In brief: copyright infringement and remedies in India

Copyright infringement and remedies

What constitutes copyright infringement?

Copyright infringement occurs when any of the following occur:

• unauthorised use of the exclusive rights of the owner of a copyright whether in relation to the whole or a substantial part of the copyright work;
• permitting a place to be used for infringing purposes on a profit basis; and
• displaying or exhibiting in public by way of trade or distributing for the purpose of trade or importing infringing copies of a work.

In the case of MySpace Inc v Super Cassettes Industries Ltd, the Division Bench of the Delhi High Court held that the word ‘place’ mentioned in section 51 of the Copyright Act is broad enough to include the internet and therefore displaying infringing work on the internet would amount to copyright infringement.

Does secondary liability exist for indirect copyright infringement? What actions incur such liability?

The terms ‘indirect’, ‘secondary’, ‘vicarious’ and ‘contributory’ infringement are not mentioned in Indian copyright law, although they are sometimes used. The acts referred to would generally amount to infringement under Indian law, as in the case of jurisdictions that have similar wording in their copyright statutes, such as Australia or the United Kingdom.

In the context of intermediary liability, the only issue is that of secondary liability since an intermediary, by definition, only provides a platform for facilitating online transactions. An intermediary can be held liable if it does not comply with the provisions of section 79 of the Information Technology Act 2000, which also requires certain due diligence to be undertaken, as provided for in the Consumer Protection (E-Commerce) Rules 2020 and the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules 2021, which superseded the Intermediary Guidelines Rules 2011.

What remedies are available against a copyright infringer?

The remedies provided by the Copyright Act 1957 against infringement of copyright are:

• civil remedies – these provide for injunctions, damages, rendition of accounts, delivery and destruction of infringing copies and damages for conversion;
• criminal remedies – these provide for imprisonment, fines, seizure of infringing copies and delivery of infringing copies to the owner; and
• border enforcement – the act also provides for the prohibition of import and destruction of imported goods that infringe the copyright of a person with the assistance of the customs authorities of India.

Is there a time limit for seeking remedies?

Yes. The period of limitation for filing a suit for damages for infringement of copyright is three years from the date of such infringement.

However, each time there is an infringement, it constitutes a recurring cause of action, which will provide a fresh limitation for filing an action (M/S Bengal Waterproof Ltd v M/S Bombay Waterproof Manufacturing Company & Another).

Are monetary damages available for copyright infringement?

Yes. Besides damages the copyright owner can also claim rendition of account of profits.

Can attorneys’ fees and costs be claimed in an action for copyright infringement?

Yes. Litigation costs are a standard request in infringement suits, but the decision to award such costs is at the discretion of the court. Costs awarded seldom cover actual legal expenses. However, the Commercial Courts, Commercial Division and Commercial Division Appellate Division of High Courts Act 2015 brought forth amendments to the Code of Civil Procedure and specifically provides for payments of costs and lays down scenarios in which costs are to be paid and the method used to calculate costs.

Are there criminal copyright provisions? What are they?

Yes. The Copyright Act 1957 has provided for the enforcement of copyright through a series of penal provisions under Chapter 13 of the act. The following are the principal penal provisions under the act:

1. Under section 63, where any person knowingly infringes or abets infringement of the copyright in a work and any other right as covered by the Copyright Act, 1957 (broadcast reproduction rights, performers’ rights, moral rights, etc), such person may be punished with imprisonment of a minimum term of six months and a maximum term of three years, and a fine of between 50,000 and 200,000 rupees.
2. Section 65A penalises circumvention of effective technological measures that may be applied to copies of a work with the purpose of protecting any of the rights conferred under the act (ie, copyright and performance rights). The punishment under this provision is imprisonment, which may extend to two years and payment of a fine. Section 65A was inserted by the Copyright (Amendment) Act 2012.
3. Section 65B makes unauthorised removal or alteration of ‘rights management information’ punishable with imprisonment of up to two years and payment of a fine. The provision makes the unauthorised distribution, broadcast or communication to the public of copies of the work punishable in the same manner if the person is aware that electronic rights management information in the copy has been removed or altered. Section 65B was inserted by the Copyright (Amendment) Act 2012.
4. Section 63A provides for an enhanced penalty on second or subsequent convictions under section 63 (see point (1)).
5. Other provisions in Chapter 13 provide penalties for offences such as using infringing copies of a computer program, making or possessing plates for the purpose of making infringing copies of works and making false entries in the Register of Copyrights.

Are there any specific liabilities, remedies or defences for online copyright infringement?

Yes. The 2012 amendments to the Copyright Act introduced certain provisions that are specifically relevant to copyright infringement and the internet.

Under the fair use provisions of the Act, section 52(1)(b) provides that transient or incidental storage of a work or performance purely in the technical process of electronic transmission or communication to the public does not constitute infringement of copyright. This provision provides a safe harbour to internet service providers that may have accidentally stored infringing copies of a work for the purpose of transmission of data.

Section 52(1)(c) further provides that transient or incidental storage of a work or performance for the purpose of providing electronic links, access or integration that is not expressly prohibited by the rightsholder would not be infringement of copyright, unless the person responsible is aware of infringement or has reasonable grounds for believing that such storage is that of an infringing copy.

Under section 52(1)(c), if the owner of a copyrighted work, in a written complaint to the person responsible for digitally storing an infringing copy of the work, complains that such transient or incidental storage is an infringement, then the person responsible would have to refrain from facilitating access to the infringing copy of the work for a period of 21 days. If, within 21 days, the person responsible does not receive an order from a competent court that directs them to refrain from providing access, then access may be resumed at the end of that period.

Therefore, if A, the owner of a short story, finds that their short story has been published on the website of B, they may write a complaint to B declaring that B must refrain from providing the public with access to A’s short story. B would then have to remove A’s short story from visibility or accessibility on their website for 21 days, within which time A must persuade a competent court that it should order the complete removal of the infringing version or copy of the work. If the court does not issue such an order within that period of time, then B may resume making the short story available to the public on their website. This provision was inserted in the Act by the Copyright (Amendment) Act 2012, which came into force on 21 June 2012. It is yet to be seen in practice.

Apart from the above-mentioned provisions, the Copyright Act makes it amply clear that all the provisions of the act must be applied to electronic and digital media in the same manner they are applied to conventional media. The Copyright (Amendment) Act 2012 has also clarified this in many places. Remedies against copyright infringement on the internet are not dealt with separately under that Act as the provisions sufficiently cover all forms of exploitation of works, including exploitation over the internet, and the remedies for copyright infringement would apply to the internet as they would to any other medium or platform.

As regards online copyright infringement involving intermediaries, section 79(3)(b) of the Information Technology Act 2000 fastens liability on an intermediary if it had actual knowledge of the infringement. ‘Actual knowledge’ was interpreted by the Supreme Court in the case of Shreya Singhal v Union of India, (2013) 12 SCC 73, as meaning knowledge through a court order. However, this requirement was read down for cases involving copyright infringement by the Division Bench of the Delhi High Court in MySpace Inc v Super Cassettes Industries Ltd, and now for copyright infringement matters specific knowledge by the intermediary is sufficient, without the need for a court order.

In the case of Samridhi Enterprises v Flipkart Internet Private Limited & Ors (CS(COMM) 63 of 2023), it was held by the Delhi High Court that intermediaries are not required to act against alleged infringers on a user’s complaint under rule 3 of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021. Rule 3 is concerned with the infringement of a copyright, patent, trademark or any other proprietary right.

The Delhi High Court, while repudiating the submissions of the counsel for that plaintiff, affirmed that rule 3(2) specifies the requirement for intermediaries to publish the details of the grievance officer and the mechanism by which the users could complain against the violation of the provisions of rule 3 of the Information Technology Rules. On receipt of a grievance, rule 3(2)(a) simply requires the grievance officer to acknowledge the complaint and dispose of it. The clause does not go on to say that the intermediary must take any specific action in response to a notice of infringement, much less take any specific action against the intermediary.

In sharp contrast to the above, the Delhi High Court in the case of Aaradhya Bachchan v Bollywood Time (CS(COMM) 230/2023) is examining whether intermediaries such as YouTube are required to take proactive measures to prevent the dissemination of misinformation. The suit was instituted on behalf of the plaintiff by her father – the famous Indian actor, Abhishek Bachchan. Mr Bachchan was aggrieved with objectionable videos of his daughter (ie, fake news about his daughter’s health), Aaradhya Bachchan, being circulated on various platforms such as YouTube.  The Court ordered several websites to immediately stop disseminating or publishing such objectionable videos and also directed Google (which owns YouTube) to set out its policy in detail to ensure that it is in compliance with the Information Technology Rules 2021. The Court has indicated that on the next hearing date, it will examine the plea of the plaintiff on how the process of taking down objectionable content from YouTube without any lapse of time should be streamlined.

How may copyright infringement be prevented (including, for example, customs enforcement measures and any technological notable developments)?

No degree of vigilance can guarantee an ‘infringer-free’ environment, but certain deterrent measures must be adhered to by copyright owners, for instance:

• documentation of instances of use;
• registration of copyright;
• proper notice of copyright;
• monitoring the activities of habitual infringers;
• making independent contractors and employees subject to confidentiality;
• having proper licensing agreements incorporating a proper control mechanism; and
• publicising a successful infringement trial (if resources allow).

In the context of ‘confidentiality’, the Bombay High Court on 30 March 2023 in Rochem Separation Systems (India) Pvt Ltd v Nirtech Pvt Ltd held that ‘there has to be clear-cut, specific description and data with the Court pertaining to the information in which the plaintiff claims confidentiality. In the absence of such clear-cut information and material, furnished by the plaintiff before the Court, there would be no basis for examining the allegations leveled against the defendants’, owing to the fact that the plaintiff had not placed on record the specifics of the confidentiality before the Court. In this case, the Bombay High Court also referred to Zee Telefilms Ltd and Ors v Sundial Communications Pvt Ltd and Ors, and Narendra Mohan Singh and Ors v Ketan Mehta and Ors, and laid down that the procedure adopted by the Courts of providing the ‘information in sealed covers with material particulars’ is mandatory and would not amount to the diluting of the information since it would check the veracity of the claims made by the plaintiff thereby adding an interesting twist to the enforcement of the breach of confidentiality claims.