This article has been written by Shradha Jain, pursuing the Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

The circulation of e-newspapers and their legality under copyright law have been frequently debated. Similarly, prominent news publisher Jagran Prakashan Limited (‘Plaintiff’) discovered that their e-paper was freely disseminated online, using messaging network Telegram (‘Defendant’), which was otherwise exclusively available to its members. Super Cassettes Industries Ltd. v. Myspace Inc. & Anr., the dominant case in India, focuses on ‘specific and actual knowledge of the inclusion of copyrighted content, which is pragmatic to be placed before a human agency (defendant) for establishing responsibility. However, there is little to no jurisprudence analyzing the repercussions when the intermediary has “no knowledge.” Telegram as a platform is free to use, unrestricted, and devoid of any content restrictions. In the absence of the foregoing, it would be prudent to take inspiration from established ideas in the European Union (‘EU’), and the United States.

In this article, I shall explore the circulation of e-newspapers and their validity under the copyright law, the Jagran Prakashan Limited vs Telegram, the Right of injunction vis-à-vis safe harbor under mere conduit in EU, and doctrine of inducement under US copyright laws and how it is an opportunity for India to understand from foreign principles.

Circulation of e-newspapers and their validity under copyright law

The e-papers are divided into two categories:

 (1) those that have a user agreement and

 (2) those that do not.

The reason for categorizing e-papers in these two groups is that they impose contractual obligations on the reader under “Terms of Use” regulations. As an example, The Times of India e-paper falls under the first category since the subscription plainly states:

1. Articles may be shared through email, Facebook, and Twitter.
2. It does not permit the sharing or downloading of PDFs of pages or publications.
3. It is not possible to print or cut pages.

The United States copyright law, like India’s, does not define “Fair Use,” but has incorporated a variety of uses that will come under the concept of fair use. According to 17 US Code§107 “Limitation on Exclusive Rights,” fair use of a copyrighted work includes a reproduction of copies, phono recordings, or any other methods mentioned in § 106 & § 106A for critique, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research are all acceptable forms of expression.

Section 52 of India’s Copyright Act is consistent with Article 13 of TRIPS (Trade-Related Aspects of Intellectual Property), which states: Members must limit limitations or exceptions to exclusive rights to specific extraordinary situations that do not conflict with regular utilization of the work and do not unnecessarily harm the right holder’s legitimate interests. In today’s developed world, while the need for “fair dealing” must be upheld in the public interest at large, it is critical to pay close attention to the latter part of Article 13, which states that the user should not conflict with a normal exploitation of the work and should not unreasonably prejudice the right holder’s legitimate interests. According to the Indian court in Bennett Coleman & Company Limited &Ors. v. Ajay Kumar & Ors, the widespread distribution of PDF versions of e-newspapers via messaging applications reduces the number of visits to news websites. A significant number of visitors to a publication’s website can result in increased market visibility and future subscriptions.

To manage large unlawful distribution on messaging applications, newspaper companies must develop legal tactics and technical solutions. The answer to this challenge must take into account both legal and technological considerations. Unfortunately, even after getting the necessary relief from the courts, the legal remedies available to newspaper businesses against aggregators, individuals, and other social media group administrators for spreading e-newspapers in their entirety are very hard to execute. In India, the implementation of court orders is complicated, and identifying people or groups on messaging applications is tough. From a practical viewpoint, even John Doe’s orders—in which an injunction is granted against an unknown defendant—can not completely stop the illicit distribution.

Jagran Prakashan Limited vs Telegram

Background

M/s. Jagran Prakashan Ltd. (“Plaintiff”) is the proprietor of the physically delivered daily Dainik Jagran, which is now also available online to its readers. However, it cannot be downloaded for distribution. It was recently brought to Plaintiff’s attention that their publication was being unlawfully disseminated via Telegram Channels, resulting in monetary loss, infringement of their copyrights and trademarks, and the filing of the current lawsuit. The Dainik Jagran website includes a security mechanism that prevents people from downloading the newspaper. Jagran Prakashan Ltd. is the only proprietor of the trademark ‘Dainik Jagran,’ with variants registered in a variety of classes.

Telegram FZ LLC (“Defendant”), via its application Telegram allows its users to create channels and share files, in this instance illegally acquired current edition PDF copies of the Plaintiff’s e-paper, as well as allowing readers to download all prior editions of the e-paper, which a user would otherwise only have access to if he subscribed to the e-paper.

Issue

The question was whether there was an infringement of the plaintiff’s right by creating a channel that led to the unauthorized distribution of the Plaintiff’s e-paper in PDF form by several unidentified users (Defendant), thereby infringing on the trademark and copyright existing in the said e-paper.

Judgment

The Court determined that the balance of convenience was in favor of Plaintiff and that Plaintiff had shown a prima facie case, awarding Plaintiff an ad-interim injunction. The Court has ordered Defendant to provide the basic details of the channels’ subscribers and to take down or disable the channels within forty-eight hours of receiving the order.

The Court agreed with Plaintiff that Defendant could not continue to claim intermediary status, and ordered the Defendant to block the infringing channels and divulge the identities of all individuals who had created each of these channels.

The doctrine of inducement under US laws

The inducement rule is a standard that a US court can apply to assess whether responsibility for third-party copyright infringement can be attributed to the distributor of the equipment used to infringe. In MGM Studios v. Grokster Ltd. the United States Supreme Court ruled unanimously that the defendant, a company that facilitates peer-to-peer file sharing, could be sued for IPR infringement because it used to affirmatively promote file sharing, thereby encouraging direct infringement and profiting vicariously from such direct infringement committed by a third party.

Furthermore, in Arista Records LLC v. Lime Group LLC, the United States District Court for the Southern District of New York held that, while granting a permanent injunction to shut down the defendant’s file sharing facility, it would be practical to claim infringement equally against the defendant because it exercises control and receives benefit over such messages being circulated. This verdict was likewise generally founded on the theory of inducement, according to which the intermediary used to encourage infringement and vicariously contribute to benefit.

Right of injunction vis-à-vis safe harbor under mere conduit: The EU way

The EU Member States are required by Directive 2001/29/EC on Copyright and Directive 2004/28/EC on Intellectual Property Rights Enforcement to provide right holders with the exclusive right to seek an injunction against those online intermediaries who purport to violate their intellectual property rights. This concept is important because the plaintiff can effectively limit future distribution of such PDF copies by anonymous individuals. In the Indian context, which emerged in the Taj Television case in 2003, a John Doe Order is the counterpart. Though this technique of requesting an injunction is controversial due to the lack of precedential protections, in the absence of the defendant’s agent in India, such an injunction order might assist the plaintiff in preventing any unintended harm until the necessary parties are implemented.

The European Union E-Commerce Directive 2000/31/EC includes ‘Safe Harbours’ in Articles 12, 13, and 14 to assist intermediaries that want to play a passive role to avoid responsibility. The notion of ‘Mere Conduit’ under Article 12 is pertinent here, wherein the intermediary (1) must not have initiated the transmission; (2) must not have chosen the receiver of the transmission; and (3) must not have chosen or modified the material contained in the transmission. For Telegram in this case, if Mere Conduit is used, the transmission takes place between two or more anonymous persons with no intermediary control and, in the absence of any changes, a passive function. Furthermore, as previously stated, Telegram lacks the ‘knowledge’ component, making it a great match per Recital 42 of the E-Commerce Directive. Combining these factors, Telegram can use Safe Harbour to defend its lack of control over the material and the lack of express awareness of such content on its platform.

Conclusion

Several variables, such as financial motivation, editorial control, or data storage and alteration, must be considered for assessing responsibility. Surprisingly, the real violative activities are those of a third party that shares content, but the responsibility is sought against the intermediary, who in this case does not know such content. It is an excellent chance for the Delhi High Court to seek assistance from these globally established principles and incorporate them into a leading precedent that balances both the middleman and the group chat parties for the Indian context.

References 

1. https://www.ipwatchdog.com/2020/06/27/illegal-circulation-e-newspapers-online-messaging-apps-implications-copyright-contractual-violations/id=122828/.
2. https://www.complybook.com/blog/jagran-prakashan-limited-v-telegram-fz-llc.
3. https://spicyip.com/2020/07/telegram-copyright-infringement-case-indias-chance-to-seek-inspiration-from-foreign-principles.html.

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