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What is a copyright assignment?

A copyright assignment is when the copyright holder transfers ownership of the copyright to another
person or organization.

The copyright holder is normally the person who created the work, but they may decide to sign the
agreement over to a publisher (in the book industry or music industry) or record label (in the music
industry). This occurs because publishers and record labels have more resources than an author to
print copies of the work, distribute to a broader audience, and maintain other aspects of their
career. A lot of times, the publisher or record label may even supply the author with a monetary
advance so the author can focus on just creating the work.

The downside of assigning your copyright over to a publisher is that you receive only a cut of what
you would have received if you retained the copyright, and you may also lose some creative control.
For instance, the decision over whether to turn your book into a movie may now rest with the
publisher and not you.

An alternative of transferring the entire copyright over to a publisher is licensing the work to them in
a limited capacity. In this instance, you retain the copyright, but you also get the business
advantages from the publisher.

https://www.newmediarights.org/book/what_copyright_assignment

There have been too many copyright issues in the recent times, either between the producer
or the director of the film with regard to ownership of copyright or between say, a
scriptwriter and the director. This got me thinking about the rights of the different people who
contribute toward making a movie, well a complete movie. There is the music composer, the
lyricist, the sound recorder, the record label company to name a few who are individuals who
come up with creative ideas and turn them into their works. These people mostly either assign
or license the rights that subsist in their work to the producer in return for a royalty. However,
it isn’t as easy as it seems to be. There are many questions that arise at the time of assignment
and especially after it, questions involving moral rights and future rights and the like. Well,
time to find out the answers!

Transfer of copyright:

All of us are aware that the first author of the work is the owner of the work unless he assigns
someone else to be the owner for a specific thing (assigning your work to be used in movies)
and for a specific period of time. The owner of the copyright in an existing work may assign
his work to any person the copyright either wholly or partly either for the whole term of the
copyright or part of the term.

Transfer of future copyright:

Section 18(1) of the Copyright Act also says that the any prospective owner of a future work
may assign his copyright. However, the recent amendment of 2012 made it amply clear that
such an assignment will not extend to those mediums or modes of exploitation which did not
exist at the time of the assignment. Modes of exploitation constantly keep changing due to
scientific developments. As in, in the earlier days there used to be only video cassette
recorders which were played and now there is MP3 players, iPods and other music players
that exist. Similarly, we cannot foresee the technological developments that are yet to come
and therefore, the assignment of copyright that is made today will only cover those modes of
exploitation that are available today.

This new piece of legislation has come as a relief to the authors as it strengthens their
position is new modes of exploitation of their work come into existence.

Mode of assignment:

Section 19 of the Act clearly lays down the requirements to assign a copyright. They are as
follows:

1. Unless the assignment is in writing and is signed by the assignor, the agreement will not be
valid;
2. The rights assigned along with duration and territorial extent must be clearly established;
3. The amount of royalty or any other consideration payable must be clearly specified;
4. It is to be noted that if the assignee fails to exercise the rights assigned to him within one
year of the date of assignment, then such assignment shall be deemed to have lapsed
unless there is some provision to the contrary in the agreement;
5. If the period of assignment is not mentioned, then it shall be for 5 years;
6. Similarly, if the territorial extent is not mentioned, it shall be presumed to extend within
India;

Amendment of 2012 to Section 19:

Three clauses have been added with respect to assignment to Section 19 which basically says
that royalty has to be paid to the authors whose work has been exploited in a cinematographic
film other than by way of exhibition of the film in a cinema hall. This simply means that the
authors are entitled to the subsequent royalties which may arise in the course of further
exploitation of the film which includes their work. For example, they will also be entitled to
royalty for satellite right, home video, internet right etc. This again strengthens the position of
the authors of the work are the actual owners of anything apart from their work in the
cinematographic film. The second clause that has been added is for sound recording and is
the same as above.

What the authors can do is register their work with a copyright society and thereafter license
it to whoever they like.

Moral rights

A creator of any work has the right to claim authorship of the work and claim damages in
case of any distortion, mutilation or modification caused to his work and such an act should
have been done before the expiration of the term of assignment is such an act will cause harm
to his goodwill.

It is to be noted that moral rights are independent of the author’s copyright and moral rights
remain with the author even if he has assigned his copyright.
So what should be learnt from the recent news on various copyright assignment issues is that
while assigning your rights, it is rather important that you clearly lay down the specific right
which you are assigning in order to eliminate the chances of confusion being caused. The
amendment of 2012 has played a very important role in strengthening the earlier weak
position of authors of works with respect to assignments. Because if someone wants to
benefit from their own labour and skill, they should be able to do so without constantly
fearing of getting crushed by the giants!

https://selvams.com/blog/assignment-of-copyright-in-india/

A copyright is an ownership interest in a creative work that gives the owner exclusive rights
to use the work. A small business interested in using an image or a piece of music in its
advertising, for example, will need to acquire the rights to those works either by buying them
completely and getting an assignment, or by purchasing a license to use the works for a
specific purpose.

Assignments

An assignment is a permanent transfer of one or all of the copyright rights, similar to the sale
of personal property. Assignments are normally more expensive because the purchaser has
total ownership and can resell or license the works themselves.

Licenses

A license is a temporary or limited transfer of certain copyright rights. It can be made on an


exclusive or non-exclusive basis, meaning the copyright owner can license the work to more
than one person at the same time. As a result, licenses are more economical ways for small
businesses to use copyrighted content.

http://smallbusiness.chron.com/difference-between-assignment-license-copyright-66736.html

In a recent significant legal development, the Copyright (Amendment) Act 2012 has amended
section 18 of the Copyright Act 1957, which deals with 'Assignment of Copyright'. Section
18 (1) provides that the owner of a copyright in any work or prospective owner of a future
work may assign the copyright. The proviso to this subsection clarifies that in case of future
work, assignments will come into force only when the work comes into existence. A second
proviso has been inserted in this section by providing that no such assignment shall apply to
any mode of exploitation that did not exist or was not known in commercial use when the
assignment was made, namely: -

"Provided further that no such assignment shall be applied to any medium or mode of
exploitation of the work which did not exist or was not in commercial use at the time when
the assignment was made, unless the assignment specifically referred to such medium or
mode of exploitation of the work."

The above amendments strengthen the position of the author if new modes of exploitation of
the work come to exist. In continuum, the significance of the instant case lies within the
realm of the unfairness and invalidity of contracts covering future assignments where rapid
advancements in technology keeps changing the character of intellectual property rights.
Sholay Media & Entertainment Pvt. Ltd. (Sholay Media), the owner of all rights to the movie
Sholay, filed a suit alleging copyright infringement by Vodafone Essar Mobile Services Ltd.
over sale of music and dialogues from the movie as ringtones / caller tunes. Vodafone, a
cellular services provider offers various value added services such as ringtones, true tunes,
caller tunes, Internet radio etc. to their subscribers.

The Court granted an ex-parte injunction restraining Vodafone from offering ringtones /
caller tunes of the movie Sholay to its subscribers without prior permission / license from
Sholay Media. Subsequently, Phonographic Performance Ltd (PPL) and Universal Music
India Pvt. Ltd (Universal Music) impleaded (joining the suit as a party) themselves in the
suit. The case was later heard on plaintiff's application for interim injunction and the
defendant's application for setting aside of the ex-parte injunction order (Sholay Media &
Entertainment Pvt. Ltd vs. Vodafone Essar Mobile Services Ltd. I.A. Nos. 3258/2011 &
4504/2011 in CS (OS) No. 490/2011).

As a backgrounder - Sippy Films Pvt Ltd., which produced Sholay, had assigned / transferred
all rights in the movie vide a gift deed in 2000 to Sholay Media but much before this, in 1978
Sippy Films Pvt. Ltd granted certain rights in the movie to Polydor, now known as Universal
Music India Pvt. Ltd (Universal). Universal in turn entered into an agreement with
Phonographic Performance Ltd (PPL), a copyright society administering copyright in sound
recordings for music companies. PPL under this authorization, under an agreement in 2006,
granted all rights to Vodafone for exploitation of sound recording on mobile cellular services.

Telecom operators like Vodafone distribute the content to the end user acting as a content
aggregator and platform company, which provide ringtone and caller-tunes based on the
content licensed from music companies.

The dispute in this case pertains to the scope of the rights assigned to Universal Music as to
whether an absolute right to use the sound recordings by way of ringtones and caller-tunes
(digital rights) was assigned to Polydor / Universal Music in 1978; or the right to use sound
recordings on digital and mobile platform continue to vest in Sholay Media & Entertainment
Pvt. Ltd?

Section 18 of the Copyright Act, 1957 provides that the owner of the copyright in the work
may assign to any person either wholly or partially and either generally or subject to
limitations and either for the whole term of the copyright or any part thereof. Therefore the
construction of the terms of the Assignment deed was brought into play to answer the
question as to whether the assignment to Polydor/Universal Music extended all rights in the
sound recordings or only some of them.

Sholay Media argued that the assignment to Universal from Sippy Films extended only to the

1. right to make records for sale and distribution; and


2. right to communicate the sound recordings by way of radio broadcast.

It also advanced the case that rights in respect of value added services for mobile phones
neither existed nor were in contemplation of the parties at the time of assignment. In pertinent
parts of the "assignment agreement", where there is an assignment of copyright in the work,
the clause states "Save as aforesaid the Assignor reserves to himself the copyright in the said
work." This could be interpreted to mean that anything other than specifically mentioned in
the agreement was reserved to the Plaintiffs and not transferred to Polydor / Universal Music.
As a logical consequence, plaintiffs argued that residual rights in future mediums like
ringtones were never transferred in the impugned assignment deed.

However the assignment deed in the defining the term 'Record' mentions 'to include disc,
tapes or any other device in which sounds are to be embodied', which conveys that all rights
in the sound recording, including digital rights which were neither available nor in
contemplation at the time of the execution of the Assignment deed, were assigned to Polydor
/ Universal Music. To this the plaintiffs argued the application of ejusdem generis rule which
when applied would translate 'any other device' as a physical device and not a digital device.

Vodafone's case is that Sholay Media has no title to the sound recording of the movie as it
stood assigned to them in 1978. It disputed that the assigned rights are confined to only
physical records and radio broadcast and contended that the residual rights in the assignment
deed means the remaining right in the movie and not the remaining rights in the sound
recording.

This, however, was vehemently contested by Sholay Media, which contended that the rights
to exploit the movie in any case was not the subject matter of the assignment and, therefore,
the rights reserved under the clause are those rights in the sound recording not expressly
assigned to Polydor / Universal Music.

The Court was of the opinion that the assignment deed could be interpreted in both ways and
the crux of the issue was the definition of 'record' and whether 'any other device' could mean
incorporating the digital medium. This question was left as an issue for the trial and the Court
disposed off the interlocutory applications by passing interim orders.

Vodafone was allowed to continue using the sound recording of the film through digital and
mobile media subject to the condition that Universal will pay royalty regularly as agreed in
the assignment deed, covering the exploitation of digital rights by Vodafone also. As for the
profit that Universal was making from the ringtone royalties (i.e. the money that Universal
makes after giving Sholay Media & Entertainment Pvt Ltd their share of the royalties) the
Court ordered it to be deposited with it until conclusion of the trial. Vodafone was directed
not to allow the use of the film's sound recordings except on the terms as ordered by the
Court.

http://www.mondaq.com/india/x/205368/Copyright/Copyright+Assignment+Advancement+In+Tech
nology+The+Case+Of+Shalov

The amendment to the Indian Copyright law in 2012 brought in many changes, from access
to persons with disability to digital rights management. However, the thrust of the
amendment was on granting right to royalty to authors and performers and eliminating
unequal treatment meted out to lyricists and music composers of copyrighted works,
incorporated in cinematograph film, owing to the contractual practice in Indian entertainment
industry.

Since yester years, the practice in the industry had been that the rights of authors (music
composers, lyricist, script writers) were to be assigned by the authors to the producers of the
cinematographic film for a payment of lump sum amount. This practice got the consent of
law through the decision of the apex court in Indian Performing Rights Society v. Eastern
India Motion Picture Association (AIR1977 SC 1443) wherein the Hon’ble Supreme Court,
on the basis of Section 17(b) and 17(c) of the Copyright Act, 1957, held that the producer of
the cinematograph film was the first owner of the copyright and no copyright subsists in the
lyricist or the composer unless there is a contract to the contrary between them and the
producer. This decision of the Supreme Court made the industry practice much stronger, after
which, the producers aggressively entered into commissioning agreements where the authors
gave up all their rights in the work for perpetuity.

It was only in the past one decade, that the authors formed a clout and initiated their fight for
their right in their own works. After a decade of struggle with the government, to rectify this
stark inequality, the Copyright (Amendment) Act, was passed in 2012. The Amendment Act
introduced a proviso in Section 17 of the Act, clearly providing that clauses (b) and (c) of the
Section would have no impact on the right of the author of the work incorporated in the
cinematograph.

The relevant provisions of the 2012 Act which deal with the right to royalty are with respect
to the authors of underlying works incorporated into films and sound recordings are
contained in:

Two provisos inserted into Section 18 of the Copyright Act:

“Provided also that the author of the literary or musical work included in a cinematograph
film shall not assign or waive the right to receive royalties to be shared on an equal basis with
the assignee of copyright for the utilization of such work in any form other than for the
communication to the public of the work along with the cinematograph film in a cinema hall,
except to the legal heirs of the authors or to a copy right society for collection and
distribution and any agreement to contrary shall be void:

Provided also that the author of the literary or musical work included in the sound recording
but not forming part of any cinematograph film shall not assign or waive the right to receive
royalties to be shared on an equal basis with the assignee of copyright for any utilization of
such work except to the legal heirs of the authors or to a collecting society for collection and
distribution and any assignment to the contrary shall be void.”

Three new sub-clauses inserted into Section 19 of the Copyright Act:

“19(8).The assignment of copyright in any work contrary to the terms and conditions of the
rights already assigned to a copyright society in which the author of the work is a member
shall be void.

19(9). No assignment of copyright in any work to make a cinematograph film shall affect the
right of the author of the work to claim an equal share of royalties and consideration payable
in case of utilization of the work in any form other than for the communication to the public
of the work, along with the cinematograph film in a cinema hall.

19(10). No assignment of the copyright in any work to make a sound recording which does
not form part of any cinematograph film shall affect the right of the author of the work to
claim an equal share of royalties and consideration payable for any utilization of such work in
any form.”
The amendment to Section 18 also disallows the assignment of copyright in a manner which
allows the assignee to exploit the copyright assigned to it via unspecified ‘future
technologies’ i.e. any medium or mode of exploitation of a work which did not exist or was
not in commercial use when the assignment was signed. This permits the authors to reserve
the right of exploitation of their work via future technologies.

Performer’s rights have been also restructured slightly. Section 38A, now grants the
performers the rights to royalty, as that of the authors. Performers are now entitled to royalty
with respect to making performances for commercial use. Furthermore, Performers are also
accorded with moral rights which include right to integrity and paternity

http://www.literators.com/ip-blog-a-thon-amendment-to-indian-copyright-act-with-respect-to-
authors/

India’s Copyright Act, 1957 has been significantly amended. In May 2012, both houses of the
Indian Parliament unanimously placed their seal on the Copyright Amendment Bill, 2012,
bringing Indian copyright law into compliance with the World Intellectual Property
Organization “Internet Treaties”.

Leaders of the opposition in both houses and representatives from various parties gave
spirited support to the bill tabled by the government.

The Copyright Act, 1957 had been amended five times prior to 2012, once each in the years
1983, 1984, 1992, 1994 and 1999, to meet with the national and international requirements.

The 2012 amendments make Indian Copyright Law compliant with the Internet Treaties – the
WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT).

Also, while introducing technological protection measures, the amended law ensures that fair
use survives in the digital era by providing special fair use provisions. The amendments have
made many author-friendly amendments, special provisions for disabled, amendments
facilitating access to works and other amendments to streamline copyright administration.

ssignment of Rights

Under Section 18(1) a second proviso has been inserted. It provides that no such assignments
shall apply to any mode of exploitation that did not exist or was not known in commercial use
when the assignment was made.

This amendment strengthens the position of the author if new modes of exploitation of the
work come to exist.

Section 18(1) provides that the owner of a copyright in any work or prospective owner of a
future work may assign the copyright, and the proviso to this sub-section clarifies that in the
case of future work, assignment will come into force only when the work comes into
existence.

Another proviso under S. 18(1), inserted through Amendment Act 2012, provides that the
author of a literary or musical work incorporated in a cinematograph film or sound recording
shall not assign the right to receive royalties in any form other than as a part of the film or
sound recording.

Section 19 relates to the mode of assignment. Sub-section(3)has been amended to provide


that the assignment shall specify the ‘other considerations’ besides royalty, if any, payable to
the Assignor. Therefore, it is not necessary that only monetary compensation by way of
royalty could lead to assignment.

A new sub-section(8)has been inserted making the assignment of copyright void if contrary
to the terms and conditions of the earlier assignment to a copyright society in which the
author of the work is a member. This amendment is an attempt to streamline the business
practices. Another amendment, insertion of sub-section(9), by providing claim to royalties
from the utilization of the work used to make a cinematograph or sound recording
irrespective of any assignment of the copyright in the same, is an attempt to rationalize the
business practices prevalent in the film industry.

Section 19A relates to disputes with respect to assignment of copyright. This section provides
that on receipt of a complaint from an aggrieved party, the Copyright Board may hold inquiry
and pass orders as it may deem fit, including an order for the recovery of any royalty payable.
The second proviso is amended to provide that pending disposal of an application for
revocation of assignment, the Copyright Board may pass any order as it deems fit regarding
implementation of the terms and conditions of assignment.

https://www.ip-watch.org/2013/01/22/development-in-indian-ip-law-the-copyright-amendment-
act-2012/

t’s been a little over two years since the Copyright Act, 1957 was extensively amended in
2012 with far-reaching ramifications for all categories of stakeholders. The amendments
purported to introduce a level playing field for different categories of right holders in the
entertainment industry, recognise the access needs of users of the copyrighted works in
general and visually impaired population of the country in particular, align the copyright
regime of the country with rapid advances in technology and streamline copyright
enforcement and administration. To gauge the influence of the amendments on copyright
regime in India as well as to see if their implementation so far has been in sync with the
legislative intent, this article seeks to evaluate the Copyright (Amendment) Act, 2012
(hereinafter referred to as the Amendment Act) as well as their working.

[Note: this article updates an earlier article published by this author on Intellectual Property
Watch here.]

Amendments pertaining to entertainment industry

While the 2012 amendments to the Act extended the rights of the performers and
broadcasting organisations, the major thrust of amendments was on eliminating unequal
treatment meted out to lyricists and music composers of copyrighted works incorporated in
cinematograph film owing to the contractual practice in Indian entertainment industry. Under
industry practice, lyricists and music composers were assigning all rights in the work to the
producer of the film for a one time lump-sum payment. This entailed that lyricists and music
composers had no further right to any royalty accruing from their work even if the work was
being utilized in mediums other than the cinematograph film. This was justified by taking
recourse to Supreme Court Judgement in Indian Performing Rights Society v. Eastern India
Motion Picture Association (AIR1977 SC 1443) wherein the Apex Court, on the basis of
Section 17(b) and 17(c) of the Act, concluded that the producer of the cinematograph film
was the first owner of the copyright and no copyright subsists in the lyricist or the composer
unless there is a contract to the contrary between them and the producer. This 1977 decision
was extensively used in the industry against the interests of the composers and lyricists and
revenue earned through the avenues of commercialization of such works due to rapid
advances in technology were kept away from the composers and lyricists. Since conventional
assignment contracts entered into by the composers and lyricists entailed giving up all the
rights in the works including its exploitation rights via future technologies, copyright creators
simply had no share in the astounding revenues that accrued to the producers.

To rectify this stark inequality, the Amendment Act introduced a proviso in Section 17 of the
Act, clearly providing that clauses (b) and (c) of the section would have no impact on the
right of the author of the work incorporated in the cinematograph film, thus effectively
overruling earlier Supreme Court judgement. The Amendment Act specifically recognised
the difference between usage of the literary and musical work for incorporation in the
cinematograph film and other independent uses of such work across different mediums and
modes. And accordingly mandated that those assignment contracts, that preclude the right of
the author of the literary or musical work, incorporated in the cinematograph film, to collect
royalties in case of utilisation of the work in forms other than the cinematograph film, would
be void unless such assignment is made in favour of legal heirs of the author or the copyright
society for collection and distribution of royalties. Further, any assignment of copyrights in
any work would not be applicable to any future medium or mode of exploitation of the work
not in existence at the time of the assignment. To enforce transparency and effectiveness in
implementation of these provisions, the Amendment Act made it mandatory to transact the
business of issuance of licenses in respect of works incorporated in cinematograph film
through a registered copyright society under the Act.

Response to the amendments

As expected amendments have not gone down too well with the producers of the
cinematograph film and major music companies of the country who buy the music rights of
the film, and a number of writ petitions challenging the constitutional validity of the
amendments have been filed before the Delhi High Court (Bharat Anand v. Union of India,
W.P. (C) – 2321/2013, Venus Worldwide Entertainment Pvt. Ltd v. Union of India, W.P. (C)-
2318/2013, Super Cassettes Industries v. Union of India, W.P. (C)-2316/2013).

Surprisingly a category of songwriters and composers (in whose favour amendments are
claimed to be), are also not very pleased with the amendments and have challenged their
constitutionality (Devender Dev v. Union of India, W.P. (C)-2959/2013). These songwriters
and composers belonging to a regional language fraternity have challenged the second
proviso to section 33 (1) which compulsorily requires them to transact licensing business
through a copyright society, on the ground that it restricts their right to license their work and
forces them to join a copyright society which in view of the limited popularity of that
regional language music harms their commercial interests as they would have no say in
determining the distribution scheme of the royalties collected by the Copyright Society.
While these writs are yet to be decided it has been widely reported that producers of the
cinematograph film are already devising ingenious ways to create instruments preserving
their broad interests.

The Government had assured that it would set up a permanent Copyright Board and also a
Copyright Enforcement Agency Council to ensure compliance with the provisions of the
Amendment Act; some concrete steps toward this goal are yet to be taken.

Access-facilitating measures in the Amendment

One of the high points of 2012 amendments was to ensure that users of copyrighted materials
have affirmative access to protected materials and their fair use rights are duly protected and
enforced. To this end, Amendment Act not only broadened the scope of statutory and
compulsory licensing provisions provided in the earlier Act, but also empowered
broadcasting organisations to broadcast any prior published literary, musical work and sound
recording by just giving a prior notice to the copyright owner and paying royalty at the rates
prescribed by the Copyright Board as laid down in Section 31D of the Amendment Act.
Neither any positive confirmation from the copyright owner is required nor do they have any
say in determining royalty rates, making it almost an unqualified right for the broadcasters.

Copyright owners, which once again include major music labels, are not particularly happy
and have challenged the constitutionality of this amendment. (Venus Worldwide
Entertainment Pvt. Ltd v. Union of India, W.P. (C)-2318/2013, Super Cassettes Industries v.
Union of India, W.P. (C)-2316/2013)

Further, amendments also recognised the need to ensure access to reading material for the
differently abled population of the country and accordingly introduced exceptions specifically
for their benefit. The newly introduced Section 52(1) (zb), is broadly worded, and allows the
conversion of any work in any accessible format by any person or organisation till such
reproduction is for the benefit of persons with any disability and the converting organisation
or person is working on a non-profit basis ensuring that such copies do not enter the main
channels of business. Even sharing of accessible format copies has been allowed subject to
such copies being used only for personal, educational, research purposes. Thus, there is no
need of obtaining any bureaucratic approval/license or satisfying any onerous requirement for
conversion till the purpose is to enhance accessibility for the differently abled population.

Subsequent to the commencement of Amendment Act, India also ratified Marrakesh Treaty
to Facilitate Access to Published Works for Persons who are Blind, Visually Impaired or
otherwise Print Disabled, adopted on 23rd June, 2013 (hereinafter referred to as Marrakesh
Treaty), becoming the first country to do so. This would enable Indian users to use accessible
format copies available in the developed countries and also allow sharing of digitized version
of hitherto available printed works which when used with assistive technological measures
such as read aloud capability, text to speech function or refreshable Braille display may prove
very beneficial.

Amendments focussing on alignment of the Copyright Act with digital advances

The Amendment Act has tried to bring the Indian Copyright regime in sync with
technological advances and concomitant international developments. And accordingly, the
ambit of reproduction right has been widened to include storing of the work in any medium
by electronic means. Section 65A and 65B are inserted so as promote to digital rights
management. Both these provisions are aimed at protecting the rights of the copyright owners
in the digital domain and there were concerns that may impinge on the fair use rights of the
copyrights users as seen in case of the United States Digital Millennium Copyright Act
(DMCA). However, it has been expressly provided in the Amendment Act that circumventing
for “a purpose not expressly prohibited by this Act” will be allowed. Yet there are some
ambiguities in this provision. For instance, the provision prohibits circumvention of an
effective TPM but does not define what constitutes an effective TPM. While in USA
effective TPM refers to a TPM which effectively controls access to the copyrighted digital
content, in the Indian context the meaning of the expression is not clear.

To ensure that digital advances are useful for the users as well and does not unreasonably
restrict their access, the Amendment Act also brought in some safe harbour provisions
especially for internet service providers (ISPs) in section 52(b) and 52(c) of the Amendment
Act. Both these provisions protect ISPs from liability of copyright infringement in case of
transient or incidental storage of the work for purpose of providing access, in case such
access is not expressly prohibited by the copyright holder and there is no reasonable ground
to believe it is an infringing copy. ISPs are responsible to take down the content or restrict
access only in case of a written complaint from the copyright owner. Both these provisions do
not seem to put any positive obligation on the ISPs to prevent infringement and they are
mandated to act only if a complaint of infringement has been brought to their notice. But
Delhi High Court in a recent order in Star India Pvt. Ltd v. Haneeth Ujwal (CS(OS)
2243/2014) held that ISPs have an obligation to ensure that no violation of third party
intellectual property rights takes place through its networks. Also, by virtue of the obligations
that have been imposed upon an ISP under its license agreement with the Department of
Telecommunications, the ISPs are mandated to ensure that content which infringes
intellectual property is not carried on its network. This order has enjoined the ISPs to monitor
the content that they provide access to and made them responsible for curbing infringement
thereby restricting the scope of safe harbour provision provided in the Amendment Act.

Conclusion

The Amendment Act was aimed to be an access-enabling, technology friendly dynamic


enactment, however 2 years down the lane it remains legislation yet to be fully implemented.
Many of the provisions are simply inoperable due to a non-existent Copyright Board, while
some are not being followed in true spirit by different categories of stakeholders.
Furthermore, some provisions are already under judicial scrutiny while some are considered
too vague to warrant any implementation without clarification from legislation or judiciary.
Judicial interpretations and pronouncements in the near future are is likely to clear the mist
around many provisions brought in the statute book through 2012 Amendment Act.

https://www.ip-watch.org/2014/10/23/the-indian-copyright-amendment-act-2012-and-its-
functioning-so-far/