In this blog post, Saurodeep Dutta, a student of University of Calcutta, who is currently pursuing a Diploma in Entrepreneurship Administration and Business Laws from NUJS, Kolkata, discusses the Essentials of Section 52A of the Copyright Act, 1957.

Introduction

The Copyright Act was created keeping in mind a very simple objective. To enable the creators of a particular idea to ensure that they remain the sole owners of said idea unless they chose to sell the idea mentioned above, ensuring that whether they decide to sell, lease, license or assign the particular idea, they would receive their due and would be rewarded for their efforts.

A Copyright is the ability of a person to ‘own’ their work and prevent other people from copying it.

Scope of Section

The scope of the Copyright Act extends to any original idea that has been created by a person. The entire Act covers the following (Indicative, not exhaustive list):

• Literary
• Dramatic
• Musical and
• Artistic works
• Anonymous and pseudonymous works
• Posthumous work
• Cinematograph films
• Sound records
• Government work
• Public undertakings
• International Agencies
• Photographs

Of these, Section 52 of the Copyright Act is the “Fair Use” section which talks about the reason when any form of infringement may be overlooked, or legal. Section 52A covers the rights of sound recording and cinematographic films. This is a new section, added into the Copyright Act by the Copyright (Amendment) Act, 2012.

Essentials of the Section

From a primary reading of the Section 52A which reads as follows: –

“52A. Particulars to be included in 2 [sound recording] and video films.—

(1) No person shall publish a 2[sound recording] in respect of any work unless the following particulars are displayed on the 2[sound recording] and any container thereof, namely:—

(a) the name and address of the person who has made the 2 [sound recording]; 2 [sound recording];”

(b) the name and address of the owner of the copyright in such work; and

(c) the year of its first publication.

(2) No person shall publish a video film in respect of any work unless the following particulars are displayed in the video film, when exhibited, and on the video cassette or another container thereof, namely: —

(a) if such work is cinematograph film required to be certified for exhibition under the provisions of the Cinematograph Act, 1952 (37 of 1952), a copy of the certificate granted by the Board of Film Certification under section 5A of that Act respect of such work;

(b) the name and address of the person who has made the video film and a declaration by him that he obtained the necessary license or consent from the owner of the copyright in such work of making such video film; and

(c) the name and address of the owner of the copyright in such work

it is clear what the legislators have tried to provide here.

a. If any person wishes to post a sound recording that is not his, he must:

1. Ensure due recognition is provided to the copyright holder, asking the non-owning publisher to ensure that the name and address of the copyright-holder are put in place. (Section 52A(1)(b)).
2. Ensure that due recognition is given to the creator, asking the non-owning publisher to ensure that the name and address of the person who has created the recording are put in place (Section 52A (1)(a)).
3. Ensure that the date of original publication is put in place (Section 52A(1)(c)).

b. If any person wishes to post a video film that is not his own, he must

1. The name and address of the person making such video film and a declaration that the person has obtained necessary license and consent of the owner of the copyright making the video recording. (Section 52A(2)(b))
2. If certification is required from the Board of Film Certification under Section 5A of the Cinematograph Act, then such Certification must be present. (Section 52A(2)(a))
3. Name and address of the owner of the copyright. (Section 52A(2)(c))

Impact of Section 52A

India is infamously known globally for having some of the highest piracy rates in the world when it comes to digital media, and none more so than audio recordings, such as songs and more colloquially as mp3s, and videos such as Hollywood movies. A pointed problem here is the fact that piracy is a common, accepted practice.

This section attempts to ensure that this type of piracy is combated. It is a well-known fact, especially in India that piracy is a nominal, everyday event. The losses faced by companies, such as in the United Stated of America runs into billions of dollars just from India alone. Not only that, Indian companies such as the famous Yash Raj Films have also found that piracy is to their detriment, and have invested time and money into the protection of the copyright. Especially with respect to sound recordings and video recordings, which causes huge losses to their content creators. This section makes it mandatory to have copyright holders names, along with creators names, along with punishments specified in Section 68A of the Copyright Act,1957, which reads as follows: –

68A. The penalty for contravention of section 52A.—Any person who publishes a 2[sound recording] or a video film in contravention of the provisions of section 52A shall be punishable with imprisonment which may extend to three years and shall also be liable to fine.

It is hoped that along with the vigilance of the courts, that this section aids the fight against piracy.

In this blog post, Nancy Srivastava, a second-year law student at the University of Petroleum and Energy Studies, Dehradun, discusses interlocutory applications in a writ petition, while contrasting the difference between an original petition and an interlocutory order, and its implementation legally.

In this blog post, Dhiren Sehgal, a recent graduate of Jindal Global Law School and currently a student of the Diploma in Entrepreneurship Administration and Business Laws course by National University of Juridical Sciences (NUJS), Kolkata and iPleaders, discusses the concept of ‘Tacking-On’ under trademark laws. 

In this blog post, Archishman Chakraborty, a student, who is currently pursuing a Diploma in Entrepreneurship Administration and Business Laws from NUJS, Kolkata, discusses the nitty gritty’s of standard essential patents. 

In this blog post, Anumeha Saxena, a student, currently pursuing a Diploma in Entrepreneurship Administration and Business Laws from NUJS, Kolkata, discusses the mechanisms for dispute resolution when dealing with disputes concerning the assignment of licenses. 

In this blog post, Aditi Sampat, Advocate at Nabco Enterprises Pvt Ltd and a student of the Diploma in Entrepreneurship Administration and Business Laws by NUJS, discusses the IPR implications of plain packaging for cigarettes. 

In this blog post, Amala Haldar, a student pursuing a Diploma in Entrepreneurship Administration and Business Laws by NUJS, provides a detailed view on the Roche Vs. Cipla dispute.

In this blog post, Kanchan Yadav, a student at South Calcutta Law College and pursuing a  Diploma in Entrepreneurship Administration and Business Laws by NUJS, writes about the different kinds of patents that can be filed depending on the requirement of the patentee.

There are multiple types of Patent Applications that can be filed depending on the situation. Convention application alludes to a patent application documented as per the terms of a worldwide patent arrangement like the Patent Cooperation Treaty. The Patent Cooperation Treaty is a global assertion for documenting patent applications. It secures a designer of a part nation by guaranteeing the need for his/her developments over all or any innovator from non-member nations. However, some other types of applications are discussed below –

• Ordinary Application:

The principal application for patent documented in the Patent Office without guaranteeing need from any application or with no reference to whatever another application under the procedure in the Patent Office is called a customary application.

• PCT – International Application:

The Patent Cooperation Treaty or PCT is a universal understanding for documenting patent applications. Notwithstanding, there is nothing called as a ‘world patent.’

The PCT application does not accommodate the award of a universal patent; it just gives a streamlined procedure to the patent application process in numerous nations in the meantime.

• National Phase Application under PCT:

The PCT-national stage must take after the worldwide stage. The candidate should independently ‘go into the national stage.’ i.e. record a national stage application in every province he wishes to enter. The candidate can enter the national stage in up to 138 nations inside 30-31 months (relies on upon the laws of the assigned nations) from the universal documenting date or need date (whichever is prior). On the off chance that the candidate does not enter the national stage inside the endorsed time restraint, the International Application loses its impact in the assigned or chose States.

• Patent of Addition:

Patent of addition is an application made for a patent in admiration of any change or alteration of a development portrayed or revealed in the complete detail effectively connected for or has a patent.

Keeping in mind the end goal to be patentable, a change ought to be something more than an insignificant workshop change and should freely fulfil the trial of development. The real advantage is the exclusion of re-establishment expense insofar as the principle patent is restored. A patent of expansion breaches with the discontinuance of the fundamental patent.

• Divisional Application:

A divisional application is one which has been “isolated” from a current application. The candidate, whenever before the award of a patent can document a further application, on the off chance that he so wants or if a protest is raised by the inspector on the ground that the cases unveiled in the complete particular identifies with more than one development. A divisional application can just contain topic in the application from which it is separated (its guardian), however, holds the recording and need the date of that guardian. A divisional application is valuable if solidarity of development complaint is issued, in which case the second creation can be ensured as a divisional application. Patent of expansion is an application made for a patent in admiration of any change or alteration of an innovation depicted or uncovered in the complete determination effectively connected for or has a patent.

However, coming back to Conventional Application, any nation, which is a signatory or party or a gathering of nations, union of nations or between administrative associations which are signatories or gatherings to a global, provincial or bi-lateral bargain, tradition or game plan to which India is additionally a signatory or gathering and which stands to the candidates for licenses in India or to natives of India comparable benefits as are allowed to their own residents or subjects to their part nations in appreciation of the stipend of licenses and security of patent rights should be a tradition nation or tradition nations for the reasons for this Act.

At present, India is a member of WTO and a part nation in the Paris Convention and a contracting state to the PCT. Any nation, union of nations or between legislative associations which are individuals/contracting states to the above tradition/arrangement/understanding are tradition nations for the motivations behind the Act.

Where a man has made an Application for a Patent in admiration of a creation in a Convention nation (essential application), and that individual or the legitimate delegate or appointee of that individual makes an application under this Act for a patent inside twelve months after the date on which the fundamental application was made, the need date of a case of the complete detail, being a case in view of matter unveiled in the essential application, is the date of making of the essential application. Where applications have been made for comparative security in appreciation of creation in two or more tradition nations, the time of twelve months alluded to in this sub-segment might be figured from the date on which the prior or most punctual of the said applications was made.

Where applications for assurance have been made in one or more tradition nations in admiration of two or more innovations which are related or of which one is a change of another, a solitary tradition application might be made in appreciation of those developments whenever inside twelve months from the date of the most punctual of the said applications for insurance. In any case, the charge payable in respect of such application might be the same as though separate applications have been made in respect of each of the said creations.

Every convention application shall –

1. a)be accompanied by a complete specification;
2. b)an abstract;
3. c)specify the date on which and the convention country in which, the application for protection, or as the case may be, the first of such applications was made; and
4. d)state that no application for protection in respect of the invention had been made in a convention country before that date by the applicant or by any person from whom he derives title.
5. e)a complete specification filed with a convention application may include claims in respect of developments or, additions to, the invention in respect of which the application for protection was made in a Convention country.
6. f)If the Controller requires, a certified copy of the priority document has to be filed within 3 months from the date of communication by the Controller, of such requirement. If the priority document is in a language other than English, a verified English translation shall be submitted.

Whenever two or more applications for patents constituting one innovation have been made in one or more tradition nations, one application might be made inside twelve months from the date on which the prior or most punctual of those applications was made. The term of the patent of a traditional application should be twenty years the date of documenting of the Application in India. A Convention Application can be isolated, and the partitioned Application should have the same priority date. The priority date of a case is the date on which the matter was initially revealed in a patent application.

In this blog post, Gopalakrishnan Arjun, a student of the National University of Advanced Legal Studies, Kochi, who is currently pursuing a Diploma in Entrepreneurship Administration and Business Laws from NUJS, Kolkata, discusses the case of Reliance Industries Ltd. V. Concord Enviro Systems Pvt. Ltd.

Reliance Industries had registered trademarks consisting of a distinctive logo. Reliance claimed injunctive reliefs for infringement of its registered trademarks, infringement of copyright and passing off, on the ground that the logo of Concord Enviro Pvt. Ltd. was deceptively similar to the registered trademark of Reliance.

Contentions raised by Reliance Industries (Plaintiff):

The plaintiff argued that Concord was using a mark which was deceptively similar to Reliance’s registered trademark, in respect of goods falling in classes 7, 9, and 11 and services falling in class 40. The logo of Concord was said to be both visually and structurally similar. The logo of Reliance, when rotated to the right, appears to be an inverted or reversed or mirror image of the Concord’s logo. Also, since the trademark of Reliance is a well- known mark, Reliance is entitled to the reliefs of infringement not only in respect of goods falling in classes in which their logo is registered but also in respect of goods falling in other classes in respect of which Concord is using and is intending to use their mark. The logo of Reliance has been registered from 1999 and has been extensively used. Hence, it can be inferred that Concord was trying to deceive and confuse. Concord did not deny that they were unaware of Reliance’s mark. Hence, Concord is not honest in the adoption of the mark. The Plaintiff contended that adding a drop of water as a background to the essential feature, makes no difference to the logo. Since the user only has a general impression of Reliance’s mark, he is bound to get confused. It was argued that the use of the Concord logo was without due cause and by this kind of use, they were taking undue advantage of Reliance’s mark. Reliance was hence entitled to the relief on the grounds of infringement under sections 28 and 29(4) of the Act and passing off. The logo of Reliance is an original artistic work. The logo is registered as an artistic work under the Copyright Act. Concord’s Mark is a colourable imitation of Reliance’s artistic work. Reliance is hence also entitled to interim reliefs on the basis of copyright infringement.

Contentions of Concord Enviro Systems Pvt. Ltd. (Defendant):

The Defendants argued that the claim that the two marks were deceptively similar was misconceived. The dissimilarity was argued to be apparent to the naked eye itself. Concord’s logo depicts the idea of Concord’s initials being ‘c’ and ‘e’ artistically depicted inside the said drop. The ‘c’ of Concord is embracing the ‘e’ of Enviro which means the Company is contributing to creating a better and cleaner environment. On the other hand, Reliance calls its logo as the ‘R’ logo, thus making the two completely different. They further contended that even the drop has to be considered because a logo is always compared as a whole. The ‘curves’ appearing in the two marks are also completely different. That Reliance mark’s curve tapers towards the left and becomes extremely wide to the right, giving it a unique shape. The curvature to the right is wide and angled such that the ‘flame’ in the middle leads to a formation of an ‘R,’ and the ‘curve’ is very ’rounded’ and ‘circular’ and virtually completes ‘circular shape.’ The ‘right rotate’ comparison proposed by the Plaintiff was argued to be unacceptable. The attempt of the Plaintiff to have a monopoly over curves of every shape was unacceptable. Also, the consumers of Concord would buy their products with deliberation. Hence, these products are not sold across the counter. So there is no chance of confusion. It was argued that no case had been made under Section 29(4) of the Act.

Judgment by the Court:

The Court was of the opinion that there is absolutely no similarity between the Plaintiff’s logo (curve) and the curve used by the Defendant. The ‘curve’ used by Concord is the initials of the ‘Concord Enviro’ i.e. ‘c’ and ‘e,’ which are artistically depicted inside the water droplet, which is an essential feature of their logo. Reliance calls its logo the R logo. ‘R’ in the logo, is formed in inverse space that is white color or no color. Hence, the Court was of the opinion that there is no question of confusion in the minds of the general public and the Defendant has used the logo in good faith.

Holding:

The Court held that the rival marks are completely different. There was no question whatsoever about damage to Reliance’s reputation. The allegations made by Reliance that Concord is guilty of trademark infringement, passing off and copyright infringement was held to be not established. The plaintiff has hence failed to make out a prima facie case. The Court dismissed the notice of motion.

In this blog post, Hari Manasa Mudunuri, a student of  University College Of Law, Osmania University, who is currently pursuing a Diploma in Entrepreneurship Administration and Business Laws from NUJS, Kolkata, discusses if any product be named after a celebrity, without obtaining any prior permission.

In the modern world, media personalities, politicians, socialites, etc. tend to have a huge reach in the society and are followed by many. They command a huge market, and this puts them in a position to create interest and attract consumers due to their brand value and reach. This is tapped in by the celebrities and other products which employ such celebrities to endorse their products or services.

Owing to the market commanded by the celebrities, they tend to demand huge remunerations for endorsements they feature in or where they permit the use of their name and persona. The consideration is either paid in lump sum or get a portion of the sales achieved by the product etc. This allows in commercially exploiting the celebrity image and creates a market through their publicity.

Sometimes certain products/services are shown to be endorsed by a celebrity or the use of the celebrity’s name or image but in reality, the said product would not have a right to use the same. This leads to unauthorized infringement of the celebrity’s brand value which was built over time, invasion of his/her privacy and also the infringement of their celebrity rights/ personality rights, which are recognized in modern times and laws seek to protect the same. Modern day law is evolving with the change and need and today, right to publicity and celebrity rights cover a wide range like – name, likeness, voice, mannerisms and other prominent feature, which the general public or target audience can relate to a particular personality. This protection is the need of the hour as the advertisement and publicity spheres involve high stakes and the market is a multi-crore business.

The law allows for the trademark protection under the classes in which they seek protection. The courts also protect well know marks irrespective of the class they are registered under as they are capable of being associated with a particular product or service. The registration of a celebrity’s name is prevalent in the western world where personalities in academic, media, sports, etc., like- Paris Hilton, David Beckham, Victoria Beckham, Stephen Hawking, Sarah Palin, 50 Cent, Andy Murray, The Kardashians, Beyonce [her daughter’s name Blue Ivory Carter is registered for baby products], have registered their names as a trademark for a wide range of goods and services.  This trend is also picking up in India. Sachin Tendulkar has registered his name and uses it for the goods that are sold by his company. Movie star Shah Rukh Khan sought to register the popularly known abbreviation of this name-SRK. Other personalities like musician A. R. Rahman, actress Kajol, Yoga guru Baba Ramdev, noted cardiologist Naresh Trehan and well-known chef Sanjeev Kapoor, etc. have chosen to register their names in various business categories.

The registration of the names helps in preventing the unauthorized use of the same and has proven in the Western world to be a safer and easier mode of control. There are various instances where celebrities send notices to stop the unauthorized use of their names and later seek the intervention of courts to prevent the same. Sandra Bullock sued a watch company when the said company promoted one of their products as “The Sandra Bullock watch” as she was seen wearing the same in a scene in her movie. Julia Roberts and George Clooney respectively sued two audio-visual companies accused of the use of their pictures and trademarked names to high-end movie projectors and entertainment systems. Bette Midler sued Ford Motor Co. who hired a soundalike of singing on a commercial, after Midler declined to do the ad, Midler sued, and the court held that there was a misappropriation of Midler’s right of publicity.

When the market for popular personalities is high, they will try their best to exploit their value to the fullest. It is not only the monetary value associated with the brand value of a personality, but it also creates a visibility for the product and creates an interest in the advertisement, when it features a popular personality. Consumers have a perception that when a celebrity is endorsing a product, then they would have double-checked credibility and values of the brands and stand by the quality they endorse and it could be trustworthy. They understand that the celebrity has conducted due diligence on his part and at the same time advocates what he advertises and stands by his word as a responsible citizen. There were instances when celebrities get into trouble for endorsing certain products, which were later, proved harmful or below the quality as previously advertised. A few celebrities like Amitabh Bachchan, Preity Zinta, Madhuri Dixit, experienced this in recent times by endorsing a food product called “Maggi.”

Personality rights

The rights of a person over the use of their name, image, likeness or other features for commercial purposes are the individual’s right in publicity. The protection of these rights differs from country to country. Right to privacy protects against unwarranted publicity and exploitation of one’s personality. The right to the press doesn’t entitle the invasion into the personal space and publicize the same for monetary gains. It’s not a case of defamation, and the publicity may be true, but the personality has a right to privacy that protects him against humiliation, passing off of person’s name or likeliness.

One of the methods of protection is through torts where the invasion of a person’s privacy for commercial benefit by the use of name or likeliness. Tortuous liability protects the value of the individual’ skill and personality. The common law goes a step forward and prevents the misuse of a person’s identity without consent which causes an injury. The drawback is that the invasion of privacy is maintainable when there is a literal use of the name and other features attributable to a person. For the economic exploitation the value of the name of a celebrity to promote one’s goods without prior consent will amount to unfair trade practice, misappropriation of Intellectual Property[IP] of the person and an act of Passing off.

The general defense available to a celebrity is that others did not take their consent prior to the use.  The Supreme Court of India held that though Constitution doesn’t expressly provide for the right to privacy, Article 21 of the Constitution protect the same. This permits the celebrities to avail the right to privacy when others infringe it. The right to privacy is the first step where the person gives his consent to use or not use his name. Then the right to publicity entitles him the right to commercially exploit his name, likeliness, etc. to the exclusion of others and to permit others to use only with a prior written consent.

Decided case laws

1. Sourav Ganguly v. Tata Tea Ltd.

Cricketer Sourav Ganguly sued Tata Tea Ltd. for promoting their Tea packets by offering a chance to the consumers to congratulate Ganguly through a postcard which was available along with the packet, after his recent stellar performance. The court ruled in favor of Ganguly and held that the fame and popularity earned by him are his IP and can’t be commercially exploited in any manner by others without his consent.

2. Titan Industries Ltd. V. M/S Ramkumar Jewellers, CS(OS) 2662/2011 (Delhi High Court)

The court held “when the identity of a famous personality is used in advertising without their permission, the complaint is not that no one should not commercialize their identity but that the right to control when, where and how their identity is used should vest with the famous personality. The right to control the commercial use of human identity is the right to publicity.” In this case film, actors Amitabh Bachchan and Jaya Bachchan endorsed diamond jewelry range of brand name Tanishq. The advertisement was made by incurring huge sums of money and were to be used in advertisements in all media, including print and video. The defendant erected a hoarding that was identical to the plaintiff’s, featuring the same photograph of the celebrity couple that was displayed on the plaintiff’s billboard. The defendant had neither sought permission from the couple to use their photograph nor been authorized to do so by the plaintiff; the court held the defendant liable not only for infringing the plaintiff’s copyright in the advertisement but also for misappropriating the couple’s personality rights.

3. ICC Development (International) Ltd. v. Arvee Enterprises, 2003 VII AD (Delhi) 405

For the first time, in this case, the right of publicity was recognized as an independent right in India. The court further held that the right doesn’t extend to events, companies and corporations but is restricted to persons.  The case addressed for the first time the misuse of advertising Cricket World Cup name by those who weren’t the official sponsors. “An individual may acquire the right of publicity by his association with an event, sport, movie, etc. However, that right is not inherent if made the individual famous, nor in the corporation that has brought about the organization of the event. Any effort to take away the right of publicity from the individuals to the organizer/ non-human entity of the event would be violative of Articles 19 and 21 of the Constitution of India – No persona can be monopolized. The right of publicity vests in an individual and him alone is entitled to profit from it.”

4. Sonu Nigam v. Amrik Singh (alias Mika Singh) & Anr, 372/2013(Bombay High Court)

In this case, the parties gave their consent to the organizers of the Mirchi Awards 2013, to show their photographs on the official posters of the event, in which they were performing. Mika Singh, to promote himself, displayed hoardings and posters, which were different from official hoardings and posters of the event, carrying huge pictures of himself along with smaller pictures of the other artists, including Sonu Nigam, without their consent and permission. It was contended that the said hoardings and posters gave an unjustified and incorrect impression to the public about the prominence given to Mika Singh as compared to the other artists. The Bombay High Court restrained the defendants from displaying the pictures of the Plaintiff without consent and ordered the defendant to pay damages.

5. Shivaji Rao Gaikwad (aka Rajinikanth) v. Varsha Productions, CS(OS) 598/2014(Madras High Court)

Popular actor Rajinikanth, sued Varsha Productions, to stay the release and screening of Hindi film Main Hoon Rajinikanth on the ground that the Production House used his name without receiving the prior consent of the actor, on the ground that any use/misuse of his name/caricature/image/style of delivering dialogue without his consent or permission would amount to infringement of his personality rights, as well as pass off. The court held that a prima facie case had been made and the case was decided in favour of the actor.

6. Amar Nath Sehgal v. Union of India

In this case, the Court laid down the essential remedies that an aggrieved party can seek for the misuse of the image, they are:

• The party could bring in a suit for violation of tort of privacy and seek compensation/ injunction
• The party can approach the court and contend that it’s an act of passing off or infringement
• The party can sue for breach of confidence with a request for injunction and damage

7. R. Raja Gopal v. State of Tamil Nadu, (JT 1994 (6) SC 514)

The Supreme Court recognized right of publicity in the form of right of privacy as follows: “the first aspect of this right must be said to have been violated where, for example, a person’s name or likeness is used, without his consent, for advertising – or non-advertising – purposes or for any other matter”.

Conclusion

The laws in force don’t permit the use of a celebrity’s name for a product or service without receiving the celebrity’s prior consent. Various courts have reaffirmed the same. Protection is sought through privacy laws, tortuous liability and intellectual property law. The name, image, and personality of a celebrity has a brand value which is associated with him due to his work. The commercial exploitation which derives an economic benefit are his right and no unauthorized person can misappropriate and unjustly benefit from the same.