1. Introduction

Developments in information communication technologies has brought about an accelerated information explosion and huge change in how information is being produced, processed, stored and communicated. Information is now being made available in digital format accessed via electronic networks such as the Internet, and being stored or preserved in digital archives or collections. In addition, digital information can be manipulated and disseminated very easily. Such forms of development have resulted in major concerns in the protection of digital information sources under existing copyright and other related laws and regulations. The efforts has been made to revise copyright laws in order to include the protection of digital information sources, and the library and information professionals and institutions around the world, can play role to ensure that revised copyright laws do not have a negative impact on the free flow of information and access to digital information sources.

Actually, developments in digital information and communication technologies have brought about new methods of producing and disseminating information in a new format i.e. digital format. Information is being produced, processed, stored in digital form and distributed over electronic networks, such as the Internet and on CD-ROM’s. Digital bibliographic and full text databases can be accessed over electronic networks and on CD-ROM’s. The Internet’s World Wide Web, a multimedia and hypertext tool, provides a new and technologically advanced way of generating, publishing and distributing digital information to a wider community within the shortest possible time. Web-based information can be accessed anywhere in the world, where access to the Internet is available. Information on the web can integrate text, sound, video and images all in one digital document. Digital information sources available on the Internet include electronic journals, books, conference proceedings, software, speeches, music, videos and films, work of art research reports, photographs, museum objected and many others, most of which are versions of works already protected under copyrighted works, while others are just being created. Creators of digital works, governments, publishers and even information professionals are all concerned about the possible misuse or exploitation of digital information sources. These sources can easily be accessed, reproduced or printed on computers connected to networks. In addition, the quality never goes down, and can be copied, edited and transmitted to another platform with upgraded quality very easily. For example, WWW provides access to huge amounts of digital information, however, the use of web browsing software allow users to have a complete copy of the web document on their computer screens. The digital version of the document can be copied or printed several times, or stored on a computer diskette or hard disc for future use, without the permission from the Intellectual Property holder. Hence, the need to protect digital information sources cannot be over-emphasised. In this circumstances, authors and publishers are not willing to put their works on electronic networks unless a system is in place to protect their works. It is true that Internet serves as a powerful mechanism for the collaboration, communication and interaction between individuals regardless of their geographic location. Hence, it is imperative to distinguish the liability of those who give individuals and corporations access to the internet from that of individual users. The former includes not only Internet Service Providers (ISPs) but also non-commercial hosts such as universities, offices, other educational institutions, corporate sectors etc.

ISP is an entity that connects people to the Internet and provides related services such as website building and hosting. ISPs are also sometimes described as Online Service Providers. ISPs are today largely immune from liability for their role in the creation and propagation of worms, viruses, obscene and defamatory material and other forms of malicious computer codes. In the spirit of promoting electronic transactions, it becomes all the more essential to clarify  not only the position regarding the liability of the ISP but also to enforce the copyright in digital environment including the consequences flowing from such type of liability and the measures required to be adopted in this direction.

There is a close nexus between Intellectual Property (IP) and the Internet and their convergence in the digital era is inevitable. Gieschen Consultancy’s Report states that around 14% of counterfeit and piracy investigations that involve transactions are carried over the Internet.[1] Internet is home to various copyrighted content such as music files, videos, software, video games etc. A user of such content requires no prior permission from the author and is not obliged to pay for any of the services availed; this is what makes the Internet quintessential.

2. International Law on online infringement and enforcement

With the internet today transcending all national boundaries, the protection of IP and penalising its infringement over the “World Wide Web” has become even more difficult, given to the territorial nature of the grant of the Intellectual Property Right. Moreover, while hosting, routing and linking to these “infringing material harbouring” sites or services, Internet Service Providers (ISPs) themselves become vulnerable to charges of copyright infringement. The IP-Internet nexus can be looked at from three perspectives- the author, the user and the service provider. An author creates a piece of work and registers it under the existing IP laws to enjoy certain benefits, but the digital world hinders the complete enjoyment of these rights. But before discussing the existing laws, initiative and nature of infringements in India, it is necessary to analyse the laws that other countries have proposed and adopted at a national level, while simultaneously evaluating their effectiveness and applicability in reference to the Indian context.

2.1 The TRIPS Agreement

The TRIPS Agreement is a minimum standards agreement.  It leaves Members free to provide more extensive protection of intellectual property if they so wish – for purely domestic reasons or because they have concluded international agreements to this effect (Article 1.1). Articles 41-61 (Part III) provide for the minimum standards that Member States must implement for effective action against infringements.  MatthijsGeuze, Who served as Secretary to the TRIPS Council at the WTO, suggested that the general enforcement obligations of Article 41 of TRIPS can be summarized in six ‘performance standards’.[2]

• Enforcement procedures to permit effective action against infringement;

(ii) Expeditious remedies to prevent infringements;

• Deterrence to further infringements;
• Enforcement procedures that are not unreasonably complicated;
• Enforcement procedures that are not unreasonably costly:
• Time limits that do not cause unwarranted delays or are not unreasonably fast.

Thus, these provisions have two basic objectives; one to ensure that effective means of enforcement are available to right-holders and the second to ensure that enforcement procedures are applied in such a  manner as to avoid the creation f barriers to legitimate trade and to provide for safeguards against their abuse.[3]

• The WIPO Internet Treaties

The WIPO in 1996 adopted the ‘WIPO internet treaties’ (WIPO Copyright Treaty-WCT and WIPO Performances and Phonogram Treaty-WPPT). During the Diplomatic Conference, the issue of unauthorized communication over the internet was intensely debated.  The ultimate result was that the treaties are essentially neutral on the subject, with the issue of liability left to the national legislation to determine.  Article 8 of the WCT (and corresponding Articles 8 and 15 of the WPPT): talk of the exclusive rights of the owner to ‘communicate’ or ‘distribute’ their work.  However, an agreed statement to the article, provides that: “[i]t is understood that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty or the Berne Convention.” This statement clarifies that the mere provision of wires used to communicate, for example, does not, constitute an act of communication. The Article itself includes communication through wireless means.  But the statement is limited in its application; it does not specifically cover or elucidate a number of other activities that service providers may engage in, and does not deal with concept of liability for contributing to the infringement of another.[4]  Thus, activities like routing and re-routing information, harbouring infringing information, providing connections for digital transmissions and online communications, etc, are not explicitly addressed within the WCT and WPPT.

Certain specific types of infringement of rights on the internet do not find specific mention in the international regime, it gives wide discretion to the national authorities to enact substantive provisions, their by allowing some gaps in the quest for harmonization. However, the enforcement obligations in TRIPS, and the WIPO internet treaties, once incorporated into national legislations upon ratification, have provided a comprehensive foundation for the development of procedures and remedies necessary for effective enforcement against the kinds of infringement that appear over the cyber environment as well as safeguards against ISP liability.[5]  These international instruments lay down minimum standards, and at the same time the ratifying countries are free to adopt higher standards (TRIPS plus provisions). Nonetheless, since USA is always perceived as the largest fish in the pond, and nation hoping for trade relations with the country, is expected to meet its version of the ‘TRIPS’ plus’ regime, or find themselves in USA’s Special 301 ‘Priority watch list’.[6]

2.3 US Law: The DMCA, “Notice and Take down” and “Safe Harbour” Provisions

The DMCA defines a ‘service provider’ in two ways, where these apply to different parts of Section 512. Section 512 (k) defines as Service Provider:

• As used in the sub section (a), the term “ service provider” means an entity offering the transmission, routing or providing a connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received.
• As used in this Section other than subsection (a), the term “ service provider” means a provider of online services or network access, or the operator of facilities therefor, and includes an entity described in subparagraph (A).

 This broad definition is deliberate to include universities and other institutions which provide internet access to their students, etc. [17 USC & 512(e)].  Moreover, the intention was to include the traditional ISPs as well as providers of new services as seen today.[7]

The ISPs are eligible for the benefits of the ‘safe harbour’ provision, if they meet two preliminary requirements. Section 512 (i) says that the limitations on liability established by this section shall apply to a service provider only if the service provider-

• has adopted and reasonably implemented, and informs subscribers and account holders of the service provider’s system or network of, a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network who are repeat infringers; and
• accommodates and does not interfere with standard technical measures.

  Though ‘seemingly innocuous’, the Section 512 (i) eligibility requirements have become a point of contention in several cases.  It further creates four safe harbor provisions that indemnify ISPs from any copyright infringement liability and insulates them from damages.  The four sub-parts of the section identify distinct functions that an ISP may perform and provides for function-specific protection[8] as follows:

• Where the ISPs function as ‘conduits for information’ (‘transitory digital network communications’) – no monetary liability, only injunctive relief. This safe harbor will not be available to a service provider that initiates, selects, or modifies the content of a transmission, or stores it on a system in a way that its content becomes generally accessible to third parties.
• Caching [17 USC & 512 (b)] – System caching refers to the process by which ISPs temporarily ‘[store] material on a system or network,’ in order to ‘reduce network congestion generally’ and delays to popular sites. The transmission must be initiated by a third party, transmitted through the system to a second user, and stored via automatic processes.  However, unlike protection for transitory communications, this subsection only limits liability for those service providers who, upon notification, ‘[respond] expeditiously to remove, or disable access to, the material that is claimed to be infringing’ [17 USC & 512(b)(2)(E)].
• Information residing on systems or networks at the direction of users – limitation of liability for ‘innocent’ and unintended or uninformed, storage of infringing information. This provision protects those ISPs that receive no financial benefit that can be ‘directly attributable to the infringing activity,’ where the provider has neither the right nor ability to control the activity and where, if properly notified, the ISP suppresses access to the infringing content.  However, those ISPs that possess knowledge of infringing information being hosted on their pages, and with such constructive or actual notice, do not take up the task of disabling access to such content; are not protected under this sub-provision.   Hence, the ‘knowledge’ element becomes material.
• Referral or linking to infringing material (information location tools) [17 USC & 512(d)]-no monetary liability for referring or linking users to an online location that contains infringing material by using information location tools (e.g.: a directory, index, reference, pointer, or hypertext link), provided that the service provider does not have actual knowledge; is not aware of facts or circumstances from which infringing activity is apparent; does not receive a financial benefit; and, if properly notified of the infringing activity, or upon otherwise obtaining knowledge or awareness of the infringement,  expeditiously removes such infringing content.  Thus again, the ‘knowledge’ element is material.  Once in possession of requisite knowledge, through appropriate ‘notice’ the ISP must necessarily ‘take down’ the offending/disparaging/infringing content, to be protected under the safe-harbour provision.

2.4 United States of America (USA) Practice

In the United States of America (USA) where a number of actions relating to copyright infringement on the Internet have been brought with the spread of computer communications, the “ Digital Millennium Copyright Act of 1998” (DMCA)  was enacted in October 1998 as an amendment to the-in-force Copyright Act. Section 512 of DMCA provides rules for limiting liability of Internet Service Providers (ISPs) which, without going into detail here, are safe harbor provisions called “Notice and Takedown” provisions limiting the liability of Internet Service Providers who follow the procedures set forth in the Section. The provisions can be outlined as follows:

• An internet service provider who receives notice of a copyright infringement claim from a copyright owner which meets the statutory requirements must take down works specified as infringing the copyright in question from its Internet site, and at that time, notify the person who posted the information in dispute;
• Should the person who posted the information have any objection to the taking-down of the information, he/she may submit the objection to the Internet service Provider who shall in turn forward it on to the copyright owner;
• Upon the receipt of the objection, the copyright owner may institute court proceedings against the person who posted the information, thereafter notifying the Internet Service Provider. In such an instance, the Internet Service Provider shall continuously keep the information in dispute of the Internet;
• If there is no notice of court proceedings, the Internet Service Provider may re-post the information.

one case[9] the Federal District Court for the Central District of California ruled in favour of defendant eBay, which operates an interactive auction site on the internet, on a copyright In infringement claim. This claim alleged that eBay had infringed on the copyright of plaintiff Hendrickson through eBay’s unauthorized sales of DVDs on its website. The court in this case ruled that eBay was eligible for the protection under the safe harbor provisions set forth in Section 512 (c) of DMCA, that the letter Hendrickson provided to eBay failed to meet the statutory requirements for notice set forth in Section 512(c) (3); and consequently eBay had no duty to take “notice & take down” procedures set forth in the provisions.

The DMCA is divided into five titles: (1) Title 1-WIPO copyright and Performances and Phonograms Treaties Implementation Act; (2) Title-II, online copyright Infringement Liability Limitation; (3) Title-III- Computer Maintenance Composition Assurance Act; (4) Title IV- Miscellaneous provisions relating to the functions of the Copyright Office, “ephemeral recordings”, “webcasting” and “collective bargaining agreements, and (5) Title V- Vessel Hull Design Protection Act

The Digital Millennium Copyright Act (DMCA) contains six exceptions to infringement including educational research, encryption research, protection of minors, reverse engineering, privacy of individuals and security testing. The DCMA added Section 512 specifically to the Copyright Act which brought forth the limitation of liability on the service providers in case of online copyright infringement and assigned rules in case of non-profit educational institutions.[10] It is based on the concept of safe harbor which protects the rights of ISPs, interalia, cases of third party violation. A few sections under the Act have faced criticism for their failure to deal with relevant issues that are meant to curb online piracy. With the rapid growth of technology, it is imperative that laws keep pace with changing needs.

Recently, to safeguard the interests of copyright holders, a bill, namely, the Stop Online Piracy Act (SOPA) was brought to the table. It aims at eliminating all such foreign websites which encourage illegal downloading and infringement of copyrighted material. It also gives a Judge the power to rule on matters pertaining to legitimacy of a website and issue a court order to block the same if required.[11] Representative Lamar Smith, who had introduced the SOPA bill claims that the intent behind this legislation is to prevent people indulging in piracy from generating profits and harnessing the internet of an industry that contributes to almost 60% of US exports, rather than curbing the use of Internet as form of communication.[12]

The opponents of the Act have pointed out certain flaws that might be detrimental. SOPA targets only the website and not web users. In case of any illegitimacy, a website can be struck down by a court order, with no opportunity being provided to the website, like in the case of gradual response. Furthermore, the ISPs are required to create a system in which one can easily identify any such activity that occurs and what is to be noted is that this system will differ for all networks.[13] Lastly, it can be contended that in the course of identifying activity that is unusual there might be deep packet inspection which might conflict with users’ right to privacy.

Also, the USA was a party to the ACTA, an international trade agreement initiated by Japan and USA in 2006 to protect intellectual property by conferring certain rights and corresponding duties on the countries that ratify it. It has been in the pipeline for a long span of time and undergone metamorphosis with different countries giving it their perspective. By 2010 it was brought to public attention and a conference was held in the USA constituting law professors and organisations who expressed their concern with regard to this agreement and requested President USA to put on hold and discussions on it.[14]

• European Union (EU) Practice

The EC Directive on Electronic Commerce, which contain provisions limiting the liability of Internet Service Providers ( Articles 12-15), became effective on July 17, 2000. Such liability may be limited in the case of mere conduit (article 12), cashing (Article 13) and hosting (Article14). Such classifications are essentially the same as those employed in the US in DMCA.

As to hosting services, Internet Service Providers will not be held liable in principle if they meet the following requirements:

• That an Internet Service Provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; and
• That the Internet Service Provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.

Rules of the EU Directive for limiting liability are thus quite simple compared with those of DMCA. However, they apply not only to copyright infringement claims but also to general illegal conduct, trademark infringement, civil liability for acts such as damages due to unfair competition, and criminal liability for acts such as obscenity and defamation. Member states are expected to enact national laws and regulations to establish procedural rules to comply with the Directive. The Directive requires Member States to bring such rules into force before 17 January, 2002.

The European Commission opinioned that the proliferation of IPR infringements posed an ever increasing threat to the sustainable development of the world economy. It is a problem with serious economic and social consequences. In furtherance of this, the European Union brought forth a directive before the Parliament and voiced the need for tougher laws and after exhaustive debates it was recently withdrawn because a large number of the members of the Parliament were not in support of ACTA.

2.6 United Kingdom (UK) Practice

The Digital Economy Act, 2011 came into force in June 2012 and covered subjects that deal with digital encroachment of Intellectual property, namely, copyright infringement, television services, radio services, regulation of the same etc. The Act with respect to copyright involves two major parties- the ISPs and copyright holders. Generally, the holders are companies which own copyrights or deal with protected works of individuals. They work in sync to devise a mechanism in which people downloading material illegally can be brought under the scanner of law. It also extends the powers to take necessary steps required in case of infringement.[15] Initially the Act also granted authority to the Government to censor websites but it was later scrapped.

It is pertinent to note that the Act has covered not only the core area of copyright infringement but also the neighbouring rights that are being affected. India should take note of these laws because such provisions may be necessary at a later stage when the probability of encouraging these issues cannot be ruled out.

• France Practice

The French system of the “graduated response” was an innovative way of tackling this issue. The law was revised within few days of coming into force, bringing in some changes with relation to the functioning of the administrative authority.[16]The scheme was that of a three-strike one, wherein the law gives the offender the opportunity to rectify the error. This mechanism also requires the cooperation of the ISPs because they are in a position to provide information pertaining to the warning given to the offenders. The law ensures that sworn surveyors of collecting societies and other legal bodies have the power to make referrals in case of any infringement that arises with respect to the members of their associations respectively. These referrals were made to HADOPI, the administrative body responsible for the proper functioning of the system.

Although it is very favourable law to the copyright holders, there have been protests from Internet users and net activists from the very beginning. It was felt that the law restricted the access of Internet to individuals who benefitted from it and also that it curtailed freedom of speech and expression also arises. Inter alia, the French Constitutional Bench[17] also questioned the authority of the administrative body to suspend Internet access when the courts were well within their ambit to do so and also when dealing with the point of infringement, it would be difficult to identify the offender as there could be a conflict between the subscriber of the Internet connection and the actual user. This goes against the French constitutional principle of presumption of innocence.[18]

2.8 Spain Practice

In spain, the newly enacted Sinde Law aims to eliminate such illegal activity. Like in United Kingdom, the governmental body, shall have the discretion to bring down any website that permits such transactions and also gives the right holders the power to sue for loss incurred by them.

The target is to complete the process within a span of 10 days in order to ensure that there is decline in the rate of online piracy. There was a lot of opposition by the owners of websites and other companies that were against it, but it has stood the test of time. It is commendable that they have one of the toughest laws in place especially after having been on top of the countries listed for Internet piracy.

• Present Standards and Recent Case Laws

The present law stems from the Netcom reasoning that even though copyright is a strict liability statute, there should be some element of volition of causation, which is lacking where a defendant’s system is merely used to create a copy by the third party.  When it is the subscriber who is directly liable, it is senseless to hold other parties like the ISPs, whose involvement is merely providing internet facilities, liable for the actions of the subscriber.[19]

However, of late, the courts have been going back and forth a lot in reaching a clear decision on ISP liability, especially in light of increase in the number of law suits filed by copyright owners.  In 2012, the appeals court for the 2^nd Circuit in Viacom v You Tube[20], handed down a controversial judgment in favour of Viacom, the English Premier League and others, finding that “any reasonable jury would find that [You Tube] had actual knowledge or awareness of specific infringing activity on its website.”  However, the Court said it was unclear whether You Tube showed ‘wilful blindness’in letting copyrighted videos remain on its website, and thus the case was re-opened to consider whether the ISP was entitled to claim the Section 512 safe –harbour.[21]

The Viacom v You Tube decision was contrary to the opinion handed down by the 9^th Circuit Court of Appeals in December 2011 in UMG v Shelter Capital[22].  UMG owned the copyright licenses to many songs. Despite Shelter Capital Partners’ efforts to check the content of the virtual storage it provided, to ensure that the content did not violate any copyright licences; some of the videos that were uploaded, violated UMG’s copyright licences.  The court in 2011, reasoned first that the two knowledge based exceptions to the DMCA the ‘actual knowledge’ of infringement and the ‘awareness of facts or circumstances form which infringing activity is apparent’ (the ‘red flag’ exception) – both required knowledge of specific infringements, as opposed to generalized knowledge.  Second, the original holding reasoned that since the defendant lacked item-specific knowledge of the infringing videos, it also could not have had the ‘right and ability to control’ the infringing activity, such that defendant could not be disqualified from the DMCA under the Section 512 © (1) (B) ‘financial benefit’ and ‘control’ exception either.[23]

The theory regarding ‘control’ was the exact reasoning the 2^nd Circuit reversed as incorrect when it decided in Viacom.  After this decision, the Ninth Circuit called for additional briefing – leading to its superseding opinion in UMG v Shelter Capita (II)which was handed down on 14 March 2013.  It seems a first of its kind case, where appellate court changed its opinion after having been persuaded by the reasoning in another circuit’s opinion.  The opinion now holds that a service provider has the requisite ‘control’ as long as it has ‘substantial influence’ on the activities of users, irrespective of whether it also has knowledge.  It proposes two ways that this standard can be met: either by having ‘high levels of control over activities by users,’ or by ‘purposeful conduct’.  Therefore, even though the Ninth Circuit finding was based on Veoh’s lack of control by itself, it did give a revised version of the safe harbor standard in Section 512©(1)(B).  When read together with the 2^nd Circuit’s holding in Viacom, the rule then became clear, that when a service provider intentionally induces infringement by its users and subscriber, such ISP shall not be eligible for the DMC’s safe harbor protection.  Another important finding was its articulation of the difference between ‘actual’ knowledge [17 USC & 512(c)(1)(A)(i)] and ‘red flag’ awareness [17 USC & 512(c)(1)(A)(ii)] as the difference between subjective and objective awareness.  The question that remained open was whether awareness of infringement of one owner’s works can also disqualify an ISP from protection for other infringements.

After the UMG II decision however, in April 2013, the district court for the Sothern District of New York again granted a summary judgment in You Tube’s favour.  Judge Louis L Stanton held that YouTube did not have nay ‘actual knowledge’ of any definite infringements and neither was it ‘willfully blind’ to any such specific infringements.  He also held that You Tube did not have the ‘right and ability to control’ infringing activity for the purposes of Section 512©(1)(B), and that YouTube’s conversion of clips for viewing on cell phones etc., is protected by the safe harbour provisions of the DMCA.[24]

Viacom had decided to appeal against this decision to the 2^nd US Circuit Court of Appeals in New York, and oral arguments had been scheduled for 24 March 2014.  However, on 18 March 2014, less than a week before scheduled date of first hearings; it was reported that Google and Viacom had settled the seven year long dispute.  “This settlement reflects the growing collaborative dialogue between our two companies on important opportunities, and we look forward to working more closely together,” Google and Viacome were quoted to have said in a joint statement.  Nonetheless, Judge Stanton’s view that –“YouTube did not have the “right and ability to control” infringing activity because “there is no evidence that YouTube induced its users to submit infringing videos, provided users with detailed instructions about what content to upload or edited their content, prescreened submissions for quality, steered users to infringing videos, or otherwise interacted with infringing users to a point where it might be said to have participated in their activity,’ still continues to shed light on how to gauge the Section 512(c)(1)(B) threshold.

3. Indian Law on ISP Liability for Copyright Infringement
   • Applicable Statutes and Controversy in Interpretation

The old 1957 Copyright Act, enacted prior to the concept of internet, nonetheless provided for the concept of secondary liability for copyright infringement.  These provisions, coupled with the specific ISP liability provisions[25] present in the IT Act, 2000 (as amended in 2008), acted as the basis for the ‘safe harbour’ for ISPs until the IT (Intermediary guidelines) Rules 2011, i.e, 2011 Guidelines were enacted.

It is interesting to note that the governing law applies to ‘intermediaries’, defined under Section 2(w) of the IT Act as “intermediary with respect to any particular electronic message means any person who on behalf of another person receives, stores or transmits that message or provides any service with respect to that message”.  This is an ‘all-encompassing’ definition, wherein telecom service providers, internet service providers, web-hosting service providers, search engines, online payment sites, online auction sites, online market places and cyber cafes etc., would all fall within the scope of the exemption under Section 79 the IT Act.

According to Section 81 of the Act, it had an overriding effect over other acts in force, provided that it did not prevent anyone from exercising their rights under the Copyright Act or Patents Act.  The 2011 Guidelines have a very wide scope, in that, the safe harbor therein extends not only to copyright infringement (to which, incidentally, Section 79 of the It Act does not, by virtue of Proviso to Section 81) but also to all other forms of IP rights infringement, provided that the ISP observes the requisite Section 79 notice and takedown procedures and ‘due-diligence’ [26]as entailed in the guidelines.  The 2011 Guidelines, function in the manner that the intermediaries are required to impose a set of rules and regulations on users that include a prohibition on posting infringing content online.  Any person aggrieved by allegedly infringing content on the internet, is therefore entitled to ask the internet intermediary to take such material down.  However, these guidelines do not provide of the creator of the content to respondent to this complaint.  They do not even provide for the intermediaries to inform the user who posted the content regarding the complaint.  Further, the intermediaries which do not comply with a take-down notice lose the protection of the ‘safe-harbour’ so crated.  Thus, the safe harbor protection available to intermediaries under Section 79, is conditional upon their observing due diligence in accordance with Rule 3 of the 2011 Guidelines.

As has been rightly pointed out by Saikiathat ‘The fact that both Sections 79 and 81 contain non obstante clauses has made it extremely difficult to interpret the two Section harmoniously, to pinpoint which Section supersedes the other, and to understand what the law on the subject is,[27] and it is due to his controversy over applicability of Section 79 to cases of copyright infringement, that there was a move to amend and introduce exceptions within the copyright law itself.[28]

• Judicial Interpretation of the old applicable law and emergence of new statute

The controversy is best illustrated by the two cases filed by Super Cassettes Industries Limited (SCIL) v Yahoo Inc&Anr.[29]andSuper Cassettes Industries Limited (SCIL) v My Space & Another.[30] The Delhi High Court issues notice to Yahoo Inc and its Indian subsidiary Yahoo Web Service (India) Pvt. Ltd on a suit filed by SCIL, owner of the largest Indian music label “ T-Series” for infringement of their copyright caused by unlicensed streaming of SCIL’s copyright work on Yahoo’s portal video.yahoo.com. In the MySpace decision the single judge of Delhi High Court seemed entirely unsympathetic to ISPs and went to the extent of saying that intermediaries should screen all user generated content to check for infringement prior to making the content available online. The court opined thus:

“ Fourthly, if there is any due diligence which has to be exercised in the event of absence of any provision under the Act, the said due diligence must be present at the time of infringement and not when the infringement has already occurred so that the infringement can be prevented at the threshold and not when the same has already occurred…..The post infringement measures like the ones informed by the defendants which are in compliance of US statute may hold good in US due to the legislative measure but the same are not operative in India…. The defendants have sufficient means to modify the work by taking licenses from the users, adding advertisements to the works of the plaintiff. Consequently, the effective means for pre infringement enquires are also necessarily have to be performed by the defendants only…. [para 85 (D)]

This decision seems to have set the trend towards requiring due diligence/ content clearance to be conducted by intermediaries regardless of practical feasibility.[31]

Can the judgment of one country be enforced in another? This is a very critical issue because the judgment without enforcement is meaningless. Some countries work under treaties, as do many nations of Europe providing a mutual framework for enforcing judgments. Many others enforce a foreign judgment based on a variety of criteria, such as whether a foreign judgment violates a domestic policy. Some do not enforce a foreign judgment unless there is a specific treaty with the foreign country articulating the terms of mutual enforcement obligations. If one was forced to go overseas to enforce local judgments, life would become much more difficult and unpredictable. The best solution is that the countries should unanimously resort to WIPO’s online dispute resolution system; whose judgments shall be enforceable and for this the states may enter into a treaty for the purposes of solving jurisdictional issues and enforcement problems.[32]

• The Copyright Amendment Act, 2012 and Provisions on ISP Liability

There are two new provisions, Section 52 (1) (b) and Section 52 (1) (c) of the Copyright Act, 1957, which provide some degree of protection to “transient or incidental” storage of a work or performance. Section 52 (1) (b) allows for “the transient or incidental storage of a work or performance purely in the technical process of electronic transmission or communication to the public.”

Section 52 (1) (c ) allows for “ transient or incidental storage of a work or performance for the purpose of providing electronic links, access or integration, where such links, access or integration has not been expressly prohibited by the rightholder, unless the person responsible is aware of has reasonable  grounds for believing that such storage is of an infringing copy.”

Section 52 (1) (b) and (c) as amended therefore, refer to ‘how’ the storage of content is effected, and ‘why’ the storage of content is effected, respectively. Section 52 (1) (c) thus seems designed to protect intermediaries from secondary infringement and not from acts of primary infringement-exception to copyright infringement will only apply if the intermediary has no good reason to believe that the relevant content is infringing. Section 52 (1) (c) also contains a “notice and take down” which requires taking down infringing content for a period of twenty-one days upon receipt of a complaint.

This ‘safe harbour’ seems structurally similar to that in the DMCA, but intermediaries in India have been given less time in which to take down infringing material if they want to be protected by the safe harbour.[33]Another interesting fact is that though the Intermediary Rules do not contemplate a “re-upload”, upon failure to demonstrate to that the content was in fact infringing, under the harmonious reading of the copyright statute and the Intermediary Rules, it would be possible for an intermediary to re-upload non-infringing content after the completion of the twenty-one day period contemplated by the amended Section 52.

However, unless a judicial interpretation on the new law is available, any attempts at “harmonious construction” of the copyright and the IT regimes as they exist today, is only for academic interests and an intermediary may be found to have committed infringement with reference to forms of intellectual property other than copyright, particularly in light of the prevailing uncertainty relating to the interaction between Sections 79 and 81 of the IT Act.[34]

• Copyright Issues in the Digital Era

Copyright is a set of exclusive rights granted by law to the creators and producers of forms of creative expression such as literary, artistic, musical, sound recording and cinematographic works. These rights bestow on the copyright owner the control over the use of his works like their reproduction and distribution for a limited duration. While the concept of copyright is very ancient, the laws granting these rights are of comparatively recent origin. Their genesis can be traced to the chaotic market conditions in culture industries created by the advancements in technology following the industrial revolution. Laws protecting copyright have been introduced as a response to the widespread commercial exploitation of literary works as a result of technological developments in printing methods[35]. In India too modern copyright law emerged consequent to the spread of printing technology. The vagaries and compulsions of history dragged India into the legal regime of Great Britain for about a hundred years. This had certain advantages so far as copyright protection was concerned.  Great Britain had been one of the founder members of the Berne Convention; its laws on copyright had kept abreast of the international treaties and state of technologies in this area. This naturally ensured that the Indian law was also on par with the same. Thus at the time of its independence, India had a copyright law which was fully compatible with the international treaties on copyright and the technologies in the cultural industries at that time. It is not only the compulsions of a sovereign state to have a law of its own, which is not merely a appendage or an adaptation of the law of another country, but also the felt need resulting from technological developments such as “ new and advanced means of communications like broadcasting, lithography, etc.”[36]Which made enactment of a new legislation in 1957 inevitable. This focus on the need for copyright law harmonizing itself with the state of technology has never shifted. Wheneverneed had arisen for suitability arming the law with provisions necessary for tackling new challenges posed by developments in the technological field, necessary amendments had been carried out in the Act. The influence of new technologies is visible in the amendments made in 1983, 1984 and 1994. For example, the 1983 amendment in Law inserted new sections and definitions in the Act, to take care of Broadcasting Technologies, reprographic technologies and so on. In order to tackle the menace of increased piracy of copyrighted works due to the introduction of new techniques of printing, recording and fixation of broadcast program, amendments were made in the Act in 1984. The situation created by various technological developments that had taken place in the world in the 1980s and early 1990s was a prime reason for the comprehensive amendments in 1994.

While the contours of copyright law has always been drawn by the developments in the technological world, the emergence of digital technologies towards the concluding decades of the twentieth century as the defining paradigms of new age communication raised a whole new set of challenges to copyright regimes. The traditional notions of the basic concepts of copyright such as rights of reproduction and distribution have become inadequate and even irrelevant in the digital era. A host of intangibles have arisen in the world of “property incorporeal”. All works can now be digitalized whether they compromise texts, images, sound or diagrams and once digitalized the various elements such as images are all “equal” and can be merged, transformed, manipulated or mixed to create an endless variety of new works. Earlier rights of reproduction and distribution affected tangible physical copies only of a work. The new technologies brought in non-material reproduction and distribution. Physical reproductions were replaced by digital reproduction. While initially the intellectual property right community got bewildered at these developments, slowly they learnt the tricks of the new game and found out ways to regulate the rights in the new media.

The concerted effort of the international community to respond to the challenges of digital technologies mostly took place under the aegis of World Intellectual Property Organisation (WIPO). This special agency of the United Nations Organisation responsible for the promotion of the protection of intellectual property throughout the world began in 1989 to examine the revisions needed in the multilateral conventions, specifically in the Berne Convention for the protection of literary and artistic works (The Berne Convention, 1886) in the light of new technologies and concluded two new treaties in a Diplomatic conference in December 1996, namely, the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT). These treaties are popularly known as they are intended to address the issues of copyright protection on the internet, the worldwide communication system possible by advancements in digital technologies. The WCT and WPPPT address the issues in three ways, namely:

• By clarifying the existing provisions in the Berne Convention and in the International Convention for the protection of Performers, Producers of Phonograms and Broadcasting Organisations (the Rome Convention, 1961) and in some cases, reaffirming the interpretations already generally adopted.
• Giving new interpretations to the existing provisions widening their scope, and
• Adding new provisions on rights and obligations.

While the negotiations in WIPO had been going on, the Uruguay Round of Multilateral Trade Negotiations had concluded the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 1994. This agreement though covered only two products of new technology, namely, computer software and databases.

The prominent copyright issues in the digital era can be classified into three groups:

• Issues relating to a whole new set of work, namely, computer programs, databases and multimedia works;
• Issues relating to reproduction, distribution and communication to the public of a work through digital media; and
• Issues relating to the management and administration of copyright in the digital environment.

4.1 New Works

Technology had in the past given birth to new forms of creative expressions in the creative arts which were subsequently brought under the purview of copyright protection.  Thus, the invention of photography resulted in ’photographs’, that of analogue technology in the new class of works named ‘phonograms’ and that of ‘cinematography’ in a whole new set of works such as cinematographic films, video films and so on.  The widespread application of digital technologies has also given birth to certain identifiable new works like computer programs, data bases and multimedia works which initially raised many doubts about their coverage under copyright laws. 

4.2 Computer Programs

Computer programs are generally understood as a set of instructions capable of, when incorporated in a machine readable medium, causing a machine having information-processing capabilities to indicate, Perform or achieve a particular function, task or result.[37]

The issue of appropriate intellectual property right regime for protecting computer programs had exercised the international community for quite long.  Arguments were advanced in favour of and against patent regime and copyright regime and even a sui generis system to protect computer software.  Discussions at the Uruguay Round of multilateral Trade Negotiations finally put a seal on these debated when the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) incorporated the provision, “computer programs. Whether in source or object code, shall be protected as literary works under the Berne Convention”[38]. This was subsequently reiterated in WCT when it stated that protection applies to computer programs whatever may be the mode or form of their expression.[39]

Even though it was only n the TRIPS Agreement of 1994 that a clear position emerged about protecting computer programs as literary works under the copyright laws, India’s was one of the early legislations, which had extended copyright protection to computer programs much before that Agreement.  This was in consonance with Berne Convention definition of literary and artistic works as including “every production in the literary, scientific and artistic domain, whatever may be the mode of form of its expression”.[40]  In 1984, an inclusive definition of ‘literary works’ was inserted in the Copyright Act to include computer software.  Subsequently, in 1994 the definition was further clarified to include “computer programs, tables and compilations including computer databases.[41]

In Section 2(ffc) of the Act ‘computer program’ has been defined as “a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result”.  In the case of ‘computer’, the Act gives an inclusive definition, namely, “computer includes any electronic or similar device having information processing capabilities.[42]  These are technology neutral definitions and thus capable of absorbing future developments in digital technologies.

Although the Act categorized ‘computer program’ as being part of the class of literary works, in the matters of rights and infringements it made separate provisions for computer programs.  Thus in section 14 (b), the Act bestows upon computer programs all the rights enjoyed by a literary work and in addition, sale and rental rights. Though an amendment in 1999[43], the Act provided that commercial rental rights will not apply in respect of those computer programs where the program itself is not the essential object of the rental.[44]  This is in accordance with the Article 11 of the TRIPS Agreement.   Since digital technologies are not being used in a wide spectrum of areas affecting daily life such exception is considered appropriate as, otherwise, one may end up paying for technologies that one had no intention of using in the first place. Keeping in view the requirements of the software industry and the need for giving an impetus to development of digital technologies in the country, the 1999 amendment to the Copyright Act also permitted compilation and reverse engineering of a computer program in certain circumstances.[45]

        It is also interesting to note that the Act separately defines the author of a computer-generated work “as the person who causes the work to be created.[46] This removes any doubts about the legal authorship of a computer program where a number of persons are engaged, as is the normal case.

The law taking into account the special features of computer programs as distinct from other literary works, particularly the effect of its use has made the knowing “use” of an infringing copy of a computer program an offence under the Act for which mandatory minimum punishments are prescribed.[47]

4.3 Databases

Another group of works which were affected in a major way by the development of the digital technologies is databases. In the digital context.

“Database” means a collection of independent works, data or other materials arranged in a systematic or methodical way and capable of being individually accessed by electronic or other means.[48]

Manual collection and development of time-consuming processes. Digital technologies made development of database were very cumbersome and time consuming processes.  Digital technologies made development of databases much easier and user friendly than in the past.  Traditionally databases were protected as compilations under literary works.  In a computer database there are two structural parts: the program, which is used to control and manage the data and the data itself.  The program, no doubt, gets protected as literary work.  Doubt, gets protected as literary work.  Doubts persisted among many about protection for the content part, despite the provisions on compilations in the Berne Conventions.  Therefore, the TRIPS Agreement categorically provided that:

Compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such.[49]

The WCT also reaffirmed this position in Article 5.  The crucial element in the above provision is the insistence on the database qualifying as an ‘intellectual creation’ which is, in fact, the fundamental principle of copyright protection.  The database should be the result of an original intellectual effort and should not have been copied from some other work or database.

The norm of ‘originality’ is not prescribed in any copyright treaty and it generally depended on the case law position that is available in a country.  In countries where the courts insisted upon a high level of ‘originality’ for copyright protection, many databases were wanting in ‘originality’ although much investment had been made in the making of it.  This was a major issue in the Feist Publications vs Rural Telephone Service Company case in the USA. The US Supreme Court, while reaffirming that most, although not all commercially significant databases satisfy the ‘originality’ requirement for protection under copyright, emphasized that this protection is ‘necessarily thin”.[50]

Computer databases are specifically covered by the definition of literary works in the Indian Act and thus all original computer databases enjoy protection.  Expending of labour and skill in the cretin is the only criterion that is applied to judge the eligibility of a work for copyright protection and based on that computer databases enjoy protection in India.

The problem posed by the Feist judgment in the USA may not be materially relevant in India because of the liberal interpretation of originality adopted by the Indian courts.  Be that as it may, as more and more databases get created with massive investments and paraller databases on related topics get generated with lots of common material, questions may arise as to the use which can be made of copyright material to establish and maintain a database and on the originality of newly created and constantly changing databases.  Self perpetuating and auto metrically upgrading databases on computer networks may also be leaving question marks on the effectiveness of copyright protection in preventing misappropriations of such data.
One problem that confronted the copyright community during the rup-up to the Diplomatic Conference, which finalized the WCT, was the protection of non original databases.  Preparation of any database in a digital format involved considerable investment, both in financial and physical resources.  But when a database is compiled purely or wholly of non-copyrightable material, the problem of protecting the same arises.[51]

4.4 Multimedia Works

Digital technologies have created works with much more versatility than in the past.  A work may now consist of literary, artistic, musical and dramatic elements and may also include a phonogram and a cinematographic film.[52]  The user can ‘interact’ with the work in a way a past generation could not do.  He can make changes and alterations and even create a new work out an existing one. Multimedia works by their basic premises are works combining different elements, such as text, sound, still visuals and moving images, of different classes of works. The resultant work defies existing classification.  If the rights for all classes of works were the same, then perhaps, this would not have been a major issue.  But the law as it stands in India, distinguishes between different classes of works in the matter of rights.  For example, the rights in a literary work and those in a cinematographic film are different.  There is no rental right in a literary work, whereas there is such a right in cinematographic film.  The authorship may raise another problem, as the criterion of authorship is different between literary, dramatic, musical and artistic works on the other hand.  There is a view that multimedia works being a digital product the classified s computer programs as distinct from literary works in the Copyright Act, this could be a possible solution. However, issues may arise on the retention of separate copyrights in the works incorporated in the multi-media, in terms of section 13 of the Act [53]and the rights of performers[54] in the product.  At present, large number of multimedia works is created by combining pre -existing works.  The problem will get accentuated when more and more multimedia works is an issue, which needs ot be looked into in-depth.

4.5 Right of Reproduction

Digital technologies have brought in a new form of transmission copes of a work.  Traditional transmission of a work was material copy based which could be on paper or tape as in the case of a book or a tape as in the case of a book or a tape or film as in the case of a phonogram or a motion picture.  This has not been replaced by material-less transmission, through computer bytes.

Right of reproduction is the most basic of the copyrights.  It, however, was a problem to define it even in the pre-digital days. The Berne Convention had specifically included a right of reproduction only as late as 1967, In the Stockholm Revision of 1967 a new text of Article 9(1) was inserted, which in the words of Stuart, “is both lapidary and embracing both present and future processes.[55]  This article provides “the exclusive right of authorizing the reproduction of these works in any manner or form.[56]  It is this most basic of copyrights which has posed the maximum difficulties in the digital environment also.  The mute question was whether a digital copying is a reproduction or whether right covers only material reproduction.  This question was settled through an Agreed Statement in WCT that reproduction right fully applies in the digital environment, in particular to the use of works in digital form.  The Agreed Statement further clarified that “the storage of a protected work in digital form in an electronic medium constitutes a reproduction within the meaning of Article 9 of the Berne Convention.[57]

So far there is no problem in recognizing the right of reproduction in digital medium.  The problem arises, however, on the issue of transitory or incidental reproduction that takes place in Internet communication.  When a prospective buyer of a book goes to a bookstore, he can browse through the book deciding on whether to buy or not the book.  In the case of internet this browsing can take place only after a digital reproduction of the book in the Random Access Memory (RAM) of the buyer’s computer.  Whether such a reproduction should be covered under the scope of the right of reproduction?  The WCT did not finally resolve the issue and seem to have left it to the practices to emerge to determine the norms.

In the Indian Copyright Act, digital reproductions are already covered in the cases of literary, dramatic and musical works where the expression ‘reproduction’ includes “the storing of tit in any medium by electronic means”.[58]  The definitions of cinematograph film[59] and sound recording[60] to a great extent seem to take care of digital copying of those works.  However, the artistic works are not covered as the right of reproduction bestowed upon artistic work is only “in any material form.[61]  There is a need for law to address this lacuna and also for clarifying the position in regard to cinematography films and sound recordings to remove any doubts about digital copying of such works being covered by the right to make copies.      

4.6 Rights of Distribution and Communication to the Public

This, again, is an area greatly affected by the digital revolution.  Here, the issues are messier than in the case of right of reproduction. Here, the issues are messier than in the case of right of reproduction. This is because the two fights really get merged in the digital world, as copies are transmitted not materially.  The   Berne Convention had envisaged only traditional models of communication for these rights.  It had not bargained for the online, interactive communication for these rights.  It had not bargained for the online, interactive communication and distribution models.  Therefore, need was felt to protect the interest of copyright owners in the new environment. 

The WCT looked into these issues and decided to extend right of distribution to ‘fixed’ copies and a wide scope of right of communication to the public as a separate one.   As per the WCT, subject to certain provisions of Berne Convention:

 Authors of literary and artistic works shall enjoy exclusive right of authorizing any communication of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access those works from a place and at a time individually chosen by them.[62]

This provision is wide enough to include within its scope interactive communications as well as all kinds of internet communication.  When works are stored in a computer memory, as at a website accessible to the public, at their convenience, that is a communication to the public.

The definition of ‘communication to the public’ in the Indian Copyright Act, Surprisingly, had already been compatible with the above definition in the WCT. It reads:

‘communication to the public’ means making any work amiable for being seen or heard or otherwise enjoyed by the public directly or by any means of display or diffusion other than by issuing copies of such work regardless of whether any member of the public actually sees, hears or otherwise enjoys the work so made available.[63]

The main thrust in both the article in WCT and in the definition quoted above is on the fact of making something available for public access, irrespective of time and place of access to the same by the public.

4.7 Management of Copyright in Digital Environment.

Another field where digital technologies halve brought in revolutionary changes is that of management and administration of copyright.  The new technologies have made the administration and protection of copyright quite difficult.  It has made reproduction, distribution and communication of works easier and within the competence of ordinary individual.  Now copies can be made at an amazing sped with absolute fidelity to the original and transmitted over past distances and dispersed to millions of people in a few minutes or even seconds.  This has opened up the possibilities of wide-spread unauthorized copying and distribution of copyrighted works materially affecting the economic interest of the owners.  When such activities can be done from the privacy and safety of one’s home, law becomes an impotent, mute witness.  The problems created by technologies need to be tackled by technologies.  As Charles Clark put it, “the answer to the machine is the machine”.[64] However, the solutions devised up by technologists need to be protected by law as otherwise those solutions would be modified by counter technologies, with impunity.

Technological solutions were found for the problems posed by te new technologies through access control or copy control mechanisms such as encryption technology or water marking incorporated into works distributed over digital networks with a view to protecting them from illegal exploitations.  However, counter-technologies were developed to defeat those protection technologies.  The copyright community, therefore, felt the need for legal mechanisms to protect against the hacking of technological protections applied to copyrighted products in the digital environment. This resulted in the WCT making it obligatory for member states to:

Provide adequate legal protection and effective legal remedies against the circumvention of effective technologies measures that are used by authors in connection with the exercise of their rights.[65]

As per the Copyright Act knowingly making or possessing nay plate for the purpose of making infringing copies   of copyrighted work is a punishable offence.  The definition of ‘plate’ is very wide in deed. It includes.

Any stereotype or other plate, store, block, mould, matrix transfer, negative duplicating equipment or their device used for or intended to be used for printing or reproducing copies of any work, any matrix or other appliance by which sound recording for the acoustic presentations of the work or are intended to be made.[66]

This definition to a great extent provides protection for the technological measures adopted by a copyright owner.  Digital technologies will have to be used widely for administration of copyright in the digital environment.  Licensing and fee collection may have to be automated.  Efficient functioning of an automated system presupposes prompt registration of any request for or transmission of a work along with all data necessary for transfer of a agreed payments to the appropriate right owners. This will be possible only if certain data like information about rights ownership or license terms, which are necessary for licensing and payment of license fee, are embedded in the work.  This data is classified as “right management information” in the WCT.  The Treaty defined rights management information as:

Information which identifies the work, the author of the work, the owner of any right in the work, or information about the terms and conditions of use of the work, and any numbers or codes that represents such information, when any of these items of information is attached to a copy of a work or appears in connection with the communication of a work to the public.[67]

Any kind of the removal or alteration of any of the above information as well as distribution or communication to the public of copies of work with such removals or alterations will create havoc with the rights management.

Section 52A of the Copyright Act provides of certain information to be displayed on sound recording and cinematographic film.  The information, while definitely part of rights management information, is not adequate for the administration of the rights in the digital environment and further it is limited to two classes of works only.  Also in this case, the onus is on the copyright owner.  Provision needs to be made either in the copyright Act or some other Act making it an offence to remove or alter any rights management information used in a copy righted work.

4.8 Fair Use Provisions

The basic principle of copyright like other intellection property rights is the balance of the interests of the individual creator and that of the society at large.[68]  Therefore, the laws while granting exclusive rights to authors or producers of creative works limit those right in time.  Even during the period of copyright, certain special uses allowed without any specific permission from the copyright owners such as for private, academic, educational, judicial or legislative purposes.

When new interpretations are made on existing provisions and new provisions are added to existing laws of copyright for protecting the rights of owners of copyright, it is but fair to consider the effect of such extensions on the interest of the society, and, wherever necessary to clarify permitted acts.  The WCT provides for such limitations and exceptions subject to the three step test, namely, only n certain special cases that do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interest of the author.  New exceptions and limitations that are appropriate in the digital network environment can also be devised.[69]

A major challenge posed by digital technologies to a user who is a member of the public is to the right to ‘informed decision making’. When works are to be bought through the digital network, the purchaser has a right to view, peruse or at least browse through the work before taking a decision on whether to buy the same or not.  Lawmakers may have to devise methods to ensure this.

Also at issue is the existing provision of the Indian Copyright Act, which permits a fair dealing with a literary, dramatic, musical or artistic work for the purpose of private or academic use.  The issue, however is fraught with serious, almost insurmountable, difficulties.  Most of the fair use provisions are dependent on the distinction between private use and public use.  Law permits fair dealing for private non-commercial use can ordinarily be done only with the permission of the right holder.  This distinction gets eroded in the digital environment where an individual is able to transmit over the Internet a work to millions of users scattered over the entire globe and who may download the same in the privacy of their homes.

Adequate provisions will have to be made to ensure that the expansion of rights of copyright owners to the new digital media does not result in an unreasonable curtailment of the public’s right to access and use cultural resources of humanity as otherwise that may adversely affect cultural and technological progress.

• Infringement of copyright in the digital environment

Law is a response to social challenges. Law while responding, answers such challenges and in the process develops itself. Copyright is the finest example one reaches when delving upon the relationship between law and technology. On the one hand technology was the progenitor of copyright and copyright based industries; on the other hand, every new technology has posed a potential threat to the copyright-based industries. The industry consequently has put every new invention to its advantage in terms of creating newer forms of exploitation of art, widening markets and increasing profits. Digital technology is the latest one in the field at the international scale. The digital Age being the hallmark of the present millennium is a witness to yet another epoch unfurled by the Internet and this junction is, in many ways, a defining moment in the long and chequered history of copyright[70]. The digital technology is a phenomenal impact on copyright works- its creation, dissemination, and protection. Digitization has made it much easier to manipulate, reproduce, and distribute protected works. Digital content can be combined, altered, mixed, and manipulated easily. By enabling the making of perfect copies of copyrighted works for little cost, digital technology threatens to undermine the distribution systems and increase unauthorized use of copyright works[71]. The Internet experience demonstrates that traditional actors in the communications process (information producer, provider, publisher, intermediary user) take on new roles in the digital networked environment. The Internet is structured as an ‘open platform model’ as opposed to the ‘broadcasting model’ of most existing media. On the Internet authors may freely disseminate their works without the intervention of traditional publishers: authors are becoming ‘publishers’. Moreover, digital technology enables users to actively search and manipulate information available on the network: users are becoming ‘authors’. Furthermore, traditional intermediaries, such as university libraries, may take on new roles as information providers: intermediaries are becoming publishers as well. This convergence of roles may eventually affect the existing system of rights allocation in copyright and neighbouring rights legislation[72]. Thus, in a way the Internet has scrambled the beautifully arranged, dogmatically duly characterized and justified picture of copy-related and non-copy related rights under the Berne Convention.[73] Digital interactive transmissions produce a certain hybrid form of making available to an unidentified number of individuals and let them consume the content at any time as they desire.[74]

5.1 Internet piracy:

The term “internet piracy” covers several different ways in which infringing music is distributed or downloaded illegally. Websites such as allofmp3.com host large amount of music but do not have permission to copy it or deliver it over the internet. These sites generally offer music either for free or at very low prices because they do not pay artists or other rights holders for their work.

5.2 P2 P Networks

“Peer to Peer” (P2P) networks facilitate file-sharing directly between individual users allowing distribution of a music file to millions of others. Uploading copyrighted files onto P2P networks without the permission of the right holders is illegal everywhere in the world. P2P network operators have been found liable for copyright infringement in countries around the world.

5.3 BitTorrent

One new development in file-sharing technology is BitTorrent, which was designed to distribute large amounts of data between users without consuming costly server and bandwidth resources.

5.4 Other forms of internet piracy

FTP (or file transfer protocol) sites are one of the ‘traditional’ forms of internet piracy and typically the first place where pirate copies of new recordings appear. Users can make material available on FTP sites enabling music and other files to be downloaded from the ‘server’ computer by thousands of people.

Internet relay chat (IRC) was designed to facilitate communication in discussion forums such as news groups and fan sites but has also become a vehicle for music piracy.

5.5 NEW FORMS OF DIGITAL PIRACY

5.5.1 Local Area Network (LAN) file-sharing

LAN-based file-sharing involves users who are connected via a local area network – typically on a university campus or in a business. With several thousand students on a typical campus, a LAN based file sharing network can easily contain a substantial amount of unlicensed music, movies and other content. In the US, the music and film industries are tackling this issue directly with universities, launching a systematic programme to identify and curtail campus LAN piracy.

5.5.2 Digital Stream Ripping

“Stream ripping” is the process of converting streamed music into a stored file and represents a significant potential threat to record company and music publisher revenues. Stream ripping devices and software allow radio or internet webcasts to be converted into permanent copies of individual songs, each labelled with artist and track information, creating a library that substitutes legitimately purchased music. The user effectively creates a collection of songs in MP3 format from what was a commercial radio broadcast.

5.5.3 Mobile music piracy

Mobile music piracy is emerging as a threat to the legitimate industry. Mobile phones can be used to obtain free music, for example by means of Bluetooth transfers that enable files to be transferred from phone-to-phone and memory card swapping.

Internet Service Providers (ISPs) have a key role to play in substantially reducing online piracy. Most ISPs forbid customers from using the internet for copyright infringing purposes in their terms of service andthreaten suspension or disconnection as a penalty, but it is rare that this clause is actually invoked. IFPI is calling on ISPs to enforce the terms of their contracts and disconnect individuals identified as large volume up loaders of copyrighted music.

6. Remedies against the infringement of copyright

The owner of the copyright has two kinds of machineries available for enforcing the copyright:

• Administrative machinery consisting of custom authorities under the Customs Act, 1961 read with Section 53 of the Copyright Act, 1957
• Judicial machinery which provides civil remedies under Chapter XII (Section 54-62) and criminal remedies under Chapter XIII titled” Offences ( Section 63-70)

6.1 Administrative Machinery: border Measures(Section 53)

One of the major concerns of copyright owners has been the trans-border movement of infringing material. The onus of prevention of this movement has always been on the customs authorities. The custom authorities of respective countries initially had freedom to formulate norms for this purpose. However, the TRIPS Agreement for the first time laid down minimum standards to be followed by member countries in Part III dealing with Article 49-60. Indian is a signatory to TRIPS, therefore, it has complied with the norms laid down therein.

Section 53 provides a remedy available only to prevent the importation into India of copies of a copyright work made outside India, which if made in India would infringe the copyright of the work. The owner of any right or his duly authorized agent as conferred by the Copyright Act, 1957 in respect of any work or any performance embodied in such work may give a notice in writing to the Commissioner of Customs or any other officer authorized in this behalf by the Central Board of Excise and Customs that he is owner of the said right with proof to treat infringing copies of the work as prohibited goods, and that infringing copies of the work are expected to arrive in India at a time and a place specified in the notice. The Commissioner, after scrutiny of the evidence furnished by the owner of the right and after being satisfied treat the same as prohibited goods excluding goods in transit.[75]

The owner of the work deposits such amount as the Commissioner may require as security having regard to likely expenses on demurrage, cost of storage and compensation to the importer in case it is found that the works are not infringing copies.[76]

When any goods treated as prohibited goods have been detained, the custom officer detaining them shall inform the importer as well as the person who gave the notice of the detention of such goods within 48 hours of their detention.[77]

Further, the custom officer shall release the goods, and they shall no longer be treated as prohibited goods, if the person who gave the notice, does not produce any order from a court having jurisdiction as to temporary or permanent disposal of such goods within fourteen days from the date of their detention.[78]

The effect of an order under Section 53 is not as portentous as a notification under Section 11 of the Customs Act. The fundamental difference between both the aforementioned provisions was enunciated by the Supreme Court[79]as the notification under Section 11 of the Customs Act to be quasi legislative whereas the order made under Section 53 of the Copyright Act to be quasi-judicial in nature. The quasi-judicial nature of the order is further enunciated by the provision for an appeal under Section 72 of the Copyright Act against an order made by the Registrar.

The Customs is the Authority responsible for combating piracy at the borders. All imported infringing copies shall be deemed to be goods of which the import has been prohibited or restricted under the Customs Act, and all the provisions of that Act shall have effect accordingly: The confiscated copies shall not vest in the Government but shall be delivered to the owner of the copyright in the work[80].

Any proper Customs officer authorized in this behalf by the Commissioner of Customs may, ex-officio, at any reasonable time, enter any suspected place (permitted under the Customs Act) and inspect the goods kept or stored therein and require the person in charge thereof, to produce for his inspection the accounts maintained and to furnish to him such other information as he may reasonably require for the purpose of ascertaining whether or not such goods have been illegally imported, exported or are likely to be illegally exported.[81]

If the proper officer has reason to believe that any goods are liable to confiscation under the Customs Act, he may seize such goods (including any documents or things which, in his opinion, will be useful for, or relevant to, any proceeding under the  Customs Act), provided that where it is not practicable to seize any such goods, the proper officer may serve on the owner of the goods an order that he shall not remove, part with, or otherwise deal with the goods except with the previous permission of such officer. In this case, the Customs officer shall prepare an inventory of such goods containing such details he may consider relevant to the identity of the goods in any proceedings under the Customs Act and shall make an application to a Magistrate for the purpose of certifying the correctness of the inventory so prepared; or taking, in the presence of the Magistrate, photographs of such goods, and certifying such photographs as true; or allowing to draw representative samples of such goods, in the presence of the Magistrate, and certifying the correctness of any list of samples so drawn. The Magistrate shall, as soon as may be, allow the application. Where no notice in respect of the seized goods is given to the owner of the goods within six months of the seizure, the goods shall be returned to the person from whose possession they were seized if the aforesaid period of six months has not been extended by the Commissioner of Customs for an additional period not exceeding six months.[82]

Prohibited goods, including goods infringing copyright, which are smuggled, improperly imported, attempted to be imported, or attempted to be improperly exported shall be liable to confiscation. Any person responsible for such goods shall be liable to a penalty.[83]

No order confiscating any goods or imposing any penalty on any person shall be made unless the owner of the goods or such person is given a notice in writing informing him of the grounds on which it is proposed to confiscate the goods or to impose a penalty; is given an opportunity of making a representation in writing within such reasonable time as may be specified in the notice against the grounds of confiscation or imposition of penalty mentioned therein; and is given a reasonable opportunity of being heard in the matter , provided that the notice and the representation may, at the request of the person concerned be oral.[84]

Where any person is convicted under the Customs Act for contravention of any of the provisions, thereof, it shall be competent for the court convicting the person to cause the name and place of business or residence of such person, nature of the contravention, the fact that the person has been so convicted and such other particulars as the court may consider to be appropriate in the circumstances of the case, to be published at the expense of such person in such newspapers or in such manner as the court may direct.[85]

In view of the same, the government of India in 2007 had notified the IPR Rules 2007[86] with a view to strengthen the statutory and executive guidelines provided for the protection of intellectual property rights at the borders.

The IPR Rules, 2007, empowers the Custom Authorities to deal with counterfeit and pirated goods at its borders. The rules came into force on 8th May, 2007, the date it was published in the Official Gazette. Further to the enactment of the IPR Rules 2007, The Central Board of Excise and Customs (CBEC) has implemented an IPR Module to facilitate right holders to file IPR notices which was notified to the general public[87].  The registration imposes an administrative duty on the Custom Department to protect the right-holder against violation of his IPR rights.

6.2 Judicial Machinery:

Judicial machinery which provides the civil remedies[88] and criminal remedies.[89]Civil remedies includes such remedies as are normally available to those whose proprietary rights have been invaded. Section 54 specifies that only “owner of copyright” which includes as exclusive licensee can file a suit for civil action. In case of anonymous or pseudonymous literary, dramatic, musical or artistic works, “publisher” is the owner till the literary of any of the author is disclosed.

 6.3 Jurisdiction:

A civil suit is normally instituted by way of filing of a plaint in the District Court/ High Court. Section 62 of the copyright allows a plaintiff resides or carries on business or works for gain and not necessarily where the infringement takes place. The plaintiff may also file an application for interim relief pending trail, which may include an interlocutory injunction, appointment of Court Commissioner/ Receiver to visit the defendant’s premises to take stock or make an inventory of infringing rights of the owner. The court has been liberal in granting injunctions where there has been a prima facie case of piracy or counterfeiting.[90]

Civil remedies can be divided into three categories:

• Injunction
• Damages
• Account for profit

• Injunction:

Issuance of Injunction is always at the discretion of the court, therefore, it cannot be demanded as a matter of right. However, such issuance must be guided by some legal principles which cannot be arbitrary, vague and fanciful. Interlocutory injunctions is granted under Rules 1 and 2 of Order XXXIX of the Civil Procedure Code, 1908.

An injunction is an order of a court requiring a person, corporation, or government entity to stop doing something and refrain from doing that thing in the future. In relatively rare cases, the court may issue a “mandatory injunction”, compelling a person, company, or governmental unit take affirmative action to do something. Injunctions historically are issued, only “when the remedy at law is inadequate”. Injunction is the most important remedy against infringement. Injunction may be interlocutory, granted before trial, or permanent, granted after trial.

Injunction means “a judicial process by which one who is threatening to invade or had invaded the legal or equitable rights of another, is restrained from commencing or continuing such act, or is commanded to restore matters to the position in which they stood previous to the action.”

The infringement or threatened infringement of any IP right results in civil litigation, if the owner of the right so desires. The court may grant an injunction – both temporary and permanent – restraining the infringer from commencing or continuing with the act complained of and award damages, actual or statutory, and such other just and equitable relief. The court is also competent to make a variety of orders dealing with various aspects of enforcement of IP rights such as disposal of the infringing goods outside the channels of commerce or destruction of such goods without compensation, disclosure of the identity of the persons involved in the production and distribution of such goods and channels of their distribution and preservation of relevant evidence.

A person/Company must first have a cause of action before they can apply for an injunction. This is a claim for damages (money) where there has been loss (financial or property) or damage (to people or property) caused by an identifiable person/group. It is commonly called “suing” someone. There are always two or more parties The Plaintiff who is suing, and the Defendant(s) who are being sued. A claim has to be proved on the balance of probabilities (civil burden of proof) rather than beyond reasonable doubt (criminal burden of proof) – i.e. much easier to prove.

An injunction is an order of the court restraining someone from doing something or making them do something. There are no set formulae for injunctions so they can be used in many different ways.

An injunction can be made in the High Court or the County Court and it can be made where there is great urgency without giving any notice to the other party this is called an ex-parte injunction

To make an injunction, the court must be satisfied that:-

1. There is a serious issue to be tried.
2. That damages would not be adequate

6.3.2 Interlocutory Injunction:

The most useful and widely used preliminary remedy is the interlocutory or interim injunction, the main purpose of which is usually described as being to preserve the status quo until the hearing of the main action. Although preserving the status quo as at the time of making an application is usually the most appropriate order, this is not the main concern of the interlocutory injunction. The primary matter with which the court is concerned in granting an interlocutory injunction is the maintenance of a position that will most easily enable justice to be done when the final determination is made. Thus, a court will sometimes order that an earlier position be restored, or that the parties arrange their affairs in some other way that is more in accordance with the requirements of justice.

In an increasing number of cases interlocutory injunctions are not sufficient to protect intellectual property rights against the threat of continuing infringement. This is often because the evidence needed to sustain an application for both interim and final relief is not readily available and will not become available through the usual processes of discovery. In such a case the plaintiff will be unlikely to obtain an interim injunction because he will not have the necessary evidence. Sometimes the defendant will remove or destroy the infringing material. In recent years a speedy and effective means of obtaining and preserving such evidence has been developed by courts in the United Kingdom. The relief granted is an ex parte order for entry and inspection of premises and removal of evidence. These orders are known as Anton Pillar orders, and may be a necessary step before an interlocutory injunction can be obtained.

Similarly, the collection of evidence and even a final judgment in favor of a plaintiff may be to no avail if the defendant has no assets which can be used to fund any damages ordered. This is a serious problem given the increasing resourcefulness of those attempting to avoid their obligations, the ease with which money can be moved from one country to another and advances in technology. In order to address this problem the courts of common law countries have formulated and developed the Mareva injunction which operates to prevent defendants from removing assets from the jurisdiction or from disposing or dealing with them within the jurisdiction in such a way as to frustrate any judgment that may be entered against them.[91]An interlocutory injunction shall not be granted:

• Where the defendant might suffer irreparable injury; or
• Where passing an order against the defendant to keep an account can protect the plaintiff’s interest;
• Where a bonafide defence of fair dealing has been pleaded;
• If the plaintiff has been guilty of undue delay in approaching the ccurt, or his conduct amounted to acquiescence in the infringement or if there is a substantial doubt as to the plaintiff’s right to succeed.

The Delhi High Court in Penguin Book Ltd. V M/s India Book Distributors[92] and the Bombay High Court in N.T. Ragunathan v All India Reporter[93] while following the English principle laid down that since most of copyright consist of a continuous process of successive infringing acts, injunction is not only the most important but also the only effective remedy.

Most infringements of copyrights consist of a continuous process of successive infringing acts such as importation of infringing copies. Injunction is, therefore, the only effective remedy. This is always in the discretion of the court and the court has to weigh the possible damage to the plaintiff if the injunction is not granted against the possible damage to the defendant if it is granted. Thus once the infringement and its continuance is proved the plaintiff will usually be entitled to an injunction, but the injunction would not be granted if the damage caused to the defendants by granting the injunction be out of all proportion to the seriousness of the infringement or to the possible damage to the plaintiff. In actions for infringement of copyright damages are often not an adequate remedy since there are difficulties in both ascertaining and qualifying such damage as injury to the plaintiff’s property, business and goodwill.[94]

In order to secure immediate protection from a threatened infringement or from the continuance of an infringement, a plaintiff may apply for interlocutory injunction pending the trial of the action. An application for interlocutory injunction is made along with the plaint supported by affidavit evidence. Very often an ex parte injunction is also sought, i.e. temporary injunction granted for a short period before the defendant has notice of the suit or is heard. An appellate court may vary or set aside an ex parte interim order.[95]

6.3.3Ex parte Injunction:

An injunction can be made in the High Court or the County Court and it can be made where there is great urgency without giving any notice to the other party this is called an ex-parte injunction. Ex parte literally means one-sided. Ex parte injunctions are appropriate only when the threatened harm is so immediate and so severe that even giving the other party notice of the application for the injunction and an opportunity to be heard in opposition is not practical. A party seeking the entry of an ex parte order (without the involvement of or even notification to the other party most directly affected) has an exceedingly heavy burden in convincing a judge the emergency warrants such extreme action. By definition, there will not be even minimal due process afforded to the affected party; therefore, the courts’ rules require certain safeguards to protect it.

6.3.4Mandatory Injunction:

The court has also power to grant, mandatory injunction pending trial of a suit. In the case of grant of a mandatory interlocutory injunction the principles governing the grant of prohibitory injunction on interlocutory applications are not relevant. But since a mandatory injunction is more drastic in its effect than a prohibitory injunction, the case has to be unusually strong and clear for granting such an injunction at the interlocutory stage, even if it is sought to enforce a contractual obligation.

6.3.5Permanent Injunction:

If the plaintiff succeeds at the trial he will be entitled to a permanent injunction. This injunction will be operative only during the unexpired term of the copyright.

A permanent prohibitory injunction passed under Order 1, Rule 8 of Civil Procedure Code is judgementin rem and not in persona and everybody intending to violate the order of injunction will be bound by the decree and he will be punished for disobedience of the order.[96]

6.3.6Anton Pillar Orders

This is an ex-parte order authorising entry of a Defendant’s premises and the inspection of documents or items on those premises. Although it is like a search warrant it cannot be used to enter the Defendant’s premises without their permission. If permission is refused they may be committed to prison for contempt of court. It is only available in exceptional and emergency cases where there is clear evidence that the Defendant has in their possession incriminating documents or property and clear evidence that there is a real possibility that they may destroy such material before any application on notice can be made. The relief granted is an ex parte order for entry and inspection of premises and removal of evidence. These orders are known as Anton Pillar orders, and may be a necessary step before an interlocutory injunction can be obtained.

Foremost among the new developments which have occurred in preliminary remedies has been the so-called Anton Piller order. The Anton Piller order, named after the case in which the English Court of Appeal sanctioned its use[97] , is an order granted by the court permitting the inspection of premises on which it is believed some activity is being carried on which infringes the copyright of the plaintiff. The order has a number of features which make it a particularly appropriate remedy in the context of piracy:

1. First, the order will be granted ex parte, that is, on the application and in the presence alone of the copyright owner, without prior warning being given to the defendant. The essence of the order is thus that it takes the defendant by surprise, and precludes the defendant from destroying or removing vital evidence.
2. Secondly, the terms on which the order is granted enable the copyright owner to inspect the premises of the defendant, and all documents (including business information, such as bills, invoices, sources of supply and customer lists) relating to the alleged infringement. By virtue of these terms, the copyright owner is given the means whereby he may be able to establish the source of supply of pirated works, and the extent of sales which have taken place, which will assist in turn in establishing the amount of damages to which he may be entitled.
3. Thirdly, the order for inspection will often be accompanied by an injunction restraining the defendant from altering or removing in any way articles or documents referred to in the order for inspection.

The Anton Pillar order can undoubtedly constitute an important weapon in the armory against piracy. Since it is granted on an ex parte basis, however, care needs to be exercised to ensure that the rights of persons against whom it is granted, and whose actions have not yet been judged, are adequately protected. Two safeguards, in particular, which have been required by courts in jurisdictions where it is available, should be noted:

1. First, it will only be granted where it is essential that the plaintiff should have inspection so that justice can be done between the parties. In order to meet this criterion, usually a copyright owner will have to prove that there is clear evidence that the defendants have in their possession incriminating documents or material; that the circumstances are such that there is a real possibility or grave danger that the incriminating materials will be destroyed or hidden if the defendant is forewarned; and that the potential or actual damage to the plaintiff as a result of the defendant’s alleged wrongdoings is very serious.
2. The second safeguard which is often required is proper respect for the defendant’s rights in the execution of the order. In this respect, it may be required that, in executing the order, a copyright owner be attended by his lawyer, give the defendant adequate opportunity of considering the order, and not force entry into the defendant’s premises against his will. Of course, if a defendant were to refuse entry into his premises, this would cause extremely adverse inferences to be drawn against him at the subsequent trial.[98]

The rules governing discovery and inspection contained in Order 11 of the Code of Civil Procedure apply to copyright cases also.

The Division Bench of the Delhi High Court in Autodesk Inc v A.V.T. Shankardass[99] issued guidelines for the issue of Anton Pillar Order in case of software infringement to prevent abuse of this order.

6.3.7The Mareva Injunction:

The Mareva injunction is an interim injunction aimed at ‘freezing’ the defendant’s assets until the conclusion of the hearing. The purpose of such injunction is to ensure that if a plaintiff succeeds in a case, all property in the jurisdiction will remain intact so that the plaintiff would be able to execute the judgment. The Mareva injunction was first introduced into the Israeli legal system from its English counterpart. Recently, the Civil Procedure Regulations (Rules of Court) were amended in a way enabling the court to enjoin the defendant from parting with any assets and also to appoint a receiver whose functions are, inter alia, to gather up the defendant’s assets and protect them. An application for a Mareva injunction is filed in an identical manner to that used for filing an ex parte application for interlocutory injunction. Usually there is no hearing and the court’s decision is based solely on the application itself and its supporting affidavit. A decision is granted usually no later than one or two days from filing of the application.

6.4 Damages or account of profits

6.4.1 Conversion:

All infringing copies of any work in which copyright subsists are deemed to be the property of the owner of the copyright who may take proceedings for the recovery of possession thereof or in respect of the conversion thereof.[100]Similarly all plates used or intended to be used for the production of such infringing copies would also belong to the owner of the copyright.

Where however the defendant proves that he was not aware and had no reasonable grounds for believing that copyright subsists in the work or that he had reasonable grounds to believe that such copies or plates do not involve infringement of the copyright in any work, the owner of the copyright will not be entitled to any remedy in respect of the conversion of any infringing copies.[101]

However, in respect of the construction of a building or other structure which infringes or which, if completed, would infringe the copyright in some other work (e.g. an architect’s plan of the building or structure) the owner of the copyright cannot claim ownership for the infringing building or structure or entitled to obtain conversion damages-Section 59(2) – his remedy is only in claiming damages or an account of profits.

6.4.2 Damages:

There are two types of damages available to the owner of a copyright-

(i)              One under Section 55 for infringement, and

(ii)             Other under Section 58 for conversion

The purpose of damages is to compensate the plaintiff for the loss, which he has suffered as a result of the defendant’s breach. A plaintiff is not entitled to calculate damages in both ways, both in his loss and on the basis of the profits of the defendant. Damages represent the loss. The loss may be ascertained either by the profit which the plaintiff could have made or which the defendant had actually made on the sale of the infringing copies but the loss cannot be calculated by including both.[102] If infringement is established, damages are presumed. Where a legal right is infringed, nominal damages are always awarded whether or not actual damage was proved.

6.5 Account of profit:

The remedy of account of profits is given in order to prevent the unjust enrichment of the defendant. Under the Copyright Act, 1957 a successful plaintiff cannot claim both damages and account of profits.[103]

The question of account of profit will depend upon the quantum copied. The remedies of damages and account of profit are remedies in the alternative although Section 55 of the Copyright Act, 1957 does not say so expressly. An account of profits requires laborious process of inspecting the books of accounts, all of which may not even be available. It may therefore be advisable for the plaintiff who opts for an account of profits to accept liquidated damages.[104] If the plaintiff opts for an account of profits he is entitled to an inspection of the books of accounts.

6.6 Criminal Machinery:

The Copyright Act provides criminal remedies also against infringement of copyright. Imprisonment of the accused or imposition of fine or both, seizure and delivery-up of all infringing copies to the owner of copyright are the criminal remedies. Here, mensreain the form of knowledge of the accused is an essential element to constitute the offence of infringement for criminal prosecution. In S.R. Upadhyaya v G.C. Nepali[105], he court held that there is a presumption in favour of exercise of knowledge if a person publishes something in which he knows that he neither has a copyright nor is right to publish given to him by the copyright owner.

Chapter XIII of the Act deals with the offences relating to infringement of copyright. Section 63 creates offences and section 63 to 63 B deals with various penalties and procedures to be followed in combating the offences. The offence of Section 63 is a cognizable and non-bailable and no court inferior to that of a Metropolitan Magistrate or a judicial Magistrate of the First Class can try, any offence under the Act.

A police officer not below the rank of sub- inspector of police can investigate the offence relating to infringement of copyright and seize the infringing goods.[106]

6.7 Technological Protection Measures (TPM):

The new section 65A, introduced for protection of technological protection measures (TPM) used by a copyright owner to protect his rights on the work, makes circumvention of it a criminal offence punishable with imprisonment.

As a result, any person who circumvents an effective technological measure applied for the protection of any of the rights, with the intention of infringing such rights, shall be punishable with imprisonment, which may extend to two years and shall also be liable to fine. The rationale is to prevent the possibility of high rate infringement (digital piracy) in the digital media.

This amendment also clarifies the problem of circumvention impacting the public interest on access to work facilitated by the copyright laws. Sub-section (2) permits circumvention for specified uses.

6.8 Digital Rights Management Information

Section 65B has been introduced to provide protection of rights management information, which has been defined under clause (xa) of section 2.

This amendment is intended to prevent the removal of the rights management information without authority and distributing any work, fixed performance or phonogram, after removal of rights management information. As a result, any unauthorized and intentional removal or alteration of any rights management information isa criminal offence punishable with imprisonment, which may extend to two years and fine. The rationale of the protection emanates from the practice in the digital world of managing the rights through online contracts governing the terms and conditions of use.

The protection of technological measures and rights management information were introduced in WCT and WPPT as effective measures to prevent infringement of copyright in digital environment. The introduction of Sections 65A and 65B is expected to help the film, music and publishing industry in fighting piracy.

• Judicial Pronouncements in India

Whether or not the use of the Internet as a platform for commerce and, more importantly, communication, should be regulated. An integral part of this debate revolves around the role and liability of intermediaries, ranging from network service providers and search engines to online marketplaces and online payment sites. The idea of regulating the Internet, whether by way of regulating actual communication itself or regulating service providers such as intermediaries, can be very controversial when discussed in light of ‘freedom of speech and expression, which is one of the fundamental rights available to citizens in a democratic state. In the United States for example, the First Amendment to the Constitution[107] provides, among other things, that the State cannot make any law that abridges the freedom of speech or the freedom of the press. This results in an almost uninhibited right to the freedom of speech in the US. In India on the other hand, Article 19(2) of the Constitution[108] provides that every citizen of the country shall have the right to freedom of speech subject to certain reasonable restrictions imposed by the State on the basis of various factors, ranging from integrity of India, security, friendly relations with foreign States, public order, decency or morality. In both the US and India, we see that the manner in which communication and expression on the Internet is regulated flows directly from the ideas and jurisprudence surrounding the constitutional right to free speech.

While almost all persons and entities who contribute to any content or communication on the Internet are affected by policies relating to freedom of expression on the Internet, the role played by intermediaries who facilitate the creation and transmission of content by third parties or provide Internet-based services to third parties[109] is of particular interest. The Importance of Internet Intermediaries In India, intermediaries are governed under the IT Act, which defines an intermediary as “any person who on behalf of another person receives, stores, or transmits that electronic record or provides any service with respect to that record”. This definition is very wide and covers a diverse set of service providers, ranging from Internet service providers, search engines, web hosting service providers, to e-commerce platforms or even social media platforms. While services provided by Internet intermediaries have become part of our everyday lives – whether it’s shopping or tweeting – the Internet also brings with it new challenges. It affords users a sense of anonymity that is absent in physical interactions. This anonymity may allow users to abuse online platforms and perform illegal activities; intermediaries, with their immediate access to such users, sometimes become the ‘one-stop shop’ for detection of such abuse as well as law enforcement. This situation throws up many important questions such as whether intermediaries should be treated as mere messengers who do not have control over the content they transmit (and accordingly have no liability) or should they assume greater sentinel roles. A natural corollary to this question is the discussion on the effect that greater intermediary control may have on the independence of the Internet and freedom of expression. One point that emerges quite clearly in most jurisdictions is that some regulation is necessary in order to provide a framework in which intermediaries and law enforcement authorities can function independently and cooperate with each other.

• Regulation in India

7.1.AThe IT Act and Intermediary Guidelines:

The Indian government grants intermediaries a conditional safe harbour under the IT Act and The Information Technology (Intermediaries Guidelines) Rules 2011 (“Intermediary Law”). This is similar to the safe harbour rules of the European Union. Section 79 of the IT Act provides that an intermediary is not liable for any third-party content hosted/made available through such intermediary when:

1. the function of the intermediary is limited to providing access to the system; or
2. the intermediary does not initiate, select the receiver of or select/ modify the information contained in a transmission; and
3. the intermediary observes due diligence and abides by other guidelines prescribed by the Government.

The 2011 Intermediary Law provides a diligence framework to be followed by intermediaries in order to avail of the exemption under Section 79. Various procedures have been prescribed which need to be observed by an intermediary, such as (i) the need to inform the users of the computer resource not to transmit any information that among other things is harmful, obscene or defamatory; (ii) the requirement to “act within 36 hours” of receiving knowledge of the transmission of any prohibited information; and (iii) the requirement to disable information that is contradictory to the Intermediary Law. The requirement ‘to act’ caused much speculation in the industry as it was not clear what constituted appropriate action. The Government published a clarification in March 2013 which stated that the intermediary is required to respond to or acknowledge a complaint regarding any prohibited information and “initiate appropriate action as per law” within 36 hours of receiving the grievance/complaint. It is not clear whether the intermediary is required to initiate action under the domestic law of the country in which the intermediary is located or if the intermediary is required to initiate action under any foreign laws; the most plausible assumption could be that the clarification refers to Indian law since the IT Act itself is an Indian legislation.

7.1.BIntermediaries and Indian Copyright Law:

Apart from the Intermediary Law, the provisions of the Copyright Act 1957 (“Copyright Act”) provide a notice and take-down mechanism similar to the Digital Millennium Copyright Act in the US (“DMCA”). The IT Act provides overarching regulations that may override any other laws in force; however, these provisions cannot restrict the rights of the owner under the Copyright Act and the Indian Patents Act, 1970.[110] The Copyright Act provides that any “transient or incidental storage of a work or performance for the purpose of providing electronic links, access or integration, where such links, access or integration has not been expressly prohibited by the right holder” [111] is not an act of infringement of copyright unless the person responsible for such storage (i.e. an intermediary) is aware or has reasonable grounds for believing that the work/performance stored is an infringing copy. The Copyright Act also provides that if the intermediary responsible for such storage has received a written complaint from the owner of copyright in the work alleging that such storage is an infringement of the work, the intermediary should stop facilitating access to the work for a period of 21 days or until he receives an order from a competent court regarding the matter. The case of Super Cassettes Industries Ltd. v. Myspace Inc. and Anr,[112] although pending final judgment, is already considered a landmark example of the application of copyright law to hold an intermediary liable for infringement. In this case, the Court found Myspace guilty of primary copyright infringement for allowing the viewing and sharing of images and music over which Super Cassettes claimed ownership. Though Myspace argued that they are an intermediary within the meaning of the IT Act and are thus exempted from liability for third-party activities on the website, the court did not agree with this argument on various grounds, finding that Section 79 of the IT Act (which provides safe harbours) has to be read in conjunction with Section 81 of the IT Act which gives precedence to the Indian Copyright Act. This case is pending final determination.

7.2Discussion on issues faced by intermediaries under the present regime:

Despite the efforts of the Indian government to introduce a balanced regime for the regulation of intermediaries in India, intermediaries and users alike have found a number of problems with the law in its current form:

1. Lack of clarity in the Intermediary Law:

The diligence framework prescribed under the Intermediary Law is not absolutely clear on aspects such as (i) the kind of content that is not permitted and (ii) the kind of action that an intermediary needs to take if such content is made available online. This has in turn led to situations in which intermediaries may engage in self/private censorship in order to avoid any liability, therefore seemingly curtailing freedom of expression.

2. Increasing number of take-down notices and their impact:

 The transparency report released earlier this year by Google shows that there had been a 90 percent increase in the number of takedown requests by government authorities in India in the year 2012.[113] A study conducted by the Center for Internet and Society, India, points to a “chilling effect” on free speech on the Internet as a result of providing private intermediaries with the power to decide whether or not certain content should be made available on the Internet.[114] This study shows that where intermediaries were given take-down notices, a number of intermediaries simply took down the relevant content even where such content would not fall into any of the prohibited categories under the Intermediary Law, in order to avoid any liability. As a result of the ambiguity in the law and the increasing number of take-down requests, ‘mouthshut.com’, one of India’s leading online platforms for consumer reviews, has filed a petition before the Supreme Court of India challenging the constitutionality of the Intermediary Law, and alleging that it violates the fundamental right to freedom of speech granted under the Constitution of India. This case is yet to be taken up by the Court and the results of the same remain to be seen.[115]

7.3 Long arm jurisdiction of Indian law:

The IT Act is applicable to the territory of India and to any offence or contravention (of the IT Act) committed outside India by any person if the contravention involved a computer located in India.[116] This implies that any intermediary that is operating in any part of the world would need to implement the requirements under the Intermediary Law and be liable under the IT Act, if the foreign intermediary uses any computer resources or systems located in India. Where the foreign intermediary has no computer resources or systems located in India, there is still a possibility that action may be taken against the intermediary under copyright laws or tort law. This may raise a number of complications regarding whether the Indian courts have jurisdiction to try such a matter and whether any order from an Indian court may be enforceable against the foreign intermediary. This issue was highlighted in the case of Super Cassettes Industries Ltd. v. Myspace Inc. and Anr,[117] (discussed earlier). Myspace was held liable for infringement of copyright in India, despite the fact that Myspace operates primarily out of the US and has no physical presence in India. This case is pending final determination. Approach Seen under US Law in the US, liability of intermediaries in relation to third-party content is governed by two separate legislations – Section 230 of the Communications Decency Act and Section 512 of the Digital Millennium Copyright Act (“DMCA”). The Communications Decency Act provides any ‘interactive computer service’ provider or user broad immunity for any third-party content.[118] It not only states that such providers and users shall not be treated as the publisher/ speaker of such content or information, but also provides a “Good Samaritan” protection, where providers/users of interactive computer services shall not be liable for taking any action to screen or block any content they deem offensive. The case of Doe v. Myspace[119] is a classic example of the extensive immunity provided to intermediaries under US law. Myspace was sued for negligence on the basis that it failed to implement proper safety measures to prevent minors from lying about their age and accessing Myspace profiles through which they could communicate with potential sexual predators. The US courts held that Myspace could not be held liable for any communications published by third parties and dismissed the case of negligence against Myspace. While the Communications Decency Act provides intermediaries with broad immunity, the DMCA adopts the ‘safe harbour’ approach as used in India in order to provide a conditional safe harbour for intermediaries for claims of copyright infringement. Moreover, the DMCA specifically provides a ‘notice and take-down’ process, by which the owner of a copyrighted work can inform an intermediary of any infringing content in the form and manner provided under the DMCA.

In direct contrast to the Super Cassettes Industries Ltd. v. Myspace Inc. and Anrcase cited above, the recent judgment by the US District and Second Circuit courts in the case of Viacom Int’l Inc. v. YouTube, Inc.,[120]is a prime example of the extent of protection granted to intermediaries under US law. In this case, the courts held that in order to hold an intermediary liable for user-generated content that infringes copyright, the copyright owner needs to specifically show that the intermediary had specific knowledge of instances of infringement. In addition, the court also suggested that the intermediary may be held liable if it had exerted “substantial influence” on the infringing activities of users. However, the entire burden of proof to show such knowledge or influence exists lies on the copyright owner. In this case, Viacom was unable to prove YouTube had actual knowledge or awareness of specific infringing activity on its website and the courts held that YouTube could not be held guilty of copyright infringement.

The Indian government has attempted to provide a balanced framework for the protection of the interests of various intermediaries on the Internet, as well as the rights of the users of services provided by these intermediaries. However the laws are still in a nascent stage of development. Holding intermediaries liable for user-generated content could lead to an environment where intermediaries restrict the availability of content in order to avoid liability. This idea of self/ privatized censorship has led to widespread debate on whether or not misuse of the current system can lead to restrictions on freedom of speech and expression on the Internet. It will be interesting to see how the Government deals with the task of securing individual freedoms and ensuring compliance with laws.

• India’s Initiatives on infringement in the digital Era

The statistical data and the object of the initiatives in India indicate that the nature of the infringements is wide-ranging. Statistics indicate that the entertainment industry in India is losing revenue of about 80% owing to physical and online piracy. India is among top 10 countries which account for P2P and BitTorrent activities. Although piracy in India is still dominated by street side vendors and small shops selling pirated products, the rising number of broadband connections in India is an alarming indication that implies a rise in digital piracy, in addition to what is currently prevalent. Another factor to be taken into consideration is the loss incurred by other countries because of physical and digital piracy in India. The initiatives taken by India to curb the digital piracy whether of physical or digital are as under:

1. The comprehensive amendments effected in the Copyright Act made it a very potent tool to fight piracy. This has been done through simplification of certain concepts and rights, enhancement of penal provisions and provision for collective administration.
2. The Copyright Act gives the government powers to extend copyright to foreign works. The Government has done this through a separate order, namely, the International Copyright Order. This order extends protection to the works of those countries who are members of the international conventions of which India is a member. In extending the application of provisions of the Act to foreign work as if they are Indian works, the principle of National Treatment has been adopted except on the matter of term of protection in accordance with the principles laid down in the Berne Convention.
3. For checking piracy effectively, the various Amendments enhanced the punishment for copyright infringement. This was done to have a deterrent effect on the incidence of piracy. Punishment for copyright infringement has been made mandatory. Without warrant, a police officer of the rank of Sub-Inspector has been empowered to seize infringing copies as well as plates and duplicating and other equipments used for making infringing copies. After due process of law such infringing copies as well as the duplicating equipments and plates used for making the infringing copies become the property of copyright owner.
4. Copyright Infringement has also been declared as an economic offence so that the law of limitation (in Period) will not be applicable to copyright offence.
5. To distinguish authorized, genuine copies from unauthorized ones, the producers of records and video films are required to display information about copyright ownership and video films are required to display information about copyright ownership and other relevant particulars in the sound recording, video films and containers thereof (Rights Management Information System).
6. Copyright infringement is a crime and like all crimes it is the police force, which has the primary responsibility to nab the culprits. Special Cells for monitoring the enforcement of copyright have been set up at Police Headquarters in the States. Many industries, particularly music and computer software industries have set up their own anti-piracy cells to combat piracy with the help of police authorities. Several raids have been conducted and there have been some notable seizures of audio and videocassettes and software. Many industries issue public advertisements to warn the people against buying pirated products. Government of India used to sensitize the people on copyright issues through advertisement on World Copyright Day i.e. May 24 of every year.
7. The Government of India have constituted a Copyright Enforcement Advisory Council (CEAC) to review the progress of enforcement of the Copyright Act, 1957 periodically and to advise the government regarding measures- both on the policy front and on the implementation front, for improving the enforcement of the Act. Representatives of the leading copyright agencies and organizations are among its members besides representatives of Central as well as State governments, enforcement personnel, and copyright experts. The CEAC meets bi-annually.
8. Public awareness and vigilance are the best guarantee for enforcement of copyright laws. The government, therefore, in co-operation with copyright organizations and educational institutions, organizes seminars and workshops in different parts of the country regularly to educate the people about copyright matters. Training programmes are also organized for enforcement personnel like the police. Programmes are also organized for encouraging study of copyright in the educational curriculum. The World Intellectual Property Organization (WIPO) has assisted in the organization of many of these seminars and workshops, under its development co-operation programme. The Indian Government has launched a Scheme known as Scheme of Copyright and related rights to sensitize and to spread awareness regarding IP rights and copyrights. The government gives liberal financial assistance to NGOs, institutions, universities, colleges, police and enforcement personnels and its training centres to organize seminars, workshops, conferences, training programmes to sensitize and to spread awareness regarding IP rights and copyrights.
9. In order to have an effective focus on enforcement of copyright laws, the Central Government has requested the State Governments to set up Special Cells in their Police Headquarters. These cells are to be manned by Senior Officers, usually of the rank of an Inspector General of Police. Most of the States have set up such cells. Thus, there now exists a single window in state police apparatus to handle copyright piracy. In order to have proper appreciation of copyright law in the State Governments for effectively contribution to the development of copyright industry, the State Government has appointed to appoint Nodal Officers in the State administration. Most of the States have designated senior officers for this purpose.
10. Apart from this, in order to tackle inter-state offences or offences, which the state governments feel require intensive investigation, the Central Bureau of Investigation (CBI) has been empowered to handle copyright offences. Also, the copyright law and its enforcement are now an integral part of the professional training of officers inducted to senior levels in government during their training period. The LalBahadurShastri National Academy of Administration, Mussourie, The Sardar Patel National Academy, Hyderabad and National Academy of Customs, Central Excise and Narcotics, Faridabad organize special programmes to train not only new recruits but also in- service officers on copyright law. The anti-piracy newsletter of Indian Music Industry (IMI) is a refreshing reminder every month of this success story of how effective coordination between industries and government results in better enforcement.
11. In order to promote research in Intellectual Property (IP) matter, the Government of India has established 20 IPR chairs in different universities/IITs/IIMs for development and growth of IPR education, research and training under copyright and related rights Scheme. The objectives of the IPR Chairs are as under:

• Capacity creation in IP practice, education, training and research through a multi-disciplinary approach
• To develop suitable academic programmes in IP Education, Research and Training
• To provide a framework for analyzing the impact of Intellectual Property in development initiatives in the country
• Dissemination of IP knowledge and information through outreach programmes

12. By way of amendment in the Indian Copyright Act, the provisions of collective administration of right through copyright societies have been incorporated to promote the interest of the copyright owners in protecting their rights collectively rather than safeguarding them on an individual basis. Collective administration also enhances the convenience of users in that they can obtain the licences for using a large number of works from a single source instead of approaching thousands of copyright owners.
13. The Kerala Anti-piracy Cell is a commendable initiative by the State Government where the cell functions under the state’s CBCID ( Crime Branch Crime Investigation Department) as  a central unit to coordinate collection of intelligence, creation of data bank, coordination of investigation and direct investigation of crucial crimes to trace out their origin and also web distribution. The object was to curb the menace of piracy in the Malayalam film industry which was incurring heavy losses owing to tax evasion and royalties. The cell has been successful in detecting 77 cases throughout the state as on date. They have laid down certain warnings in public interest for the public at large, Internet subscribers, cable TV operators, mobile shop owners and CD/DVD distributors across the state of Kerala.[121]
14. Adobe Systems Inc also launched one of its largest initiatives to battle software piracy in India. They are working in collaboration with local law enforcement and government authorities across India. The object is to avert rampant piracy of software which results in a worldwide loss of US$ 47 billion every year. Having enforced over 25 civil actions in major cities, Adobe is setting a trend for the big corporations who look at India as a potential market but fear the growing cases of piracy.[122]
15. The United States Business Council launched the “Bollywood-Hollywood Initiative” with the Federation of Indian Chambers of Commerce and Industry (FICCI). Their initiative, in the form of a ground-breaking survey, determined the true cost of piracy and counterfeiting to the Indian Entertainment Industry; a push to ensure India’s adoption of Optical Disc Legislation to combat piracy; a campaign to raise public awareness of the detrimental effects of piracy on India; and a drive to US-India governmental cooperation in combating international, cross-border piracy particularly of Indian films in the US and other countries as well as US films in India.[123]
16. The Government approved a scheme to implement an anti-piracy initiative in the audio-visual sector under 12^th Five Year Plan and the Ministry of Information and Broadcasting has an outlay of Rs. 2 crores for the Plan period 2012-17. Though the FICCI-KPMG shows that the figures of piracy markets still account for 600-700 million unit sales of DVDs each year and one of major factors is the increased competition within the sector. Some of the activities planned by the Government of India under plan are as follows:

• Campaign against piracy through audio-visual, Internet and print media and a dedicated web portal;
• Training programmes and workshops to sensitize police, judicial, administrative officials, multiplex and cinema hall owners about the Copyright Act;
• Research on effects of piracy and development public-private strategies to combat it; and
• Inclusion of anti-piracy awareness material in the curriculum of the schools and colleges, road shows/ street plays/ documentaries for creating awareness.[124]

• Conclusion

It can be inferred from the limited scope of the copyright law in India that there is no conclusive mechanism that has been adopted to curb on-line infringement of content except for a few noteworthy initiatives and amendments to limited provisions under the Copyright Act, 1957. The law is inclined towards the growth of e-commerce rather than the protection of works created by individuals. This is a telling fact that reflects the need to address this growing menace by analyzing the legislative enactments of other countries, and the lacunae persisting in those laws and thereby successfully devising an appropriate policy framework. This framework should take into consideration the ever-increasing broadband network connections and also the nature of infringements. Redesigning laws in tune with present day technology and assessing compatibility among nations in this regard is one of the best ways to deal with the on-going copyright crisis.The copyright laws in India equipped with the introduction of the provisions for anti-circumvention and Rights Management Information in the Indian copyright regime though India is under no obligation to introduce these changes as it is not a signatory to WCT or WPPT.With the amendment of the Copyright Act in 1994, which came into force on 10 May 1995, the situation with regard to copyright enforcement in India has improved. Further, in area of copyright infringement it needs to be tightened up the protection of author’s rights vis-a-vis the assignee or the licensee. There is a need to develop a model contract, too, which should also provide protection for the author’s rights in the fast changing scenario of electronic publishing, Internet, etc.It is evident from the above analysis that while the Indian copyright law is equipped to face a number of new challenges posed by digital technologies, it, in keeping with its own past history, needs to include new provision also as there are still many issues left un-addressed.  Amendments in the Act to make it compatible with the WCT should be able to take care of most of these issues. Since digital technologies have brought in a convergence of computers, telecommunication, and the copyright industries, in the times ahead this convergence will grow stronger and stronger, a day my come when it may also become necessary to have a convergence in the laws regulating the provision of both content and service in all these areas to ensure that copyright protection will function adequately in the networked digital environment including watching out the developments in other countries particularly on those vexed questions for which universally acceptable solutions have not yet been evolved.

• Recommendations and Suggestions

Enforcement of intellectual property rights is provided for through a comprehensive statutory and common law system, which includes pre judgment remedies such as injunctions and ex parte orders of attachment, search and seizure orders, and customs searches and seizures. Final remedies include, among others, permanent injunctions, accounting of profits, delivery up, destruction of the offending goods and monetary damages and costs. Criminal sanctions are available, inter alia, for counterfeiting of trademarks, performers’ rights, broadcasters’ rights, copyrights and other willful use of false trade descriptions.

Copyright infringement occurs principally where a protected work, or a substantial part thereof, has been reproduced without authorization, or publicly performed without authorization. The general test for determining whether the part of the work taken is substantial and, thus, amounts to infringement, is qualitative, not quantitative. Dealing with infringing copies, such as importing and selling, and the possession of an infringing copy is also an infringement, provided that the defendant knew or ought to have known that the goods are infringing. There are fair dealing exceptions, such as for purposes of research, criticism, etc.

The Government of India is committed to providing Intellectual Property Right’s Holders with adequate and effective means for the enforcement of their rights. In addition to remedies in the civil area, some of the legislation provides for specific criminal remedies as well. So far as the enforcement of copyright is concerned, effective enforcement of copyright is a priority goal for the Ministry of Human Resource Development, Government of India. As a major producer of intellectual property, India has a large stake in advancing and ensuring effective enforcement of Intellectual Property Rights.

From the very outset India has been committed to a strong intellectual property regime including copyright.The extensive civil remedies provided for under the Indian statutes and regulations, provide meaningful remedies.The significant punishments available for criminal offences have the potential to act as a deterrent to offenders. Holders of rights have thus been able to rely on progressive legislation, and enlightened judicial interpretations of the statutes related with the intellectual property as a whole.

As in the case of most countries in the world, however, progressive laws have not proved enough of deterrence. The worldwide epidemic of intellectual property fraud and piracy particularly from the neighbouring countries has affected India as well, and new and more effective enforcement measures are required.

The Indian government is very concerned about the problem of criminal activity in this area both on a national level and an international level. In the international sphere, the Indian government is joining the efforts of other states through mutual cooperation and through acceding to international conventions. On the national level, India has set in motion a multifaceted enforcement programme to provide for enhanced criminal enforcement and increased public awareness. This programme combines the efforts of the Ministry of law and Justice, the Police Units, the Ministry of Commerce and Industry, the Excise and Custom Authority, the Ministry of Finance, Ministry of Information and Broadcasting, Ministry of Information Technology and others to jointly combat intellectual property violations. As is well known from the experience in other countries, this battle cannot be won overnight.Although the results of the new programme are already apparent, even with the best of intentions it is unlikely that this organized and sophisticated criminal activity can be controlled in a short period of time. And matters are further complicated by the fact that intellectual property piracy does not confine itself to the geographical areas under control of Indian enforcement authorities.

Above all, India is confident that the coordinated efforts of all relevant authorities, the wide-ranging campaign to increase the public awareness, and the creation of the special intellectual property police unit will indeed have a significant impact on criminal activities in this area.

Here, I am suggesting some steps to be taken by the Government of India to eradicate the menace of piracy. Although I am aware that the Government of India is not sitting silently and doing the co-ordinated efforts with all relevant authorities. The suggestions are as under:

1. Strong judicial system staffed by an adequate number of judges with suitable background and experience:

All intellectual Property Systems need to be underpinned by a strong judicial system for dealing with both civil and criminal offences, staffed by an adequate number of judges with suitable background and experience. Judicial system should make every effort to deal with them not only fairly but also expeditiously. It must not impose unreasonable time limits and the plaintiff and defendants must have equal access to information and equal possibilities to present their cases.

2. Requirement of Anti-Piracy Law :

There is a need for separate legislation on IPR enforcement to check the piracy i.e. Anti-Piracy Law as the Indian Penal Code and Provisions of the Indian Copyright Act, 1957 is not sufficient to cope with the day to day problems relating to copyright infringement.

3. Cross-border IPR Enforcement:

The enforcement of intellectual property rights (IPR) across national borders has become increasingly important. Frequently, IPR are used to disseminate and protect the development of new technologies, academic knowledge and artistic works. In the international setting, it has been found that IPR promote technology transfer between countries, thus leading to productivity growth. To enforce the IPR across national border is difficult for several reasons[125]:

• IPR laws differ from one country to another
• Similar laws between countries can be interpreted differently such that a violation in one country may not be found in another
• Attitudes towards IPR protection differ in that innovating firms believe stronger protection increases incentives for further research, whereas other argue that stronger protection restricts access to new goods and reduces welfare.

Hence, the Cross-Border IPR Enforcement (International cooperation Cell) should be formed on universally accepted terms with common principles of jurisprudence so that it could be more effective.

4. Co-operation between enforcement agencies:

Public resources available for enforcement of intellectual property law can only satisfy a limited quantity of enforcement action. It is therefore essential that the resources available to the various enforcement agencies are coordinated. For this reason, special emphasis was placed on the subject of cooperation between the various enforcement agencies for efficient utilization of the information accumulated on professional know-how and enforcement resources available to each and every agency.

5. Border Measures:

Border measures are intended to prevent infringing copies – or lawful copies in violation of the right of importation- from being brought into one country concerned. They constitute an effective way to counter acts of infringement, because it is frequently easier to prevent the distribution of infringing copies at the border than after the copies have already been brought into the country and put into circulations. Border measures are usually carried out by administrative authorities (Custom authorities) and not by judicial authorities. So, it is equally important that not only our Custom Act, 1962 contains with effective safeguards and appropriate procedural rules but also ensure that procedures for the enforcement of copyright are fair, equitable, transparent, expeditious, not unnecessarily complicated, costly and burdensome.

6. Transparency:

All the information pertaining to copyright infringement must be listed by each of the enforcement authorities and put all the information and other materials on the official website. A public awareness programme about these activities must be communicated to the general public.

7. Syllabus of IPR in different courses of university, professional institutions like, police, judiciary etc.:

Today, many universities and research and development (R&D) organizations in developing countries and countries in transition often cannot enjoy the full benefits of their investments in R&D due to a lack of knowledge and experience regarding the proper use of the intellectual property (IP) system.

8. New training strategies to all the enforcement agencies/ officials.

The concept of copyright is essentially a product of modern civilization. On one hand where technological progress has made reproduction of copyright material easy but on the other hand these technological innovations not only made copyright infringement international in character but also made piracy of the copyright work simple and difficult to control. Effective enforcement of Intellectual property rights requires firstly, the awareness of the police, customs officials and State’s public prosecutors as to the scope and nature of intellectual property rights. In order to overcome such awareness problems and in an effort to generate more effective enforcement of intellectual property rights, the Government of India is undertaking to enhance the understanding of the related enforcement agencies regarding the principles of intellectual property rights.  Hence, there is need to adopt the new training strategies to all the enforcement agencies i.e. Police Training Colleges & schools, Judicial academies, Customs Training Centres etc. to cope with the problems relating to piracy.

9. General awareness among people about IPR:

General awareness among peopleabout IPR initiatives is required besides the genuineness of the existing creative works. IPR initiatives include that of ensuring that those who utilize and benefit from the intellectual property system are well aware of its importance and role in economic development. The Government of India, therefore, must organize various seminars and workshops that must involve the following sectors of society:

1. IP Stakeholders – inventors, creators, trademark owners, scientists, research and development personnel.
2. Relevant Indian government agencies in all branches of government – those that deal with such as enforcement laws. Legislative, judicial and policy making bodies, e.g., National Police Academy (NPA), Central Bureau of Investigation (CBI), Excise and Customs, Telecommunication Department, Information and Broadcasting Department, Information Technology Department, Department of Law and Justice, Directorate of Prosecution, Supreme Court of India for judges and justices, Department of Science and Technology and its R & D Institutes and Councils, Department of Education, Commerce Department, among others.
3. Academy – especially universities and colleges that offer science, engineering and law curriculum and selected science secondary schools.
4. IP Practitioners and Copyright Attorneys.
5. Non- governmental organizations in IP.

The number of participants, academic institutions and target groups etc. become the basic criteria for selecting venues for such activities.

10. Fixation of price. It should be a lower cost:

When enforcement is targeted at high- value buyers such as corporate and government users, the copyright have an incentive to charge super- monopoly prices, thereby encouraging piracy among low- value buyers. Extending enforcement down the demand curve broadens the copyright holder’s captive market, leading to lower prices and higher sales that can increase both profits and consumer surplus.

11. Establishment of enforcement Forum- Intellectual Property:

A special Forum with the object of coordinating the enforcement of intellectual property law (hereinafter: the “Enforcement Forum”) has to be set up, under the control and guidance of the Copyright Enforcement Advisory Council (CEAC), Ministry of Human Resource Development, Department of Higher Education. This forum must involve the expert representatives of each of the central enforcement agencies, viz., the Police, the State Prosecution’s Office and the tax authorities, the Legal Counsel and Legislation Department.

The functions of the Forum include the coordination of enforcement of intellectual property law between the central enforcement agencies, the determination of general policy in the area of enforcement, the examination of contacts with owners of rights, the determination of methods of transfer of current information between the various enforcement agencies, the formulation of rules of evidence required for the purpose of filing indictments, the deliberation of directives formulated in the various enforcement agencies, and the formulation of procedures for cooperation between the various enforcement agencies. This Forum must also discuss the current policy on enforcement and common working procedures.

12. Legal Counseling:

There must be a Central Government Agency besides Ministry of Law and Justice to provide advice and counseling to the enforcement agencies who are engaged in the area of intellectual property. Representatives of the various authorities transfer the information in their possession to this Central Government Agency, who decide on methods of collection of evidence which will be admitted by the court, give its opinion on the suitability of the case for civil or criminal proceedings, assist in coordination with the other enforcement agencies, etc. Furthermore, the Legal Counsel and Legislative Branch (IPR Cell) of the Department of the Ministry of Law and Justice must be a reference address for queries from the various enforcement agencies for an opinion on miscellaneous issues on the agenda concerning intellectual property law.

13. Collecting and Access to Information:

The Police must maintain a database on intellectual property rights. The customs, tax and police authorities must have a special permit to exchange information. And, new amendment has been made that significantly increases penalties for IPR crimes and makes evidentiary matters easier for rights holders. There is a need for cooperation from all sectors including the general public with respect to IPR materials, which can be detained for a short period of time during which the rights holder must be able to verify whether the goods were in fact infringing.

14. Contacts with Owners of Rights:

Special attention should be drawn to the role that rights holders themselves have to play in the successful prosecution of IPR violations. Counterfeit goods, infringing materials, are often not detectible to the untrained eye. Often, genuine goods contain hidden “markers” that are known only to rights holders’ security personnel. When a matter comes to trial, the prosecution must prove beyond a reasonable doubt that the allegedly counterfeit items and infringing materials are indeed counterfeits and infringed goods. Proving such is often very labour intensive and cannot be done without expert testimony from the rights holders themselves. At times this process is further complicated by the fact that containers of seized goods often contain a mixture of genuine and counterfeit goods.

Proof of ownership of IPRs is also often complex, particularly where the chain of title has been assigned or licensed several times over. Hence, proving infringement and ownership of IPRs frequently requires the ownership rights and testify such in court. Often these procedures take a considerable amount of time to carry out and cases cannot be brought to trial. Where rights holders choose not to provide such information at all, makes their testimony vulnerable to impeachment on cross examination, chances for a successful prosecution are severely diminished and may even result in the return of seized goods in the case of a withdrawn or unsuccessful prosecution.

Sometimes, rights holders do not want to invest effort in prosecutions, perhaps because they do not want to draw public attention due to several reasons. Still at other times, rights holders are interested in activating initial police activity in order to leverage higher civil settlements only to thereafter lose interest in the parallel criminal action.Even when rights holders dobecome actively involved in providing proof that seized items are counterfeit, this process often takes them a great deal of time to complete. Until these examinations have been completed prosecutions cannot go forward. Additionally, the production of credible evidence becomes even more critical to the successful prosecution of IPR crimes. Accordingly, examinations of seized goods and preparation of expert testimony must be made formally and methodically if such evidence is to withstand being impeached upon cross-examination in court.

In several matters rights holders have not always been willing, or able, to timely provide credible expert evidence and in those case the prosecutions will inevitably be delayed, if not jeopardized all together. In this area there are a number of problems. Some of these problems derive from the fact that the agencies representing the owners of the rights are not prepared for such a high level of activity on the part of the enforcement authorities. It seems that another reason for the lack of cooperation on the part of the owners of the rights on “commercial grounds”. The owners of rights are not complainants and do not cooperate due to fear that information on “forged” products is likely to harm their original products.

Another problem, which the enforcement authorities have encountered in this context is that in most of the incidences, the incentive for cooperation on the part of the owner of the right has been weakened after the infringing goods have been seized by the enforcement authorities.

15. Training Programmes of the Concerned Officers:

Key personnel from government bodies which are involved in enforcement of intellectual property, such as the police, the customs authority, prosecutors, judges and the officers of the copyright division including the middle-level officers, must be sent to foreign and domestic training programmes to learn about more effective and practical means for better enforcement of intellectual property rights.

*****

[1]Wollgast Heike, IP Infringements on the Internet: Some legal considerations, WIPO Magazine, 1 (1) (2007), http:/www.wipo.int/wipo_magazine/en/2007/01/article_0005.html (1 December 2012)

[2] Copyright enforcement under the TRIPS Agreement, International Intellectual Property Alliance Paper, 2004 p.2 http://www.iipa.com/rbi/2004-oct19-TRIPS.pdf

[3]Geuze M, Patent rights in the pharmaceutical area and their enforcement: Experience in the WTO framework with the implementation of the TRIPS agreement, The Journal of World Intellectual Property, 1 (4) (1998) 585

[4] Documents from the WIPO Workshop on Service Provider Liability (9-10 December 1999)

[5] Copyright enforcement under the TRIPS Agreement, International Intellectual Property Alliance Paper 2004 p.6 http://www.iipa.com/rbi/2004-Oct19-TRIPS.pdf

[6] USTR  Annual ‘Special 301’ Report

[7] Joseph B G &Wasylik D P, in Practising Law Institute-Patents, Copyrights, Trademarks and Literary Property Course Handbook Series, 2003 541 cited in Kahandawaarachchi T, Liability of service providers for third party online copyright infringement: A study of US and Indian Laws, Journal of Intellectual Property Rights, 12 (6) (2007) 553

[8]Hayes D L, Copyright liability of online service providers (Part 2), The Computer and Internet Lawyer, 19 (11) (2002) 43

[9] Hendrickson v. eBay Inc., C.D. Cal. No. 01-0495 RJK (RNBx), 9.4.2001

[10] The impact of the internet on Intellectual Property Law, WIPO Program Activities, http://www.wipo.int/copyright/en/ecommerce/ip_survey/chap3.html (29 November 2012)

[11] Smith Lamar, Fighting online piracy, N Y Times, 10 January 2012, http://www.nytimes.com/2010/01/10/opinion/fighting_online_piracy.html

[12] Ross Drath, Hotfile, megaupload, and the future of copyright on the internet: What can cyberlockers tell us about DMCA reform?, John Marshall Review of Intellectual Property Law, 12 (1) (2012) 205

[13] Ross Doug, with SOPA shelved, anti-piracy advocates take new approaches, CNN, 22 March 2012, http://edition.cnn.com/2012/03/33/tech/web/isps-sopa-piracy/index.html

[14] Over 75 Law Profs  call for halt of ACTA, Program on Information Justice and Intellectual Property, http://www.wclamerican.edu/pijip/go/blog-post/over-75-law-profs-call for-halt of acta (1 December 2012)

8 Digital Economy Act of 2010, UK National Archives, http: www.legislation.gov.ukpga/2010/24 contents (29 November 2012)

[16] Law No 2009-669 of 12 June 2009 favouring the diffusion and protection of creation on the internet, Official Journal, 13 June 2009

[17] Decision NO 2009-580 dc OF 10 June 2009, Act to promote the Dissemination and protection of creation on the Internet, http://www.wipo.int/wipolex/en/details.jsp?id=7358

[18] http://www.worldpreview.com/news/france-relaxes-three-strike-piracy-scheme (9July 2013)

[19]Kahandawaarachchi T, Liability of service providers for third party online copyright infringement: A study of US and Indian Laws, Journal of Intellectual Property Rights, 12 (6) (2007) 553

[20] Viacom International Inc v You Tube Inc. 676 F. 3d 19 (2d Cr. 2012) at 9, 22

[21]Mcsherry C. Viacom v Google: A decision at last, and It’s Mostly Good ( for Internet and Innovation), 5 April 2012, http://www.eff.org/deeplinks/2012/04/viacom-v-google decision.

[22] UMG Recordings Inc v Shelter Capital Partners LLC, 667 F. 3d. 1022 (9^th Cir. 2011)

[23] UMG Recordings Inc v Shelter Capital Partners LLC, 667 F. 3d. 1022 (9^th Cir. 2011), at 1038-40, 1041-45

[24]Szamel P &Fishwick L, District Court grants summary judgement to YouTube in Viacom v You Tube.

[25] Section 79 and 81, Act No. 21 of 2000, as ameded by the IT )Amendment) Act, 2008

[26] Rule 3 of Information Technology Rules, 2001

[27]Sakia N, ISP Liability and the Parliamentary Standing Committee’s recommendations, 28 November 2010, http://copyright.lawmatters.in/2010/11/isp-liability-and-parliamentary.html (2 May, 2014)

[28] Singh S & Singh V, Internet ServiceProvider liability for copyright infringement, Indian Legal Impetus, 3 (10) (2010) http://singhassociates.in/Intello_Property/2 html

[29] Super Cassettes Industries Limited v Yahoo Inc&anr CS (OS) No. 1124 of 2008 Delhi High Court

[30] Super Cassettes Industries Limited v MySpaceInc& Another, IA Nos 15781/2008 & 3085/2009 in CS (OS) No. 2682/ 2008

[31]Saikia N, ISP/OSP Safe harbours and takedown laws: Copyright and information technology, 15 June, 2012. http://copyright.lawmatters.in/ 2012.html (2 May 2014)

[32] Chawla Alka, Law of Copyright: Comperative perspective

[33]Datta A, India’s copyright law reforms: Managing IP’s guide, Managing IP, May 2012

[34]Saikia N, ISP/OSP Safe harbours and takedown laws: Copyright and information technology, 15 June, 2012. http://copyright.lawmatters.in/ 2012.html (2 May 2014)

[35] “Indian Copyright Law and Digital Technologies” written by T.C. James, Journal of Intellectual Property Rights Vol. 7 September 2002 pp 423-435

[36] Statement of Objects and Reasons of the Copyright Bill introduced in the RajyaSabha on 1 October 1955

[37] WIPO, Model Provisions on the Protection of Computer Software, Quoted in Stewart SM, International Copyright and Neighbouring Rights 2^nd Ed. 1989 p. 305

[38] Article 10.1 of TRIPS Agreement

[39] Article 4 of WCT

[40] Article 2 of Berne Convention

[41] Section 2 (o) of the Copyright Act, 1957 as amended in 2012.

[42] Section 2 (ffb) of Copyright Act, 1957

[43] The Copyright Amendment Act, 1999

[44] Proviso to Section 14 (b) (ii) of the Copyright Act, 1957

[45] Section 52 (1) (ab) and (ac) of the Copyright Act, 1957

[46] Section 2(d) (vi) of theCopyright Act, 1957

[47] Section 65B of the Copyright Act, 1957

[48] Definition proposed in Draft Article 2 of Basic Proposal for the Substantive Provisions of the Treaty on Intellectual Property in Respect of Databases to be considered by the Diplomatic Conference, WIPO Document No CRNR/DC/6. This treaty has not yet been finalized.

[49] Article 10.2 of the TRIPS Agreement

[50] See Statement of Objects of US Congress bill (H.R. 3531) for proposed “ Database Investment and Intellectual Property Antipiracy Act, 1996

[51] See European Union Directives on the Legal Protection of Databases (No. 96/9/EC) and US Congress Bill H.R. 3531

[52] WIPO Publication No. 751 €, pp 58-59

[53] Section 13 (4) of the Copyright Act, 1957

[54] Section 38 (4) of the Copyright Act, 1957

[55] Stewart SM, International Copyright and Neighbouring Rights 2^nd Ed. 1989 p. 305 P. 121

[56] Agreed Statement concerning Article 1 (4) of the WCT

[57] Ibid

[58] Section 14 (a) (i) of the Copyright Ac, 1957

[59] Section 2 (f) of the Copyright Act, 1957

[60] Section 2 (xx) of the Copyright Act, 1957

[61] Section 14 (e) of the Copyright Act, 1957

[62] Article 6 of WCT

[63] Section 2 (ff) of the Copyright Act, 1957

[64] Clark, Charles, The Publisher in the Digital World, WIPO Document No. WIPO/CR/Del/96/5, New Delhi 1996

[65] Article 11 of WCT

[66] Section 2 (t) of the Copyright Act, 1957

[67] Article 12 (2) of WCT

[68] See Article 27 of the Universal Declaration of Human Rights for understanding the philosophy behind balancing.

[69] See Article 10 and Agreed Statement concerning Article 10 of WCT

[70] Mittal, R. (2006). From Printing Press to the Internet: The Stride of Copyright along with Technology, Intellectual Property and Technology Law Journal, 1, 21-46

[71] Burgess, J. (1993). Internet Creates a Computer Culture of Remote Intimacy, The Washington Post, A1, A8

[72]Hugenholtz, P.B. (1996). The Future of Copyright in a Digital Environment. Hague: Kluwer Law International

[73]Ficsor, M. (2002). The Law of Copyright and the Internet. London, Oxford University Press.

[74]Dmytrenko, O. & Dempsey, J. X. (2004). Copyright and the Internet: Building National Legislative Frameworks Based on the International Copyright Law, Global Internet Policy Initiative Paper (Dec. 2004) available at: http://www.internetpolicy.net/practices/20041200copyright.pdf [6] Gulla, R. K. (2007). Digital Transformation of Copyright Laws and the Misty Indian Perspective, Icfai Journal of Intellectual

[75]Section 53 (1) of the Copyright Act, 1957

[76] Section 53 (2) of the Copyright Act, 1957

[77] Section 53 (3) of the Copyright Act, 1957

[78] Section 53 (4) of the Copyright Act, 1957

[79]Gramophone Co. of India Ltd. v. BirendraBahadurPande(1984) 2 SCC 534

[80] Section 53 of the Copyright Act and Sections 2, 11 of the Customs Act

[81] Section 106A of the Customs Act,1962

[82] Section 110 of the Customs Act, 1962

[83] Sections 111 to 114 of the Customs Act.1962

[84] Section 124 of the Customs Act,1962

[85] Section 135B of the Customs Act

[86] ‘Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007’ [IPR Rules 2007]

[87] CBEC Circular No. 41/2007-Customs, dated 29th October, 2007

[88] Chapter XII (Section 54-62) of the Copyright Act, 1957

[89] Chapter XIII titled” Offences. ( Section 63-70) of the Copyright Act, 1957

[90] Caterpillar Inc v KailashNichani 2002 (24) PTC 405

[91]WIPO Intellectual Property Handbook: Policy, Law and Use; Chapter 4 page 229 

[92] AIR 1958 Del 29

[93] AIR 1971 Bom. 48

[94]Penguin Books Vs. India Book Distributors AIR 1985 Del 29

[95]Order 39, Rule 4 of Civil Procedure Code

[96]Prakash Mohit Printers Vs. State of U.P. and Ashok Prakashan (2000) PTC 158 (All).

[97]Anton Piller K.G. v Manufacturing Processes Ltd. [1976] RPC 719

[98]WIPO Intellectual Property Handbook: Policy, Law and Use; Chapter 2 page 53-54

[99] 2008 (37) PTC 581

[100]See Section 58 of the Copyright Act, 1957

[101]Proviso of Section 58 of Copyright Act, 1957

[102]Srimangal Vs. Books (India) AIR 1973 Mad. 49

[103]PillalamarriLakshmikantam Vs. Ramakrishna Pictures AIR 1981 AP 224

[104]Govindan Vs. GopalkrishnaKone AIR 1955 Mad. 391

[105] AIR 1985 All 275

[106] Section 64 (2) of the Copyright Act, 1957

[107]http://www.law.cornell.edu/constitution/first amendment

[108] Article 19 (2) of the Constitution of India, available at http:// constitution.org/cons/india/p0319.html

[109] OECD, “ The Economic and Social Role of Internet Intermediaries”, April 2010, available at http://www.oecd.org/sti/ieconomy/44949023.pdf

[110]Section 81 of the IT Act, 2000

[111] Section 52 (c ) of the Copyright Act, 1957

[112] 2011 (48) PTC 49 (Del)

[113] http://www.google.com/transparencyreport/removals/government

[114] http://www.cis-india.org/internet-governance/intermediary-liability -in-india

[115] http://www.medianama.com/2013/04/223-mouthshut-it-rules-supremecourt-of-india

[116] Section1 read with Section 75 of the IT Act, 2000

[117] 2011 (48) PTC 49 (Del)

[118] 47 U.S.C. & 230

[119] 528 F. 3d 413 (5^th Cir. 2008)

[120] 07.Civ.2013 (S.D.N.Y. April 18, 2013

[121] Kerala Police Official website, http://keralapolice.org/newssite/anti-piracy-cell.html

[122]Adobe starts anti-piracy initiative in India, Indian Express, 24 April 2009, http:/www.indian express.com/news/adobe-launches-antisoftware-piracy-initiative-in-india/450809

[123] Hollywood-Bollywood Initiative (Anti-Piracy), US India Business Council, http:/www.usibc.com/advocacy/initiatives/piracy ( 1 December 2012)

[124] Ministry of I&B approves anti-piracy initiative in the XII Plan, Press Information Bureau, htpp://pib.nic.in/newsite/erelease.aspx?relid+89529

[125]Eric P. Chiang, Determinants of Cross- Border Intellectual Property Rights Enforcement: The Role of Sanctions; Southern Economic Journal, Vol. 71, 2004