organised and generally do not show films without buying proper rights. But
there are cases where right of one channel operator is violated by others.
II.

SOUND RECORDING

The sound recording industry faces three types of infringement. First, there is a simple
way by which songs from different legitimate cassettes/COs (and thus different
rightholders) are copied and put in a single cassette/CO. These are then packaged to look
different from the original products and sold in the market. Second, there is
counterfeiting, when songs are copied into and packaged to look as close to the original

11

as possible using the same label, logos etc. These products are misleading in the sense
that ordinary end users think that they are buying original products. The third form of
music piracy is bootlegging, where unauthorised recordings of performance by artists are
made and subsequently reproduced and sold in the market. All these happen without
the knowledge of the performers, composer or the recording company.
Earlier the music piracy was confined to cassette tapes only. With the advent of
CDs in the eighties it was thought that infringement of copyright of sound recordings
would become things of the past. But in reality CD piracy is the greatest threat to today's
music world. In fact, CDs piracy has got an international vigour. Fortunately or
unfortunately, CD industry is still in it nascent stage in India. At present CD market is just
2 to 3 percent of the overall music market in the country. CDs have not taken off mainly
because of high prices. In India CDs are sold on an average price ranging between Rs.l50
to Rs.550. Considering price of cassettes, the price differential (between cassettes
and CDs) is quite high and prohibitive for ordinary music lovers. Cassette piracy in India
is as old as the cassette industry itself. Govt. policy put music industry in the small scale
category and volume of a record company's cassette production was restricted to 300,000
units per annum. This led to a wide gap in he demand supply front which was ultimately
bridged by the pirates.
Even if music piracy percentage has declined from a high of 30% in 1995 to about 27%
in 2005, India is the world's sixth largest pirate market in value terms but third in volume
terms. The popularity of Indian music has gone beyond the national boundaries. There
is large demand for Indian music in the neighbouring countries such as Pakistan, West
Asia as well as far off countries like USA, Canada and the UK. Indian music is also
pirated in some of these foreign countries, the notable among these being Pakistan and
the West Asia. Similarly, foreign audio products are also subject to piracy in Indian soil
III.

PIRACY AND PROTECTION

Piracy is a problem worldwide and affects all the major content industries like

software, television, recording and movies. This problem has assumed enormous
proportions, with the major U.S. motion picture studios reporting a loss of $6.1 billion in

12

the year 2005 due to piracy worldwide. 80% of these losses have resulted from piracy
overseas and 20% because of piracy in the United States. In India, 29% of the potential
market for movies produced by major U.S. movie studios is lost to piracy. The IT
industry is similarly affected with a recent study revealing that 35% of the software
installed in 2006 on personal computers (PCs) worldwide was obtained illegally,
amounting to nearly $40 billion in global losses due to software piracy. Although there
are various laws in place for battling piracy, the enforcement of these laws in India is
weak. However, Indian courts have passed various judgments enforcing the provisions of
the copyright law
Details to be included in sound recording and video filmssection 52A
Under s. 52A introduced by the Copyright (Amendment) Act 1984, the following
particulars should be displayed on sound recording or video films or video cassettes, as
the case may be, or any container thereof namely:
(a) the name, and address of the person who has made the sound recording
(b) the name and address of the owner of the copyright in such work
(c) the year of its first publication.
Video film or video cassette-so 52A(2)
(a) if such work is a cinematograph film required to be certified for exhibition under the
provisions of the Cinematograph Act 1952, a copy of the certificate granted by the Board
of Film Certification under s. 5A of that Act is respect of any work
(b) the name and address of the person who has made the video film and a declaration by
him that he has obtained the necessary license or consent from the owner of the copyright
in such work for making such video film; and
(c) the name and address of the owner of the copyright in such work.
AMENDMENT ACT 2012 AND COPY RIGHT PROTECTION FOR
CINEMATOGRAPHIC AND SOUND RECORDIN25G
The definition of cinematograph film in the erstwhile Act read under section

13

2(f) as: Cinematograph film means any work of visual recording on any medium
produced through a process from which a moving image may be produced by any
means and includes a sound recording accompanying such visual recording and
cinematograph shall be construed as including any work produced by any process
analogous to cinematography including video films.
This definition has been amended in 2012 and it now reads as any work of
visual recording on any medium and includes a sound recording accompanying visual
recording and cinematograph shall be construed as including any work produced by any
process analogous to cinematography including video films...

The condition with

respect to the medium and the process of creation of a visual recording are thus omitted
by the amendment.
The newly inserted section, section 2(a) defines visual recording as, ...the
recording in any medium, by any method including the storing of it by any electronic
means, of moving images or of the representations thereof, from which they can be
perceived, reproduced or communicated by any method. Section 2(xxa), thus broadens
the omitted portion of the definition of cinematographic work under section 2(f).
In the Copyright Amendment Bill of 2010 there was a proposal for making the
principal director in a cinematographic work to be a co-author since at present, the
principal director is only paid fee for his work and his creativity goes unrecognized in
spite of his intellectual contribution in the creation of the film. While noticing that such a
provision does not exist in most of other jurisdictions like the US, the parliamentary
standing committee endorsed its apprehensions that the proposed amendments would
create a lot of uncalled and unnecessary problems in the Indian cinema. Thus the
committee dropped the recommendation citing that the time was not ripe in India to make
the principal director co-author of cinematograph film as the producer is the kingpin
who

invests

substantive

money,

raises

finance

through

institution,

utilizes

persons/expertise and takes such initiative and responsibility for making the work and
chooses the director on certain offer

14

2. Further, the economic rights in respect of cinematographic film are expanded. The
exclusive rights of owners o f a cinematographic work and sound recording under section
14(d) and section 14(e) respectively are widened to include the right to store the work in
any medium by electronic or other means. Similarly, the right to store the work in any
medium by electronic or other means is included in respect of artistic works under section
14 (c).
The expansion of economic rights by covering the right to store thus addresses
technological issues of storing. The right to store the work assumes great importance
in a digital environment where copyrighted work can be reproduced flawlessly and
inexpensively and instantaneously transmitted worldwide. The words any medium by
electronic or other means are wide enough to address the possibility of evolution of new
technologies.
3. Ownership and authorship are two different notions under copyright law. An author
need not necessarily be the first owner of copyright. Section 17 provides for ownership of
copyright. A combined reading of sections 17(b) and 17(c) clarifies that in case of
commissioned cinematograph work, the commissioning party and in case of employer employee relationship, the employer is considered to be the first owners of the work.
The 2012 amendments have inserted a new proviso stating that: in case of any
work incorporated in a cinematograph work, nothing contained in clauses (b) and (c)
shall affect the right of the author in the work referred to in clause (a) of sub section (1)
of section 13.
Hence the general provisions in section 17 (a) will not apply in relation to the
rights of the authors of literary, musical, dramatic and artistic works, which have been
incorporated in cinematograph film and the respective authors will continue to be
considered as the first owners of the said works. When a work is incorporated in a
cinematograph film, the ownership of such work reverts back to the author even when
such work was commissioned or was created under employment
Exhaustion of copyright

15

Till 2012 amendments, the doctrine of exhaustion was applicable only to the literary,
dramatic and artistic works. Exhaustion basically means that after the first sale by the
right holder or by his exhaustion authorization, his right comes to an end and he is not
entitled to stop further movement of goods. Thus, once an intellectual property right
holder has sold a physical product to which its intellectual property rights are attached, he
cannot prohibit the subsequent resale of that product. The right is exhausted by the first
consensual marketing. A third party may, after legitimately purchasing these goods, sell
them in any of the country-markets. Exhaustion may be either domestic or international.
Under domestic exhaustion,
In the Indian copyright regime, subsequent to the decision in Warner Bros.
Entertainment Inc. v. Santos K.G, the application of the doctrine of exhaustion was
Limited to literary, musical, dramatic and artistic works. The doctrine of exhaustion had
no applicability to cinematographic films and to sound recordings. In Warner Bros. the
High Court of Delhi was confronted with the question whether a cinematograph film, in
which copyright subsisted in India, once put in the market by the owner of the copyright
was subject to the doctrine of exhaustion. The case deserves a detailed analysis in this
context. The plaintiffs therein claimed copyright in India under the International
Copyright Order, 1991 in films which were first published in the US. The defendant
legally bought these DVDs from the US, and imported them into India. They then made
available the particular DVDs (which had been legally bought by them) to their Indian
customers. The plaintiffs alleged that these acts of import and hiring out amounted to an
infringement of their copyright. The defendant stated that the DVDs were bought legally
there was no copy of those particular DVDs. That being the case, it was contended that
no infringing copy had been made. Further, relying on the first-sale doctrine, the
defendant argued that once a DVD has been legally sold to them by the plaintiffs, the
plaintiffs rights in that particular DVD were exhausted. The defendant also argued that
once the plaintiffs placed their copies in the US market, and they were purchased
legitimately, long arm restrictions expressed on the concerned copies are of no
consequence; it lost or exhausted the right to control further sale or commerce in that

16

copy. Accordingly, the plaintiffs could not exercise control over the particular DVDs after
the first sale had been completed. The defendant also raised the explanation to section 14
of the Copyright Act which states, For the purposes of this Section, a copy which had
been sold once shall be deemed to be a copy already in circulation . It was urged that the
doctrine of first sale applies in India, and there was no case of infringement. The court
noted the at under section 14(d) copy right in respect of cinematographic works
means, right for:
I. making a copy of the film;
ii. Selling or giving on hire or offer for sale or hire any copy of the film, regardless of
whether such copy has been sold or given on hire on earlier occasions;
iii. communicating the film to the public.
Whereas the copyright in respect o f a literary, dramatic or musical work would mean
under section 14 (a) the right:
I. to reproduce the work in any m arterial form including the storing of it in any medium
by electronic means;
ii. to issue copies of the work to the public not being copies already in circulation;
iii. to perform the work in public, or communicate it to the public;
iv. to make any cinematograph film or sound recording in respect of the work;
v. to make any translation of the work;
vi. to make any adaptation of the work;
vii. to do, in relation to a translation or an adaptation of the work, any of the acts
specified in relation to the work in sub clauses (I) to (vi).
Thus, as per the court the content of copyright in case of cinematographic works
is different from that in the case of literary works, dramatic works etc. The phrase copy
in circulation was found in describing the copyright tis-a-vies literary, musical and
dramatic works. It found no application in cinematographic works. On a plain reading of
section 14, the phrase was used to limit the copyright in the case of literary, musical and
dramatic works only. This limited exhaustion negates the applicability of the principle in
regard to other classes of copyrights. Thus, Parliament having intervened in one category

17

of copyrights to grant a limited kind of exhaustion and consciously chosen not to extend
it to others, sleight of judicial reasoning cannot extend its application.
The court further stated thus Section 14(1)(d) provides the at the copy right owner
has, in case of cinematographic films, the exclusive right to sell or give on hire or offer
for sale or hire, any copy of the film, regardless of whether such copy has been sold or
given on hire on earlier occasion. The copyright owner therefore continues to be entitled
to exercise rights in a particular copy of the film regardless of whether it has been sold
previously- in express contrast to literary works, which are already in circulation.
However, with the 2012 amendments the position has changed.

As stated

earlier, the amendments replace the term hire with commercial rental in section 14(d)
(ii) and 14(e)(ii) which relate to cinematograph film and sound recording respectively.
Further, the words, regardless of whether such copy has been sold or given on hire on
earlier occasions as used under sections 14(d)(ii) and 14(e)(ii) prior to amendments are
omitted by the 2012 amendments making the doctrine of exhaustion applicable to
cinematograph films and sound recordings
Assignment of copyright
Intellectual property laws confer exclusive rights to the owners of intellectual
property to exploit their work. Like other major forms of intellectual property, copyright
can be transferred by license or assignment. A license permits the licensee to make use of
copyrighted work under a given set of terms and conditions m usually agreed upon by the
licensor - the copyrighted holder and the licensee. Whereas an assignment confers full
rights in the underlying copyrighted work. By assigning the copyright, the copyright
owner transfers his titles to the assignee. Once assigned, then the original owner no
longer owns any control in relation to the work. An assignment permits greater freedom
to the assignee in marketing o f a work than could be a case with a license. Assignment
can be effected in respect of an existing work or in respect o f a future work.Similarly
assignments may be in respect of whole rights or partial rights. Assignments can either be
general or subject to limitations. Under section 18 of the Copyright Act which provides
for assignment of copyright, three provisos have been inserted by virtue of 2012

18

amendments to safeguard the author from new modes of exploitation which may arise in
the future by way of technological advancements and which were not contemplated at the
time of assignment. The provisos read thus:
a. Provided further that no such assignment shall be applied to any medium or mode
of exploitation of the work which did not exist or was not in commercial use at the
time when the assignment was made, unless the assignment specifically referred to
such medium or mode of exploitation of the work:
b. Provided also that the author of the literary or musical work included in a
cinematograph film shall not assign or waive the right to receive royalties to be
shared on an equal basis with the assignee of copyright for the utilization of such
work in any form other than for the communication to the public of the work along
with the cinematograph film in a cinema hall, except to the legal heirs of the
authors or to a copyright society for collection and distribution and any agreement
to contrary shall be void:
c. Provided also that the author of the literary or musical work included in the sound
recording but not forming part of any cinematograph film shall not assign or waive
the right to receive royalties to be shared on an equal basis with the assignee of
copyright for any utilization of such work except to the legal heirs of the authors
or to a collecting society for collection and distribution and any assignment to the
contrary shall be void.
Hence, subsequent to the 2012 amendments, no assignment will be applied to any
medium or mode of exploitation of the work which did not exist or was not in
commercial use at the time when the assignment was made, unless the assignment
specifically referred to such medium or mode of exploitation of the work. Further, the
author of the literary or musical work included in a cinematograph film should not assign
or waive the right to receive royalties to be shared on an equal basis with the assignee of
copyright for the utilization of such work in any form other than for the communication
to the public of the work along with the cinematograph film in a cinema hall, except to
the legal heirs of the authors or to a copyright society for collection and distribution and

19

any agreement to contrary shall be void. Moreover, the author of the literary or musical
work included in the sound recording but not forming part of any cinematograph film will
not assign or waive the right to receive royalties to be shared on an equal basis with the
assignee of copyright for any utilization of such work except to the legal heirs of the
authors or to a collecting society for collection and distribution and any assignment to the
contrary shall be void.
To address the technological advancement that may take place in future, it is
common in many copyright licenses to include a language that covers all media not
known or hereafter developed or all formats presently existing or hereafter invented.
Regarding the future technology issues countries have adopted various interpretations.
For example, way back in 1988, the matter came up in India, in Raj Video Vision v. K.
Mohanakrishnsn wherein the producer had assigned to the original AIR assignee in the
year 1961 all negative rights in a Tamil talkie picture titled The defendant had derived
right from the original assignee in respect of the film. However, the producer as original
owner continued to be the author of copyright in the film. The main issue was whether
the owner has while assigning all rights had also assigned video and television rights
which were relatively unknown in 1961.
The court answered the issue by stating that the right given under any assignment should
be specified and definite. The defendant cannot claim a right which was not contemplated
at the time of original assignment, which was not contemplated when neither party could
have dreamt of the later scientific advancement of video, satellite etc. But in Hospital for
Sick Children v. Walt Disney Productions Inc., it was held that a license which granted
Walt Disney the sole and exclusive rights to produce Peter Pan in cinematograph and
motion picture films to be sufficiently broad enough to grant rights to both silent and the
new technology of talkie films. However, the amendments settles the issue in India
forever.
Still the amendments fail to answer certain questions. While one may agree that the new
technology will require future negotiation in assignment, a crucial question that crops up
is that why any medium or mode of exploitation clause is missing in respect of licenses?

20

This could create anomalous situation because by referring only to the assignment, the
proviso leaves licenses. One may also wonder why dramatic works are excluded from the
third proviso of section . Why the copyright holders of dramatic work are not allowed for
equitable remuneration as in the case of literary or m musical work incorporated in a
cinematographic film? This proviso leaves the artist with no right of equitable
remuneration if any pantomime, puppet show or dumb show is incorporated in a film.
The exclusion of dramatic work from the purview of this proviso is thus
unjustifiable.
Further, under section 19 of the Act which relates to the mode of assignment,
certain changes have been incorporated. Section 19(3) has been amended to provide that
the assignment of copyright in any work shall specify the amount of royalty and any
other consideration payable. Further three sub-sections, i.e., 19(8), 19(9) and 19(10) have
been inserted. Section 19(8) provides that the assignment of copyright in any work
contrary to the terms and conditions of the rights already assigned to a copyright society
in which the author of the work is a member shall be void. Section 19(9) and section
19(10) provide that no assignment of copyright in any work to make a cinematograph
film or sound recording (which does not form part o f a cinematograph film) shall affect
the right of the author to claim an equal share of the royalties and consideration payable
for any utilization of such work, respectively.
Licenses
The copyright owner alone has the exclusive right to deal with the copyrighted subject
matter. If a third party does, without authority from the copyright owner, anything that
falls under the exclusive domain of the latter that would amount to infringement. An
infringement thus occurs, when the exclusive rights of the copyright owner are exercised
without a license. A license makes the act lawful that which would otherwise be
unlawful. A license passes no proprietary interest since the licensor retains ownership.
In actual practice, it is mainly through licenses that the copyright owner commercially
exploits a work for financial gains. A license can be voluntary or involuntary as in the
case of compulsory licenses; or exclusive or nonexclusive.Copyright Act stipulates the

21

formalities to be complied with in order to enter into legally enforceable licenses. Section
30 of the Copyright Act, prior to the recent amendments required licenses to be in writing
and signed.
The 2012 amendments have simplified the procedure by requiring copyright
licenses to be only in writing. Further, by amending section 31, compulsory licensing has
been made applicable to foreign works as well. Earlier this provision was applicable only
in respect of Indian works withheld from public. Now compulsory licenses apply to all
works, whether Indian or not with an object of making foreign works capable of being
licensed compulsorily in case it is published elsewhere but withheld in India. The
amendments also widened the scope of section 31A to provide for compulsory license in
the case of published work. Before the amendments the section applied only to
unpublished Indian works. The amendments enable the copyright board to grant
compulsory licenses to more than one person provided the board is of the opinion that the
applicant(s) is qualified to do so.
Before the 2012 amendments, the most common forms of licenses were
voluntary and compulsory licenses. The amendments have introduced a new form of
license - the statutory licenses. Section 31C has been inserted by virtue of the 2012
amendments to provide for statutory licenses for cover versions. In the preamendments
regime, the right to make cover versions was treated as a part of fair dealing under
section 52(1)(j). However, time period after which a cover version can be made has
increased from two years to five years. Under section 31A, any person desirous of
making a cover version, being a sound recording in respect of any literary, dramatic or
musical work with the license or consent of the owner of the right in the work, can do so.
Conditions for m making cover versions are stipulated in the Act itself. All cover versions
need to state that they are cover versions. The amendments confers no right to alter the
original song. Only note-for-note and word-for-word covers are allowed by the
amendments. Alterations are allowed if it is technically necessary for the purpose of
making of the sound recording. Sound recording in the cover version must be in the same
medium. Prior notice of the intention to make the sound recordings must be given to the

22

owner. Advance copies of all covers or labels with which the sound recording are to be
sold to be provided or royalties to be paid in advance. One royalty in respect of such
sound recordings shall be paid for a minimum of fifty thousand copies of each work
during each year.
Copyright society
Chapter VII of the Copyright Act providing for copyright societies has been substituted in
the year 1994. Various amendments have been carried out in section 33, 34 and 35 o f the
Act dealing with registration and functioning of copyright societies. The newly inserted
proviso to section 33 states that the business of issuing or granting licenses in respect of
literary, dramatic, musical and artistic works incorporated in a cinematograph film or
sound recordings shall be carried out only through a registered copyright society.
The existing copyright societies will be deemed to be treated as copyright society under
the new amendment Act but they need to reregister The new amendments thus safeguard
the copyright societies from being mismanaged and ensures that the interest of both the
authors and owners are protected. It has also strengthened the economic and moral rights
of authors, confers positive rights to performers and makes provisions to facilitate better
access of copyrighted work. It is hoped that the amendments with respect to assignment
and licenses would streamline business practices by protecting original authors interest.
However, it also leaves many questions unanswered inviting judicial intervention for a
clear import of law. One important issue that has been left unresolved is parallel imports.
This pending issue can only be resolved by a legislative amendment.
QUESTION

OF

FAIR

USE

AND

BROADEST

PROTECTION

TO

CINEMATOGRAPH FILMS
Mysteriously, the broadest protection is offered under the Act to the category of
cinematograph films by excluding these from many of the exceptions to protection. The
only permitted act in respect of the copyright in cinematograph films that would not
amount to infringement under the Act is as provided under sub-section (i) of section 52.

23

The subsection refers to performance and communication to the public of

the cinematograph film. Under sub section (q) of section 2 of the Act, performance has
been defined only in respect of performers right and means any visual or acoustic
presentation made live by one or more performers.
Further, under subsection (d) of section 14, the exclusive rights granted in
respect of a cinematograph film are: (i) to make a copy of the film including a photograph
or any image forming part thereof; (ii) to sell or give on hire or offer for sale or hire, any
copy of the film, regardless of whether such copy has been sold or given on hire on
earlier occasions; and (iii) to communicate the film to the public. Notably, there is no
right granted in respect of performance of a cinematograph film. Communication to the
public is defined under sub-section (ff) of section 2 to mean making any work available
for being seen or heard or otherwise enjoyed by the public directly or by any means of
display or diffusion other than by issuing copies of such work regardless of whether any
member of the public actually sees, hears or otherwise enjoys the work so made
available. The right of performance of a work is granted to the owner of copyright under
sub-section (a) of section 14 of the Act only in respect of literary, dramatic or musical
works.
It also significant to note that the UK copyright law has clearly reserved rights
of performance only in respect of literary dramatic and musical works and rights of
playing or showing of the work (akin to the right of communication to the public
under the Indian Act) in respect of sound recordings, films, broadcasts and cable
programs.
Considered in that light, it is trite to state that an exception from protection
could be given only to a right that is provided for under the Act. While there does not
appear to be any exclusive right of performance granted to the owner of a cinematograph
film, an exception granted to the right to perform a cinematograph film in certain
circumstances is rather out of place. Further, the words, or the communication to such
an audience of a cinematograph film or sound recording inserted by the 1994
Amendment seems almost an afterthought and a clumsy attempt to rectify the situation.

24

WHAT IS NOT PERMITTED UNDER THE ACT IN RESPECT OF A

CINEMATOGRAPH FILM AND SOUNDRECORDING
A. CINEMATOGRAPH FILM
Films being an integral part of teaching the art of cinematography and film making, the
absence of provisions making exceptions by way of research, teaching and private study
in respect of cinematograph films appear to make our film institutes and film schools
guilty of continuous infringement of copyright in cinematograph films. Further films,
effectively used to teach languages, often pose a challenge in terms of advice to a client
by a copyright practitioner as to their use.
The Indian courts have also these days frequently been called upon to
examine issues relating to violation of copyright in films and sound recordings.
Unfortunately, the Act exempts only the reproduction in the course of a judicial
proceeding of literary, dramatic, musical and artistic works from infringement . Hence,
strictly speaking, viewing and comparing such works in the course of a judicial
proceeding to determine infringement and other legal issues could fall foul of the
copyright protection provisions under the Act.
Lastly, the issue of use of a cinematograph film for reporting current events
arises more in todays context with the highly pervading electronic media. In the case of
ESPN Star Sports v. Global Broadcast News Limited and Others , although a specific
argument that no fair dealing provisions existed in respect of cinematograph films for
reporting of current events and that the reporting of a sports event by the news channels,
therefore amounting to violation of the copyright in the cinematograph film was raised by
the appellant-broadcaster, the High Court of Delhi did not address that same. Yet another
act of infringement in the context of reporting current events is the unauthorized use by
newspapers and magazines of photographs of images forming part of a cinematograph
film while publishing reviews in the print media. As per sub-section (i) of section 14(d),
the producer of the film has the exclusive right to make a copy of the film including a
photograph of any image forming part thereof. The photographs of images from films

25

that usually accompany the film reviews in newspapers and magazines would,
B. SOUND RECORDINGS
A significant exception to infringement of sound recordings is the provision for
making version recordings or sound-alike recordings. Barring this exception, sound
recordings also face an almost similar yet marginally superior treatment under the Act
and, almost all the concerns raised in respect of cinematograph films above apply equally
to sound recordings.
CONCLUSION
Fair use and copyright are, therefore, two sides of a coin that cannot exist
without each other. If the regime of a country is structured to treat copyright with no fair
use or without adequate fair use, everything can be appropriated in the name of copyright,
thereby creating a monopolistic regime in favour of owners of protected works. The
copyright law of a country has to keep pace with developments around the world and
appropriate amendments must be made to maintain a balance between protecting
creativity and preserving public interest. Copyright laws around the world recognize this
aspect and undergo constant revision.
An unhappily worded legislation coupled with uneven application of the fair
use doctrine in respect of the various categories of works results in unequal treatment of
these works; thereby meeting only one part of the dual objectives of copyright protection,
namely recognizing creativity. The other part, namely, protecting the public interest in
accessing the information contained in these works cannot be achieved if fair use
provisions are not adequate. To sum it up copy right law as it exist today is quite strong
and effective. The protection it provided by the copyright act extends not only to the copy
right with respect to cinematographic film and sound recordings in categories as
understood in traditional sense but also in the modern aspect .