Warner Bros. Entertainment Inc. and Others v. Santosh V. G.
CS (OS) No. 1682/2006
Relevant Law(s): Section 14 and 51 of the Copyright Act, 1957
Key Words: copyright, cinematographic works, parallel import, exhaustion
The Plaintiffs (P), their associated and affiliated companies carry on business of film production and are the owners, co-owners, assignees, licensees of rights, titles and have interests in and to the copyrights in the films produced by them.
The Defendant (D) is the proprietor/ partner of the concern which carries on business from four premises by the name and style of Cinema Paradiso.
P alleged that D offers rental DVDs which are either collected by the customers from the shop or delivered to them. Several DVDs so hired out by D, bear the warning that such DVDs are not permitted for sale or rental outside the US and Canada. P thus alleged that giving (a film) on hire or offering a film for hire without the copyright owner’s license is an act of infringement. P further alleged that D has no rental licenses in his favour and all such acts of rental amount to an act of infringement of copyright under the provisions Section 14 (d) (ii) read with section 51 of The Copyright Act, 1957.
P also alleged that D on its website claims to be first DVD store in India with complete license having obtained the assent of the registered organization against film piracy. According to P such claim was made despite the Defendant not being licensed by any of the Plaintiffs. D also had not allegedly obtained any legal consultations or assent of the Motion Picture Association of America (MPAA) or the MPA.
Consequently, P sued D for permanent injunction and damages, claiming that the latter infringed their copyrights in respect of films, by hiring, and offering for hire, infringing copies, in India.
One of the arguments raised was that the doctrine of first sale applies in India, and there was no case of infringement. It was also argued that since Section 30 of the Trademarks Act, 1999, and Section 107-A of the Patents Act, 1970, permit certain types of use and importation analoguous to that in the present, the same should be extended over copyright so as to ensure uniformity between the different laws.
Whether the importation into India by D for giving on hire or rent in India copies of cinematograph films authorized for sale or rental in a particular territory outside India, in which cinematograph films the plaintiff claims copyrights, constitutes infringement of copyright under section 51(b) (iv) i.e. importation into India of Infringing Copies and Section 51(a)(i) of the Copyright Act, 1957?
Defendant’s actions amount to infringement of copyright.
The nature of the bundle of rights which make up the 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 vis-à-vis 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. The legislative intent was clear from the fact that while defining copyright vis-à-vis cinematographic works, the phrase was not used at all. Thus, it was observed that that even though the exhaustion principle may be applicable to literary, musical and dramatic works; that would not apply in case of cinematographic works.
Under Section 14(1)(d), in the case of cinematographic works, the right is “regardless of whether such copy has been sold or given on hire on earlier occasion”. On the question of parallel imports of cinematographic works, it was noted that the Proviso to Section 51(b)(iv) states that importation for private use of the importer is not deemed to be an infringement. The very fact that this proviso was inserted into the statute would indicate that importation for commercial, non-private use would be tantamount to infringement.
On the question of uniformity across different intellectual property laws (Trade Marks Act, Patent Act) it was held that if a specific provision allowed such use and import under the Trademarks Act and Patents Act, the absence of the provision in the Copyrights Act is a sure indication that the legislative intent was to not have the same treatment in this respect for copyrights.