Relief for authors of underlying works: A Case Analysis of IPRS v. Rajasthan Patrika Pvt. Ltd.

Introduction

The Bombay High Court on 28th April, 2023 passed a crucial judgment regarding the rights of lyricists and composers in India. In this judgment, the Court held that the authors of original literary and musical works are entitled to copyright protection even when such works are embodied in derivative works like Cinematograph films or Sound Recordings and communicated to the public.

Background

Prior to this judgment, the position was that once an author of an underlying work assigns his rights to a producer, such author can no longer claim any further right from such producer when the Cinematograph film/Sound Recording was communicated to the public. The said position of law was reiterated in many judgments of the Supreme Court, most famously in the case of IPRS v. EIMP (1977) and then recently in ICSAC v. Aditya Pandey & Ors (2017)

This was also because prior to the 2012 Amendment in the Copyright Act, Sections 17, 18, 19 stood different and post amendment major changes were brought in these sections which led to the new interpretation in this case.

Facts

1. The Plaintiff - IPRS is a Copyright Society registered under Section 33 of the Copyright Act, 1957 (hereinafter also referred to as the “Act”) and is authorized to issue licenses on behalf of its members who are authors of literary and musical works.
2. The Defendant - Rajasthan Patrika Pvt. Ltd. is a Private Limited Company engaged in the business of operating FM Radio Broadcast Channels, and runs the Channel "Radio Tadka".
3. The Defendant entered into a license agreement with the Plaintiff for broadcasting from their radio station "Radio Tadka".
4. The Plaintiffs and the Defendants engaged in legal proceedings over a period of time whenever the sound recordings embodying such original literary and musical works were communicated to the public.
5. In 2020, IPAB passed an order fixing rates of royalty for sounds recordings as well as literary and musical works, thereby acknowledging the change in law post the 2012 amendment. The Defendants filed an appeal against the said order only to the extent that the IPAB could not have determined separate rates of royalty to be paid by the broadcasters for literary and musical works, claiming that no such separate royalty was payable for utilization of such works in sound recordings.
6. Meanwhile, Ld. Single Judge of the Delhi High Court rejected two suits filed by the Plaintiff; holding that the Copyright (Amendment) Act, 2012 had not brought any change in law and that there was no requirement to obtain a separate license from the authors of underlying work.
7. While all this was underway, the Plaintiff requisitioned the services of ‘AirCheck’ to procure data of the songs played by the radio stations of the Defendant. The data revealed that a large number of songs from the Plaintiff’s repertoire were being played on the Defendants radio station. Consequently, the present suit was filed by the Plaintiff seeking interim relief against the Defendants.

Issue

1. Whether the Plaintiff is justified in claiming interim relief on the basis that a strong prima facie case is made out due to change in law, as per amendments brought about in the Copyright Act in 2012?

2. Whether copyright in an underlying work vest with the Producer or the Author of such underlying work?

Submissions of the Plaintiff

1. The Plaintiffs while praying for interim relief argued that post amendment in 2012, a sea of change was brought in the scheme of the Act.

2. According to Section 13(1) Copyright subsists in original literary, dramatic, musical and artistic work; cinematograph films and sound recordings. Further, Section 14 of the Act grants exclusive rights to such original and derivative works. However, these ‘exclusive rights’ are subject to the provisions of the Copyright Act. This is significant especially in relation to the amendments made in Section 17, 18 and 19 of the Act.

3. Post amendment, the exclusive rights vested in the Producer of a Cinematograph film/Sound Recording was circumscribed by proviso added to Section 17, the third and fourth provisos added to Section 18 and sub-Section (9) and (10) added in Section 19. Therefore, the earlier position of law as laid down by the Supreme Court in the case of IPRS v. EIMP (1977) is not applicable after the 2012 amendment.

4. References were also made to Rules 56, 57 and 58 of the Copyright Rules, 2013 pertaining to Tariff scheme, determination of such Tariff scheme, and distribution scheme respectively which the Copyright Society like the Plaintiff was required to frame for distribution of royalties to authors of such original works. The amendments in the Act when read with such rules changed the entire scenario pertaining to the competing claims of the stakeholders having specific rights under the statutory provisions.

5. The report of the Standing Committee of Parliament regarding such radical amendments in the Act was also referred which considered the effect of the judgments of the Supreme Court in IPRS v. EIMP (1977) and ICSAC v. Aditya Pandey (2017). A specific reference was also made to the opinion of Justice Krishna Iyer wherein in the footnote of the EIMP judgment he recorded that law making is the province of Parliament and they must help the authors of the underlying works to come at par with producers of Cinematograph film/Sound Recordings.

6. Provisos that are added to a substantive provision of the statute can also give rise to a substantive right in favour of a party.

Submissions of the Defendant

1. The changes brought about by the 2012 amendment are only clarificatory in nature. Even if such amendments were introduced to give more rights to authors of original works, the amendments had obiously fallen short of their objective.

2. The position of law as espoused by the EIMP judgment of the Supreme Court continued to operate notwithstanding the 2012-amendment.

3. Section 13 and 14 of the Copyright Act are the main provisions that define the meaning of copyright and as to in which works copyright subsists so far these sections remain un-amended and since no special or additional right was incorporated therein, the position of law stood the same as before.

4. The right of the Defendant to communicate the said work to the public remained exclusive according to Section 14(e)(iii) of the Act. The reason behind this is as per settled law, under Section 13(1)(c) of the Act, a separate, distinct and exclusive copyright subsists in sound recording.

5. While Section 13(4) of the Act recognizes that copyright in the sound recording shall not affect the separate copyright in the original works that form part of the sound recording, such separate copyright and the rights that emanate therefrom can be exercised in forms other than when such works are communicated to the public as sound recordings.

6. Rebutting the submission of the Plaintiff that provisos that are added to the statute can also give right to substantive right, the Defendants argued that it cannot give birth to a substantive right. To recognize the rights of authors of original works it was essential to amend Section 13 and 14 of the Copyright Act.

Judgment

1. The Court read into the opinion of Justice Krishna Iyer in the EIMP case as it was frequently brought into discussion by the defendants, and observed that in his opinion he had clearly indicated that there was scope for making appropriate changes in the law, so as to address certain infirmities in the Act. While it was in the hands of the Parliament to address these issues, they were never really addressed.

2. The Court also discussed the case of ICSAC v. Aditya Pandey wherein the Supreme Court considered the parties contentions on the basis of the unamended Copyright Act and reiterated a similar position of law as was laid down by the Supreme Court in the EIMP case. However, in Para 22 of the said judgment it was observed that “with effect from 21.06.2012, in view of sub-section (10) of Section 19, the assignment of the copyright in the work to make sound recording which does not form part of any cinematograph film, shall not affect the right of the author of the work to claim an equal share of royalties or/and consideration payable for utilization of such work in any form”.

3. The Court then went into the Statement of Object and Reasons of the Amendment Act 27 of 2012 along with portions of the Report of the Standing Committee of the Parliament which led to the introduction of the amendment and found that it was clearly the objective of the legislature to offer more rights to the authors of underlying works.

4. The Court agreed with the argument of the Plaintiff that merely because Section 13 and 14 of the Act have not been amended it does not lead to the conclusion that amendments have fallen short of the objective they sought to achieve and that a proviso also has an effect of creating a substantive right in favour of the authors of underlying literary and musical works.

5. In spite of there being no change in Section 13 and 14 of the Act when they are read in conjunction with the amended Sections 17, 18 and 19 it was observed that there was indeed a change in position of law brought about in favour of such authors of works. The expressions ‘subject to provisions of this section and other provisions of this Act’ and ‘subject to provisions of this Act’ as contained in Sections 13 and 14 respectively demonstrated that exclusive rights recognized in Section 14 is subject to other provisions. As the provisos and sub-sections are very much a part of the provision, therefore, the operation of Sections 13 and 14 was circumscribed by the amended Sections.

6. Each time a sound recording is communicated to the public it amounts to utilisation of such underlying literary and musical works, in respect of which the authors thereof have the right to collect royalties. Communication to the public of sound recordings that form a part of the cinematograph film on radio stations is indeed a communication that is different from communication in a cinema hall along with the cinematograph film. Thus, authors of such literary and underlying works are entitled to receive royalties each time their work is communicated to the public through radio stations.

7. The Court agreed with the submissions of the Plaintiff and ordered the defendants to restrain from communicating to the public underlying literary and musical works of the Plaintiff without making payments of royalties as per the Tariff of the applicant. It also ordered the Defendants to announce the name of the author members of the Plaintiff and principal performers of the work with each broadcast of the literary and musical works of the Plaintiff in compliance with Section 31D(5) of the Copyright Act.

Conclusion

This judgment by the Bombay High Court has brought a much needed clarity on the effect of the 2012 amendment to the Copyright Act and how it has been created for the benefit of the authors of underlying works. Prior to this judgment, the Producer of a cinematograph film/sound recording was considered to be the owner of copyright of the underlying works if the author had assigned the rights to him. But this judgment affirms that Copyright in an original work lies with the creators, enabling them to claim royalties and other moral rights when their work is used outside the scope of sound recordings/cinematograph films.

Therefore, radio stations and other third party users are now obligated to pay royalty to authors of underlying works. However, how this obligation will be fulfilled remains a question that requires more exploring.