Appellate: ESPN Star sports

Respondents: GLOBAL BROADCAST NEWS LTD. & OTHERS

Case facts:

About Plaintiff:

A) ESPN had exclusive rights to broadcast India vs Australia Test matches,  One Day
International (ODI) matches and the solitary T20 cricket match to be played in Australia
from December 26, 2007 onwards till March 8, 2008 

B) no other person, entity and/or Cable Operators could broadcast/telecast in India, the
Cricket Matches without a license from the Appellant or its sole and exclusive distributor
ESPN Software India Private Ltd. 

C) ESPN granted licenses to over 5000 cable operators in India to transmit their channels
on their cable networks.

About Respondents:

A) There were 5 respondents broadcasters including major channel networks like CNN-IBN,
IBN7, Aaj Tak, Headlines Today etc..

B) The respondents had indulged in using/appropriating without authority, substantial

portions of the footage of the appellant's channel namely Star Cricket which had telecast the
test matches exclusively from December 26, 2007 to January 28, 2008 for creating
programmes which they were commercially exploiting.
These respondent news channels only had the permission to use the footage ONLY for regularly
scheduled news bulletins provided such usage would not be for more than two minutes
per day.
The Issue:

The Plaintiff argued that the permissible levels of broadcast of such cricket matches by news
channels, for the purposes of news, could not be in excess of 30 seconds per bulletin and a total of 2
minutes per day. As opposed to this minimal usage cap, the data submitted by the Plaintiff before
the court showed that the aggregate amount of the plaintiff’s footage already used by the
Defendant news channels varied from a maximum of approximately 15 hours to a minimum of
roughly 9 hours, over a given period of telecast.

Judgment dated 18 Febru ary 2008 by Single Judge in favour of respondents

1) Case filed by ESPN was first dismissed on account of:

A) Section 61(1)  Owners of copyright to be party to the proceeding. —

In every civil suit or other proceeding regarding infringement of copyright instituted by an
exclusive licensee, the owner of the copyright shall, unless the court otherwise directs, be made
 a defendant and where such owner is made a defendant, he shall have the right to dispute the
claim of the exclusive licensee.

Since Cricket Australia (sports body) being the owner of copyright not been made a party to the
suit, the suit ought to be dismissed as not maintainable.

B)  The plaintiff (ESPN) had not disclosed the entire agreement, which was a relevant factor for
the exercise of discretion in granting or refusing ad-interim relief. However, the same
standard cannot be applied while considering whether the plaint has to be rejected as not
disclosing a cause of action.
A cause of action is a bundle of facts which are required to be proved for obtaining relief and
for the said purpose, the material facts are required to be stated but not the evidence

Second innings of the case: ESPN counsel challenging judgement dated 18 February 2008

Shri C. A. Sundaram, the learned Senior counsel appearing for the appellant while contending that
the impugned judgment and order dated 18th February 2008 be set aside, raised his arguments on a
three fold basis.

(i) Broadcasting reproduction rights visa-a-vis Copyright in the Indian Copyright Act, 1957.

He contended that it is important to note that even after the aforesaid amendment of
the Copyright Act, the definition of 'copyright' under Section 14 was not amended to include
'Broadcast reproduction right', as has been the case in some countries such as the United States
of America, United Kingdom and New Zealand, where Broadcast reproduction right had been
specifically included within the meaning of copyright. Hence, applicability of section 61 is
questioned.

From the reading of Section 37 of the Copyright Act as well as the Statement of Object and
Reasons, it is evident that the definition of 'copyright' under Section 14 of the Copyright Act did
not provide any protection to the broadcasters.

Respondents council Mr. Soli Sorabjee, defended and again mentioned section 61 is applicable
as section 55 mentioned in Section 39-A which states, without which a broadcast reproduction
right holder would have no civil remedy, refers specifically to "owner of copyright"; 

He claimed that the use of footage for this purpose was therefore the respondents' right under
the freedom of speech and expression guaranteed under Article 19(1)(a) of the Constitution of
India. The footage was used for bona fide reporting, which is clearly in public interest.

Judgement: On a careful consideration of the arguments advanced by the learned counsel

appearing on either side, I am of the view that the Satellite television broadcasting right is an
independent right for which the plaintiff cannot claim any copyright.

The fact that such a distinction exists is demonstrated by Section 51 of the Copyright

Act which deals with acts constituting infringement of a copyright, whereas there is a
separate section, i.e., Section 37(3) that deals with acts constituting infringement of
broadcast reproduction rights.
(ii) The ownership of Cinematographic Copyright in the Cricket Matches telecast in the present case.

(ii) Defence of fair dealing.

Argument by ESPN: the permissible levels of broadcast of such cricket matches by

news channels, for the purposes of news, could not be in excess of 30 seconds per
bulletin and a total of 2 minutes per day.

Judgement: the application for interim relief ought not to have been rejected
merely by holding that 30 seconds or 7 minutes cap cannot be a universal rule.

The Plaintiff argued that the permissible levels of broadcast of such cricket matches by
news channels, for the purposes of news, could not be in excess of 30 seconds per
bulletin and a total of 2 minutes per day. As opposed to this minimal usage cap, the data
submitted by the Plaintiff before the court showed that the aggregate amount of the
plaintiff’s footage already used by the Defendant news channels varied from a maximum
of approximately 15 hours to a minimum of roughly 9 hours, over a given period of
telecast.

Final Judgement: (September 26th , 2008)

A. They held that the broadcast reproduction right as contended by the appellant are to be treated
as separate, distinct and independent rights. therefore, unable to agree with the interpretation of
the impact of Section 61 of the Act, which the learned Single Judge has preferred to adopt.

B. We are also unable to subscribe to the view taken by the learned Single Judge that non-
compliance of Section 61 of the Act leads to the legal position in the present case where the suit of
the appellant warranted dismissal of the suit on account of not making the original owner Cricket
Academy (C.A.) a party as per the mandate of Section 61of the Act.

C. In our view, Section 61 of the Act having been specifically left out by the Legislature by virtue
of Section 39-A of the Act specifying the applicable provisions of Chapter VIII of the Act to
broadcast reproduction rights, clearly rules out the applicability of Section 61 of the Act and the
learned Single Judge's view therefore does not commend itself for approval by us. D. We also hold
that even if we assume that Section 61 of the Act were to apply, the dismissal of the suit was not
justified in view of the independent copyright owned by the appellant in the eventual telecast
comprising of vital inputs by the appellant.

34. Accordingly, the appeal is allowed. We have laid down the position of law and not passed any
order on the interim relief application as this application was not pressed due to the impugned
telecast already being over. However, we have laid down the law in respect of future
broadcast/telecast. The learned Single Judge's impugned judgment dated 18th February 2008 is set
aside and the suit shall be restored and placed for disposal before the learned Single Judge on 31st
October 2008 subject to the orders of the Judge-in-charge (Original Side).
To conclude, though the dicta of the Delhi High Court did not result in an interim application against
news channels in this case, as stated by the court itself, its decision and the strict parameters laid
down by it are relevant for deciding similar future cases.

Refer Acts:

Section 37 in the Copyright Act, 1957

1[37. Broadcast reproduction right.—
(1) Every broadcasting organisation shall have a special right to be known as ‘‘broadcast
reproduction right’’ in respect of its broadcasts.2[37. Broadcast reproduction right.—(1) Every
broadcasting organisation shall have a special right to be known as ‘‘broadcast reproduction right’’ in
respect of its broadcasts."
(2) The broadcast reproduction right shall subsist until twenty-five years from the beginning of the
calendar year next following the year in which the broadcast is made.
(3) During the continuance of a broadcast reproduction right in relation to any broadcast, any person
who, without the licence of the owner of the right does any of the following acts of the broadcast or
any substantial part thereof,—
(a) re-broadcasts the broadcast; or
(b) causes the broadcast to be heard or seen by the public on payment of any charges; or
(c) makes any sound recording or visual recording of the broadcast; or
(d) makes any reproduction of such sound recording or visual recording where such initial recording
was done without licence or, where it was licensed, for any purpose not envisaged by such licence;
or
(e) sells or hires to the public, or offers for such sale or hire, any such sound recording or visual
recording referred to in clause (c) or clause (d), shall, subject to the provisions of section 39, be
deemed to have infringed the broadcast reproduction right.]

here is reference to application of what is meant by fair dealing under Section 52,

Section 39 in the Copyright Act, 1957
1[39. Acts not infringing broadcast reproduction right or performer’s right.—No broadcast
reproduction right or performer’s right shall be deemed to be infringed by—3[39. Acts not infringing
broadcast reproduction right or performer’s right.—No broadcast reproduction right or performer’s
right shall be deemed to be infringed by—"
(a) the making of any sound recording or visual recording for the private use of the person making
such recording, or solely for purposes of bona fide teaching or research; or
(b) the use, consistent with fair dealing, of excerpts of a performance or of a broadcast in the
reporting of current events or for bona fide review, teaching or research; or
(c) such other acts, with any necessary adaptations and modifications, which do not constitute
infringement of copyright under section 52. ]

Section 39A in the Copyright Act, 1957

33 [ 39A Other provisions applying to broadcast reproduction right and performer's right.
—Sections 18, 19, 30, 53, 55, 58, 64, 65 and 66 shall, with any necessary adaptations and
modifications, apply in relation
n to the broadcast reproduction right in any broadcast and the performer's right in any
performance as they apply in relation to copyright in a work: Provided that where
copyright or performer's right subsists in respect of any work or performance that has
been broadcast, on licence to reproduce such broadcast shall take effect without the
consent of the owner of rights or performer, as the case may be, or both of them.]

Section 55 in the Copyright Act, 1957

55. Civil remedies for infringement of copyright.—
(1) Where copyright in any work has been infringed, the owner of the copyright shall,
except as otherwise provided by this Act, be entitled to all such remedies by way of
injunction, damages, accounts and otherwise as are or may be conferred by law for the
infringement of a right: Provided that if the defendant proves that at the date of the
infringement he was not aware and had no reasonable ground for believing that
copyright subsisted in the work, the plaintiff shall not be entitled to any remedy other
than an injunction in respect of the infringement and a decree for the whole or part of
the profits made by the defendant by the sale of the infringing copies as the court may
in the circumstances deem reasonable.
(2) Where, in the case of a literary, dramatic, musical or artistic work, a name purporting
to be that to the author or the publisher, as the case may be, appears on copies of the
work published, or, in the case of an artistic work, appeared on the work when it was
made, the person whose name so appears or appeared shall, in any proceeding in
respect of infringement of copyright in such work, be presumed, unless the contrary is
proved, to be the author or the publisher of the work, as the case may be.
(3) The costs of all parties in any proceedings in respect of the infringement of copyright
shall be in the discretion of the court.