CHAPTER - IV

LEGISLATIVE APPROACH TO ONLINE

INFRINGEMENT OF COPYRIGHT IN
THE FIELD OF FILM & MUSIC PIRACY
 CHAPTER – IV
LEGISLATIVE APPROACH TO ONLINE INFRINGEMENT
OF COPYRIGHT IN THE FIELD OF
FILM & MUSIC PIRACY

Copyrights are what protect the work and income of Artists and
authors by providing them with exclusive rights to control over the
use and reproduction of their works. This can include music, arts,
working books, patterns, and all other types of specialized design. For
a work to be Copyrighted it needs to be considered to be original. This
means that it cannot be so commonly used that it is considered to be
public domain. It needs to be distinct in its existence. Therefore ideas
cannot be copyrighted, however their method of expression can be.
Although each country has its own specific copyright laws, they
frequently cover the same item. Therefore it is almost universally
accepted that copyright infringement occurs when one person copies
another person’s copyrighted piece without permission from the
owner. If a person wants to use music for his website, in multimedia
or traditional media productions he needs to know about music
licensing. Website designers, video makers, TV show producers and all
other creative artists are constantly looking for music in their
productions. Terms such as “Royalty free music” and
“Synchronization licensing” get tossed around loosely when we
understand what copyright means and how it applies to music.

Copyright is intellectual property, if a person owns the copyright

to something; it means quite simply, that he has a right to decide who
can make a copy. Copyright is Right to copy. In terms of music, a key
thing to understand is that each Recording of Music actually includes
two distinct copyrights –

1. The Copyright of the song itself, or the musical

composition. It means the Rights in the words and music

129
 of a song, and is often referred to as the “publishing”
rights. Copyright is formed when a person writes a song
by virtue of the fact that is new and original and takes a
graphic form, such as writing down the lyrics or doing a
demo. The copyright in this composition is owned by
whoever wrote it.

2. The Copyright in sound recording also known as Master.

The Master is a Recording of a Composition. The
Copyright to the Master is owned by whoever produced it.
Often this is a record company.

Normally since there are two copyrights involved, two licenses

need to be issued to make use of a recorded song.

1. Synchronization License gives a person a right to

‘synchronize’ the composition with images or voice-over in
the production.

2. Master use License is exactly the same rights as the

synchronization license, except it applies to the Master
the actual recorded interpretation of the Musical
Composition.

Royalty free music libraries are One-Stop-Shop since they

control both Master and Compositions of the music on their website.
Purchasing Royalty free music means that once a person has paid
one-time fee, one can use that music as many times as he wants for
as long as he wants without ever having to pay additional money to
the licensor. Till 1997 there were Web-based services that offered
limited downloads of audio visual material and given that network
bandwidth is expected to increase rapidly over the next decade, it is
conceivable that the Internet will become a major distribution channel
for music and video products.

130
 Music industry is “facing the music” now, Big stake holders try
very hard to maintain their position while other players see
opportunities in the advert of peer-to-peer networks. Peer to Peer
(“P2P”) file sharing is receiving increasing attention around the world.
P2P file sharing is not illegal itself. However it is often used for
unauthorized downloading and uploading of copyright protected
material such as music. Several courts have determined the
substantial P2P file sharing of copyright – protected works generally
does not fall within the fair use defense. Along with P2P, the internet
also gave birth to audio streaming. Audio streaming can take two
forms. On the one hand, internet radio stations owned by sites
independent from major technological distribution companies
broadcast licensed music. On the other hand specific streaming
technologies owned by large software and content providers (such as
Microsoft, Apple, AOL) have also obtained license to broadcast music
from Copyright owners. Indeed the Digital Millennium Copyright Act
requires web centers and commercial broadcasters to pay license fees.

There are some files sharing programs which will automatically

take music from a legally purchased CD stored on a computer hard
drive and distribute it anytime when a person’s computer is on-
without his notice or permission. A new term copyleft licensing is also
used these days; the term is used to describe the removal of
Restrictions on the use of ideas and information. People who wish to
share their materials can use the copyleft license to allow others to
reproduce, adapt and distribute copies of their work. According to
Recording Industry Association of America (RIAA), for the first time a
case of an online criminal infringement case primarily featuring music
had gone to trial.

The defendant, Barry Gitarts “was a significant” member of

Internet music piracy group Apocalypse Production Crew (APC) from
atleast June 2003 through April 2004.The jury rendered a guilty
verdict after two days trial. According to US Attorney’s office, Mr.

131
Gitarts now faces upto five years in prison a fine of Rs. $ 250,000 and
three years of supervised release as well as being require to make full
restitution. The rules vary slightly from country to country, and some
countries allow limited copying and performance that is truly private.
However uploading music to the internet and other indiscriminate
copying and dissemination of music files is an infringement of
copyright, if done without the right owner’s permission. This is not
private but very public copying; especially considering that nearly a
half billion users have instant access to materials put on the internet.

If this sort of copying and distribution continues without regard

for those people whose ideas, talent and skill led to the creation of
music, they may be simply unable to continue to create – in which
case all of us are the losers. One of the essential challenges of the
digital environment is that of building a balanced and coherent legal
framework that takes account of the change in the economic and
socio-cultural model, while at the same time safeguarding
fundamental rights and freedoms in the digital world. Both national
and international legislative and technological initiatives have been
designed to reinforce copyright protection in this new environment. As
early as 1996 two new international treaties were signed under the
aegis of WIPO, whose goal was to deal with the primary concerns of
authors. The major achievement of the WIPO Copyright Treaty (WCT)
and the WIPO Performances and Phonograms Treaty (WPPT) was the
introduction of the right, for authors and owners of related rights,
to authorise the making of their works available to the public by
networks such as the Internet. The treaties also provided for the
protection of technological measures used by right owners for
preventing unauthorised access to their works or for the purposes of
rights management systems. The Treaties entered into force on March
6, 2002 for the WIPO Copyright Treaty and on May 20, 2002 for the
WIPO Performances and Phonograms Treaty.

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 National and regional legislators also passed laws to this effect
but, of course, there is more to be done. Authors, performers, cultural
industries, collecting societies, service providers, librarians, scientists,
consumers, governments, legislators and international organizations
still have a long way to go before an efficient legal framework for
knowledge societies is achieved in a spirit of mutual
understanding. This huge and urgent task must necessarily be
accompanied by a major effort towards educating consumers,
particularly the younger generation, to respect those who put their
creative talents to work for the scientific and cultural benefit of
the community as a whole. Further, creating a new and modern
legislation is only the first part of the solution to the problem. Effective
copyright enforcement is the second part, and is equally complex. The
absence of a physical support opens up countless possibilities to
download and copy protected works and modify them within a few
seconds. Thus Internet piracy is more abusive than ever for owners of
copyright and neighboring rights with more traditional reproductions
techniques.

For decades, the Indian film industry has copied tunes from
Western copyrighted works and created unauthorized derivatives. As
the music and motion picture industries in the United States started
taking notice of this copyright infringement, so too did Indian music
directors as domestic infringers profited from copying. Despite the
existence of an enacted copyright statute in India, and the nation’s
membership with various international intellectual property treaties
and conventions, enforcement continues to be poor. This lack of
protection allows high-profile music directors in the Indian film
industry to get away with copyright infringement. This comment
proposes that India must improve its copyright enforcement regime,
reprimand infringers, and work with the United States to understand
how it should create a better, more protective environment for
domestic and foreign copyrighted works.

133
 In January 2010, renowned Indian film music director
Ilaiyaraja, who penned most of the musical hits for the South Indian
film industry in the 1970s and 1980s, warned other players in the
Indian film music industry to stop using his songs without prior
permission and expressed his desire for stronger copyright laws.1 He
made it clear that advertising agencies, television channels, and TV
show producers should all obtain permission from his licensing
agency, AGI Music, before using his songs in any other
productions.2Copyright infringement in the form of unauthorized
derivative works and reproductions of copyrighted musical works
occurs frequently in India.3 Despite scrutiny of high-profile names in
the Indian film and music industries partaking in such violations,4
the problem of infringement continues without too much
interference from the Indian legal system.5 The Indian courts do not
enforce the copyright laws thoroughly, and the public lacks awareness
of infringement.6 This creates an environment of stifled creativity.7
The infringement also expresses disregard for crediting the owners
and authors of the original copyrighted works.8

1
Malaysian Firm Ties up with Ilaiyaraja, HINDU (India), Jan. 6, 2010, at p 2.
2
Nikhil Raghavan, Let The Music Play On, HINDU (India), Jan. 9, 2010, at 9 (reporting that
Ilaiyaraja authorized Agi Music, which had the rights to administrate Ilaiyaraja’s works, to initiate
legal proceedings for any violations of his works created before the year 2000).
3
Atul Prakash, So, Is it The Real Thing?, TIMES OF INDIA, Apr. 30, 2005 (reporting that most
popular Indian film songs are usually rip-offs from Hollywood, regional and literary works).
4
Shivli Tyagi, Chura Liya, TIMES OF INDIA, Feb. 20, 2006, available at
http://timesofindia.indiatimes.com/city/ahmedabad-times/Chura-liya/articleshow/1420152.cms
(noting that four incidents of singers, musicians, music composers and DJs throwing accusations
back and forth of copyright infringement).
5
AnuradhaMoulee& Chris Bevitt, Slumdogs& Copycats, SHELSTON IP, Apr. 1, 2009,
available at http://www.shelstonip.com/news_story.asp?m=3&y=2009&nsid=93 (reporting that
the Hindi film industry, also known as Bollywood, has an associated music industry that borrows
freely from external and internal sources, and that even though copyright protection exists in India,
infringement and copycatting is still a problem).
6
Tyagi, supra note 4 (noting that copyright infringement is the result of weak legislation and the
inability of registration organizations taking strong action when the situation requires it).
7
ShivliTyagi, Copy Right?, TIMES OF INDIA, Jul. 27, 2005 (mentioning that several Indian artists
agree that lack of protection for intellectual property allows people to be less creative with their
artistic works).
8
Tyagi, supra note 4 (adding that creativity in Indian film music is at its “lowest ebb” and that
credit is not given where due by those who remix or borrow samples of a copyrighted song).

134
 For the last few years, Indian lawmakers have been trying to
amend the current Indian Copyright Act to require derivative works to
provide proper credit to the original copyright holder.9Therefore, in
this chapter, the researcher discusses the copyright laws of India and
the United States, the existing international treaties that protect both
countries’ copyrighted works abroad, and provides an example of how
India’s neighboring countries are combating copyright infringement.
He also analyzes the advantages and disadvantages of the Indian and
United States’ copyright laws, as well as the effect of other developing
countries’ attempts at better enforcement of the laws. Finally he
proposes a solution to curb the increasing amount of copyright
infringement in the Indian music industry and promote creativity in
future Indian musical works.

The Indian film industry joins together several regional language

industries in India, but none are as large or as successful as
Bollywood, which churns out Hindi- language films.10 Since the
dawn of the Indian film industry, songs have been a major part of the
films11 and represent the most popular form of music in India.12

Foreign influence in Indian film music is apparent from early

Indian movies,13 and Indian music eventually started imitating
Western music.14 Though Indian film music remains extremely
popular with the Indian public, the genre of music is relatively

9
Chetan Chauhan, Copyright Shield for Melodies, HINDUSTAN TIMES (India), May 22, 2006,
available at http://www.hindustantimes.com/Copyright-shield-for-melodies/Article1-100454.aspx
(reporting that the human resource development ministry proposed changes in Indian copyright
law to protect artistic rights of popular Bollywood musicians).
10
Alison Arnold, Popular Film Song in India: A Case of Mass-Market Eclecticism, 7 POPULAR
MUSIC 177, 177 (1988) (noting that India is one of the largest film industries in the world, and at
the time, Bollywood released about 750 million films per year).
11
Anna Morcom, An Understanding Between Bollywood and Hollywood? The Meaning of
Hollywood-Style Music in Hindi Films, 10 BRIT. J. ETHNOMUSICOLOGY 63, 63 (2001)
(explaining that Hindi films have utilized songs and background music since the coming of sound
to film in India in the late 1940s).
12
Arnold, supra note 10, at 177.
13
adding that Hindi film songs in the 1940s started showing obvious foreign influence mixed with
traditional Indian musical elements.
14
Explaining that the music director of the 1961 Bollywood film Chhayatook the first movement
from Mozart’s G Minor fortieth symphony, changed the key and slightly altered the verse and
harmony to create a Hindi film song.

135
unknown to foreign audiences.15Over time, however, Bollywood and
other regional Indian film industries have borrowed heavily from many
sources for their hit songs.16 As India’s entertainment industry
becomes more globalized, the world gets a better look at Bollywood’s
copycat behavior.17 Hollywood has already taken notice of
unauthorized Bollywood remakes of popular Hollywood films.18
Bollywood film producers rely on the concept that there is no
copyright in ideas, which enables them to create unauthorized
derivatives of copyrighted works.19 Big names in the Bollywood music
industry continue to come under fire for copying and creating
unauthorized derivative works, despite the cry from other heavy
hitters in the industry to stop infringement.20 Even though copyright
laws exist in India, the reality of continued copyright infringement
shows a weakness in the system.21

This section addresses this problem by first looking at the

Indian copyright law and the problems associated with a lack of
enforcement. Next, it looks at the maturation of United States
copyright law and how it handles copyright infringement issues.
Finally, it briefly summarizes the international treaties that protect

15
Nnoting that though Hindi cinema music was India’s most popular music in the twentieth century,
the non-Indian population in the world remained relatively unaware of it).
16
Moulee & Bevitt, supra note 5, at 2 (saying that Bollywood’s music industry borrows freely from
many sources, both external and internal, and only recently Sony BMG sued TPS Films for
$320,000 in damages for infringing a Taiwanese composer’s tune).
17
Adding that as India joins the global entertainment industry, the emergence of foreign players may
mean a change in the copycat attitudes in Bollywood as well as better copyright protection).
18
Emily Wax, Paying the Price for Hollywood Remakes: Bollywood Facing Copyright Lawsuits,
WASH. POST, Aug. 26, 2009, at A7, available at http://www. washingtonpost.
com/ wp-dyn/content/article/2009/08/25/AR2009082503104.html (reporting that Indian
producers have knocked off American films scene-for-scene for many years and that Hollywood
studio 20th Century Fox settled with an Indian film producer for copyright infringement by
creating an unauthorized remake of “My Cousin Vinny”).
19
Moulee&Bevitt, supra note 5, at 2.
20
DikshaSahni, The Partners in Copyright Crime, WALL ST. J., Feb. 10, 2011, available at
http://blogs.wsj.com/indiarealtime/2011/02/10/the-partners-in-copyright-crime/.
21
Office of the U.S Trade Rep, 2010 [hereinafter 2010 SPECIAL 301 REPORT], available at
http://www.ustr.gov/webfm_send/1906. Despite gradual progress in improving its intellectual
property laws, India needs to change the perception that intellectual property rights offenses are
low priority. The Special 301 list is updated every year in the Special 301 Report created by the
United States Trade Representative.

136
copyright abroad and looks at other developing countries that have
combated copyright infringement successfully.

4.1 Indian Copyright Act -Protection

Indian copyright law provides protection for works created in

India.22 The Indian Copyright Act of 1957 (“Indian Copyright Act”)
stemmed from Great Britain’s copyright law.23 The Indian Copyright
Act provides copyright protection to various works, including original
literary, dramatic, and musical works, films, and sound recordings.24
The Indian Copyright Act further grants exclusive rights to the
copyright holder, authorizing the copyright holder to reproduce,
distribute, perform, and translate the work, among other rights.25
Indian copyright law extends no protection to concepts and ideas, and
only safeguards original works.26 Any violation of these exclusive
rights is considered copyright infringement.27

In infringement cases, Indian courts use a two-part test to

determine whether the copyright-holder’s rights have been infringed.28
The test requires substantial similarity between the original and
infringing works, and the challenged work to be a copy of the original

22
A Handbook of Copyright Law [hereinafter HANDBOOK OF COPYRIGHT LAW] (stating
that copyright provided by the Indian Copyright Act extends only within the Indian borders).
23
Pradip N. Thomas, Copyright and Emerging Knowledge Economy in India, 36 ECON. & POL.
WKLY. 2147, 2152 (2001) (explaining that the Indian Copyright Act was modeled from the Indian
Copyright Act of 1914, which was based on the UK Copyright Act of 1911).
24
Copyright (Amendment) Act, 1957, No. 14, § 13-1, Acts of Parliament, 1992 (India)
[hereinafter Indian Copyright Act].
25
Id. § 14 (defining ‘copyright’ as giving the copyright holder the exclusive right to reproduce,
distribute, make a film or sound recording, translate, or adapt the copyrighted work); see also
HANDBOOK OF COPYRIGHT LAW, supra note 22, at 8 (noting that a copyright in a musical
work includes the exclusive rights to reproduce the work, to issue copies of the work to the public,
to perform the work publicly, to communicate the work to the public, to make a sound recording of
the work, and to translate or adapt the work).
26
Handbook of Copyright Law, supra note 22, at 3 (mentioning that copyright specifically does not
apply to titles, names, slogans, factual information, plots, ideas or concepts).
27
Id. at 15. Common acts of infringement include making unauthorized copies, performing the
copyrighted work without permission, importing infringing copies into India, distributing
infringing copies that harm the copyright owner’s interest in the work, and any public exhibition of
the infringing copies.
28
K. M. Gopakumar& V. K. Unni, Perspectives on Copyright: The ‘Karishma’ Controversy, 38
Economic Political and Weekly 2935, 2935 (2003); see Eastern Book Co. v. Modak, (2007) 1
S.C.C. 14, 17 (India) (explaining that one approach to determining whether infringement has
occurred is to see whether the plaintiff’s work as a whole is original and protected by copyright,
and then to “inquire whether the part taken by the defendant is substantial.”).

137
work.29 The Indian Copyright Act provides civil remedies for a
copyright holder in an infringement suit, which includes injunctions
and damages, with the costs of proceedings determined by the court’s
discretion.30 Additionally, the Indian Copyright Act also makes
copyright infringement a criminal offense, punishable by
imprisonment and fines.31

Further, the Indian Copyright Act protects any foreign works

that are the product of countries mentioned in the International
Copyright Order.32 The International Copyright Order safeguards
works of nationals of countries included in the Berne Convention, the
Trade Related Aspects of Intellectual Property Rights Agreement
(“TRIPS Agreement”), and the Universal Copyright Convention.33 The
Berne Convention aims to protect the rights of authors’ literary and
artistic works as effectively as possible.34 Several countries are
members of the Berne Convention, and by joining, these nations
constitute a Union that pledges to protect authors’ literary and artistic
works.35 Similarly, the TRIPS Agreement seeks to protect its member
nations’ intellectual property rights by requiring each member nation
to offer a fellow member country’s nationals the same treatment as it

29
Gopakumar & Unni, supra note 28, at 2953 (explaining that the courts require sufficient similarity
between the infringing and original works, and the infringing work to be a derivative of the
copyrighted work).
30
Indian Copyright Act § 55-1; see Lahari Recording Co. v. Music Master Audio Video Mfg. Ltd.
(2002) 3 M.L.J. 912, ¶ 22 (Mad.) (explaining that there are two types of damages available to a
copyright owner, under section 55 of the Indian Copyright Act for infringement, and section 58 for
conversion, but that damages can be granted only if infringement is established).
31
Indian Copyright Act § 63, see also Gopakumar & Unni, supra note 28, at 2935 (adding that the
criminal remedies encompass imprisonment, fines, seizure of the infringed copies, and delivery of
said copies to the copyright owner).
32
Handbook of Copyright Law, supra note 22, at 13 (explaining that foreign works are treated and
protected as Indian works if the foreign works are products of countries included in the
International Copyright Order); see also International Copyright Order, 1999, S.O.228(E), Acts of
Parliament, 1999 (India) available at (extending protection of the Indian Copyright Act to all
countries listed in the International Copyright Order).
33
Handbook of Copyright Law, supra note 22, at 13.
34
Berne Convention for the Protection of Literary and Artistic Works (Sept. 28, 1979)
[hereinafter Berne Convention], available at http://www.wipo.int/treaties/ en/ip/berne /trtdocs
_wo001.html.
35
Id. at art. 1.

138
would to its own nationals with regard to IPR protection.36 The
Universal Copyright Convention follows the lead of the Berne
Convention and requires that each contracting state make the effort to
provide satisfactory and effective copyright protection to authors of
literary, scientific, and artistic works.37 India also has membership
with several international conventions on copyright and neighboring
rights so that Indian works are protected abroad.38

India’s efforts at improving copyright enforcement in recent

years consist of a copyright enforcement advisory board to educate
Indian law enforcement about the copyright law.39 The Indian
government set up the Copyright Enforcement Advisory Council to
review enforcement of the Indian Copyright Act and to advise on
measures for better enforcement.40 In spite of this advisory board,
there continues to be a lack of enforcement with respect to monitoring
violations of copyrighted musical works, which gives Indian music
directors and composers reason to worry about protection of their own
works.41 Further, India amended its copyright statute in 1994 in

36
Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994,
Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Part I, art. 3.1,
Legal Instruments—Results of the Uruguay Round, 33 I.L.M. 1125, 1869 U.N.T.S. 299
[hereinafter TRIPS], available at http://www.wto.org/english/docs_e/legal_e/27-trips.pdf.
37
Universal Copyright Convention, Aug. 11, 1910, last revised in Paris, July 24, 1971, 6 U.S.T.,
atart. I, available ahttp://portal.unesco.org/en/ev.php- URL_ID =15241 & URL _DO =DO
_TOPIC & URL_ SECTION=201.html. access on 15.04.2014
38
Handbook of Copyright Law, supra note 22. The Indian Copyright Act provides copyright
protection only within the borders of the country, and in order for Indian works to have protection
internationally, India became a member of the Berne Convention, the TRIPS Agreement,
the Universal Copyright Convention, among others.
39
Mrinalini Das, Intellectual Property Rights, ASSAM TRIBUNE (India), Feb. 12, 2009, available
at http://www.assamtribune.com/scripts/details.asp?id=feb1009/edit3 (reporting that
public awareness should be made about intellectual property rights protection, and as an answer to
raise such awareness, India established its Copyright Enforcement Advisory Council to deal
with copyright issues).
40
Rajya Sabha, Steps to Check Piracy in Cyber World, Press Information Bureau, (July 30, 2009),
http://pib.nic.in/newsite/erelease.aspx?relid=51268 (adding that the Copyright
Enforcement Advisory Council advises on both the implementation of the law as well as policy
measures).
41
Raghavan, (reporting that famous Indian film music composer Ilaiyaraja licensed his
compositions to a Malaysian music company because various uncontrolled media in India were
misusing his creations without his permission).

139
response to piracy threats,42 and continually tries to align its
copyright laws to match international standards of intellectual
property rights (“IPRs”) protection.43

Despite providing copyright protection to domestic and foreign

works, creating enforcement methods, India still has difficulties in
enforcing its copyright laws.44 The United States recognizes this issue
by placing India in the Special 301 “priority watch list” because of the
meager protection afforded to intellectual property rights in India.45
The Special 301 Report takes note of foreign countries’ intellectual
property rights’ protection and enforcement and works with the
United States’ trading partners to address concerns where intellectual
property protection is lackluster.46 Even though India proposed
amendments to existing copyright laws both in 1994 and in 2010, it
still remains on the United States’ “priority watch list” of countries
with poor intellectual property protection.47The “priority watch list” is
important because it monitors India’s problem with copyright
infringement and proposes enforcement and legislative techniques to
tackle the problems.48 India’s failure to implement monitoring and
enforcement provisions to domestic works to determine whether such
works are truly original continues to hinder the strength of its

42
Thomas, at 2152 (noting that the Indian Copyright Act has been amended in response to piracy
and to comport with international standards of copyright).; see also 2010 SPECIAL 301 REPORT,
(listing several methods for India to improve its copyright laws in order to be in line with
international standards).
43
2010 SPECIAL 301 REPORT, (reporting that India continues to make gradual progress in
improving its IPR infrastructure and enforcement, but adding that India needs to amend its
copyright laws to comply with international standards).
44
Reporting that India lacks effective enforcement of its intellectual property laws despite making
some improvements, hence India remaining on the “priority watch list” for 2010).
45
OFFICE OF THE U.S. TRADE REP., 2011 SPECIAL 301 REPORT 1 (2011) [hereinafter
2011 SPECIAL 301 REPORT], available at http://www.ustr.gov/webfm_send/2841.
46
OFFICE OF THE U.S. TRADE REP., 2011 SPECIAL 301 REPORT 1 (2011) [hereinafter
2011 SPECIAL 301 REPORT], available at http://www.ustr.gov/webfm_send/2841.
47
Lalit K. Jha, India, 10 Others on U.S. Watch List for Inadequate IPR Protection, ECON. TIMES,
May 1, 2010, available at http://articles.economictimes.indiatimes.com/2010-05-
01/news/27618046_1_ipr-regime-protection-or-enforcement-patents (reporting that the U.S. wants
India to amend its copyright laws to be in line with international standards and it is on the “priority
watch list” for not providing adequate protection for intellectual property rights); 2010 SPECIAL
301 REPORT, supra note 21, at 26 (noting that India will remain on the Priority Watch List for
2010).
48
2010 SPECIAL 301 REPORT, (noting that India needs to address several flaws in its IPR
enforcement and legislative regimes and suggesting methods to fix the problems).

140
copyright law.49 The above illustrations show that while India provides
copyright protection for domestic works of creativity, it still fails to
enforce the law to its fullest extent.

Copyright infringement in India occurs in spite of legislation

that grants protection to copyright holders and provides damages for
infringement of copyrighted works. Despite amendments made to the
Indian Copyright Act in 1983 and 1994, India still finds itself on the
“priority watch list” year after year because of ineffective enforcement
of its copyright laws. In 2010, an amendment to the Indian Copyright
Act (“2010 Amendment”) was submitted to the Indian Parliament.
The 2010 Amendment aimed primarily to offer authors and music
lyricists royalties and other benefits from commercial exploitation of
their work.50 The Indian Copyright Act, prior to the 2010 Amendment
allowed the royalties to vest with music firms and film producers.
Despite such an amendment and attempts to enforce the law, India
still does not meet the criteria established by authorities such as the
International Intellectual Property Alliance (“IIPA”) and the Special 301
Report.51

4.1.1 The Positive Effects of India’s Copyright Laws.

India is home to a booming entertainment industry.52 Within

this industry are composers and lyricists who work on the many
songs that make up an Indian film.53Until the proposed 2010
Amendment, composers and lyricists received a small share of

49
Explaining that despite improved commitment in some industries regarding piracy and better
implementations of intellectual property laws, piracy still remains rampant and enforcement is
weak).
50
Manish Ranjan & Santosh K. Joy, Draft Copyright Bill Introduced, Could Transform Film, Music
Biz, MINT (Apr. 19, 2010), http://www.livemint.com/2010/04/19221428/Draft-copyright-Bill-
introduce.html.
51
International Intellectual Property Alliance, India 2011
52
PriyaJaikumar, Bollywood Spectacular, 77 WORLD LITERATURE TODAY 24, 24 (2003),
available at http://www.jstor.org/stable/40158170
53
Jonaki Ray, Who is Lord of the Rings?, TIMES INDIA, Sept. 9, 2005, available at
http://timesofindia.indiatimes.com/city/ahmedabad-times/Who-is-lord-of-the-
rings/articleshow/1224998.cms (reporting that generally in the film industry, music composers and
lyricists do not earn their share of the royalties).

141
royalties for the work they did for Indian films.54 In addition to
increasing the royalty rate for authors, composers and lyricists, the
2010 Amendment conforms to international treaties so that Indian
copyright will be protected abroad.55

The Indian government has amended the Indian Copyright Act

on previous occasions to keep up with technological changes.
Additionally, big names in the Indian film and music industry have
voiced their opposition to music copyright infringement. Awareness
among the top names in the Indian film and music industry of copying
previously copyrighted songs has grown, and peers are not afraid to
speak up about the violations. When film composers notice their
collaborators infringing existing works, it reflects poorly on the
creative output of Indian composers and projects the view that profit
is more important than producing a truly original, creative piece. The
increasing knowledge that the Indian film industry infringes copyright
has awakened a desire to foster originality in Indian film music.

4.1.2 Indian Copyright Law -Several Flaws.

Even with a growing awareness of copyright infringement in the

Indian film and music industries law enforcement officials and
agencies do not completely perceive the importance of copyright
protection. Further, many persons, particularly the producers, in the
Indian film industry do not support the 2010 Amendment.
Although the 2010 amendment will result in positive effects for
creative artists and will align more with international standards, the
proposed amendment is vague about definitions of “equal rights” to

54
Avinash Celestine, Lyricists, Composers Get a Boost in Royalty Battle, ECON. TIMES, Nov. 26,
2010, available at http://articles.economictimes.indiatimes.com/ 2010-11- 26 /
news/ 27592919_1_lyricists-royalties-composers
55
NandiniVaish, Wronging a Right, INDIA TODAY (June 26, 2010),
http://indiatoday. intoday.in/site/story/wronging-a-right/1/103029.html.

142
lyricists and composers56 and with respect to royalties when
ownership of the work is owned by different people.57

Apart from the problems associated with the 2010 Amendment,

the Indian legal structure only weakly enforces the copyright laws.
Copyright infringement is not well monitored by criminal enforcement
and IPR cases are considered low-priority offenses in the courts. The
Indian government gives its entertainment industry freedom to do
business as it wishes, which hampers the government’s ability to
enforce intellectual property rights. The Indian Copyright Act
establishes copyright infringement as a criminal offense, but
ineffective enforcement of copyright infringement and other IPR suits
halts the process and also disregards the copyright holder’s right to
have her day in court. While the Indian entertainment industry profits
from creating unauthorized derivatives of copyrighted works58, the
United States stands to lose from such actions. Further, if protection
of copyrighted works continues to be careless, then India will deter
foreign investments by multinational corporations.59 As a result the
United States encourages India to improve its intellectual property
rights regime so that both countries can gain from better protection.60

56
BhushaNagpal, IBF Protests Proposed Amendments to Copyright Act, RADIO & MUSIC (Nov.
26, 2009), http://www.radioandmusic.com/content/editorial/news/ibf-protests-proposed-
amendments- copyright-act
57
Vaish, supra note 108 (explaining that Indian IP lawyers worry that the 2010 Amendment does not
clearly set out exactly who gets the royalties when several people claim ownership to a musical
work).
58
Partners in Plagiarism, FIN. EXPRESS (Aug. 10, 2007), http://www. financial express.com/
news/ partners-in-plagiarism/209513/
59
Agence France-Presse, U.S. Pushes India on Copyright Enforcement, INDUSTRYWEEK.COM
(Jun. 18, 2009), http://www.industryweek.com/articles/u-s-_pushes _india _on
_copyright_enforcement_19425.aspx
60
Pannu, supra note 124 (indicating that Kirk noted that India violated arts and music rights as well
and if India improved its intellectual property rights, India would stand to gain from strengthening
its existing rights rather than allowing the violations to continue); see also INDIA 2011 SPECIAL
301 REPORT, , at 36–37 (explaining that because of India’s ineffective enforcement of
copyright and other IP laws, both India and the United States’ markets in the entertainment and
software industries have faced losses).

143
4.1.3. Indian Copyright Protection -Infrastructural

Though India’s status in the global economy is growing, it

remains a developing country.61 India’s increasing awareness of
copyright infringement within its film industry, coupled with
increasing threats of piracy are good motivations to advance
enforcement India’s copyright and other intellectual property laws.62As
mentioned earlier, the TRIPS Agreement offers a structure for
developing countries to ensure their IPRs comply with appropriate
regulations. Member nations such as Malaysia and Taiwan63 have
positively responded to piracy issues and reorganized their respective
IP legal structures. Recent amendments to the Malaysian Copyright
Act aspire to grant greater royalty rights to musicians and to act
against copyright infringement.64 By showing efficiency and deference
to IP infringement cases, Malaysia attracts foreign investment. The
specialized IP courts in Malaysia heard 68 percent of the cases in
2009, compared to 14.6 percent the previous year. A backlog in case
adjudication, however, has stifled the IP courts in the past
year.65Despite Malaysia’s increases in copyright protection, the
country remains on the Special 301 “ordinary watch list. The
International Intellectual Property Alliance recommended several
suggestions for the Malaysian government to implement in order to
improve Malaysia’s status as a strong protector of IPRs. Malaysia’s
efforts at improving its copyright law enforcement have suffered

61
A Bumpier But Freer Road, ECONOMIST, Sept. 30, 2010, at 75–76, available
athttp://www.economist.com/node/17145035
62
SharmilaGanesan-Ram, India Among Top 10 Online Pirates, TIMES INDIA, July 5, 2010 (writing
that Hollywood and Bollywood studios formed a coalition called Alliance Against Copyright Theft
to thwart instances of film piracy in India).
63
TAIWAN 2010 SPECIAL 301 REPORT, at 400 (noting that in 2009, Taiwan was removed from
the Special 301 “Watch List” because of the Taiwanese government’s effectiveness in
curbing piracy).
64
V. Vasudevan, et al., Copyright Tribunal to Handle Royalty Issues Soon, NEW STRAITS TIMES
(Malay.), Apr. 1, 2010, at 15, available at http://www.mfact.org/ Press_Room/ Newspaper
Cuttings/ 2010/Apr10/English/20100401NST_Copyright
TribunalToHandleRoyaltyIssuesSoon.pdf.
65
INT’L INTELL. PROP. ALLIANCE, MALAYSIA 2011 SPECIAL 301 REPORT 226 (2011)
[hereinafter MALAYSIA 2011 SPECIAL 301 REPORT], available
athttp://www.iipa.com/rbc/2011/2011SPEC301MALAYSIA.pdf (reporting that cases from five
years ago were only just being disposed of by the Malaysian IP courts).

144
setbacks, but it left the “priority watch list.66 India’s attempt at
passing the 2010 Amendment can be construed as a small step in
following Malaysia’s copyright clean-up action, directed to getting
India off the “priority watch list.”

The Taiwanese film and music industries receive ample

cooperation in taking down infringing material from the Internet.
Taiwan created a successful enforcement regime for IPRs, which
helped remove the country from the Special 301 “watch list.” Special
task forces were set up to police infringement of film, music, and
books through file-sharing. In spite of Taiwan’s efforts and
effectiveness at enforcing its copyright law, piracy remains a problem.
Further, despite the protection of copyright laws, the length of the
litigation process fails to stop infringement in time. IPR protection
becomes a means to prevent competitors from entering the market
rather than a method to protect copyright owners from infringers.
Efforts to improve Taiwan’s IPR protection are stunted by continuing
piracy problems. The above examples show that countries such as
Malaysia and Taiwan present good examples to India for improving
IPR enforcement and deterring infringement. Nevertheless, these
countries also illustrate the hard and continuous work necessary to
maintain a strong and successful IPR enforcement regime.

4.2 The United States - Strong Copyright Protection

Copyright law in the United States aims to foster and protect

creativity.67 The United States recognized the importance of
promoting innovation and creativity when drafting the Constitution
and subsequently provided protections to authors through the Patent

66
Lee Shi-Ian, Malaysia off the Priority Watch List for Movies, Music, NEW STRAIT TIMES
(Malay.), Oct. 3, 006, at 6, available at http://findarticles.com/p/news-articles/new-straits-
times/mi_8016/is_20061003/malaysia-priority-watch-list-pirated/ai_n44337832/ (reporting that
Malaysia was off the international “priority watch list” after stringent enforcement measures took
effect against copyright infringement and piracy).
67
SIVA VAIDHYANATHAN, COPYRIGHTS AND COPYWRONGS 21 (New York Univ. Press
2001).

145
and Copyright Clause.68 The Copyright Act of 1790 (“1790 Act”) was
the first statutory copyright law in the United States, requiring
registration for protection of a printed work.69 The current 1976 Act
grants federal protection to both published and unpublished
works.70 The 1976 Act specified that a work had copyright from
the moment it was created71, and it granted several exclusive rights to
a copyright holder.72 The rights to distribute and to authorize
reproduction of works are two of the rights included in Section 106’s
“bundle of rights.73 The 1976 Act also, however, establishes several
limitations on such rights.74

Copyright provides the author with control over his work75 and
the bundle of rights listed in the 1976 Act aim to deter infringement of
the copyright protections of a work.76 The 1976 Act deems anyone
who violates a copyright owner’s exclusive rights to be an infringer of

68
U.S. CONST. art. I, § 8, cl. 8; J.A.L. STERLING, WORLD COPYRIGHT LAW 12 (Thompson
Reuters Ltd, 3d ed. 2008) (noting that before the Constitution was adopted in 1787, twelve of the
thirteen states had passed laws that granted rights to authors with regards to printing their works,
and such laws were similar to the British Act of 1710).
69
STERLING, supra note 51, at 12 (stating that based on the Copyright Clause in the U.S.
Constitution, Congress passed the first U.S. Copyright Act in May 1790, which gave authors and
their successors in title the sole right and liberty of printing their works).
70
LINDA A. TANCS, UNDERSTANDING COPYRIGHT LAW: A BEGINNER’S GUIDE 2
(Oxford Univ. Press 2009) (noting that effective Jan. 1, 1978, the Copyright Act of 1976 was a
major overhaul of copyright law, even though revisions had been made to the 1909 Act to keep up
with the changing technologies).
71
Explaining that copyright exists in a work from the moment it is created and is fixed in a tangible
medium of expression).
72
Explaining that a copyright guarantees an owner certain rights and Section 106 of the 1976 Act
gives a copyright owner the exclusive right to exercise the “bundle of rights.”).
73
17 U.S.C. § 106 (2006). The owner of the copyright has the exclusive rights to authorize
reproduction, derivative works, distribution, public performance of the work, public display of the
work, and in the case of sound recordings, to perform the work publicly by means of a digital
audio transmission.
74
STERLING, supra note 51, at 546 (stating the limitations in the 1976 Act include those
concerning moral rights, fair use, limitations on the copyright owners’ exclusive rights in sound
recordings, among others); TANCS, supra note 53, at 4 (noting that a copyright owner is conferred
a “bundle of rights,” but each of these rights have some select limitations and are not absolute).
75
17 U.S.C. § 106; 4 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT
§ 8.01[A] (2010) [hereinafter NIMMER] (explaining that the rights under the Copyright Act
are those of express enumeration and the rights are the same for an author whether the work was
published in the 1909 Acts reign or after the 1976 Act came into use).
76
17 U.S.C. § 106; 4 NIMMER, supra note 58, § 8.01[A] (adding that the current Act’s grant of
exclusive rights to the copyright owner implies any unauthorized exercise of those rights
constitutes infringement, and this fills up a void that existed in the 1909 Act because
“infringement” was not defined in the old Act).

146
the copyright.77 Similar to Indian copyright law, the 1976 Act requires
a two-part test to establish copying in an infringement claim.78 One
goal of the 1976 Act is to protect original creative works.79 In
infringement suits, a copyright holder must show that he or she owns
a valid copyright and show proof of copying.80 Copying can be
established by showing that the infringing work is substantially
similar to the original work and that the infringer had access to the
copyrighted work.81 Infringement that occurs outside the borders of
the United States, however, does not fall within the confines of the
1976 Act.82 If the infringing act began within the United States’
jurisdiction and continued outside its borders, then the suit may be
brought in the United States.83

In contrast to India, the United States strongly enforces its

copyright law and maximizes protection of copyright holders and their
works.84 The United States also adapts to technological changes in

77
17 U.S.C. § 501. Anyone who violates any of the exclusive rights under Section 106 is liable of
copyright infringement.
78
TANCS, supra note 53, at 49; see Gopakumar&Unni, supra note 29, at 2935 (explaining that the
Indian courts use a two-point test to establish copyright infringement by looking at substantia
similarity between the works and whether the infringing work derives from the copyrighted work).
79
17 U.S.C. § 102(a). Copyright protection exists for any original work of authorship fixed in a
tangible medium of expression, and such works of authorship include musical works with any
accompanying lyrics. See also TANCS, supra note 53, at 2 (stating that Section 102(a) of the
Copyright Act of 1976 says that a work enjoys federal copyright protection if the work is original
and fixed).
80
TANCS, supra note 53, at 49 (noting that the complaining party must establish ownership of a
valid copyright and then prove copying).
81
Id. (adding that circumstantial evidence of copying can be shown if the infringing work is
substantially similar to the original and if the infringer had access to the original shows copying).
82
17 U.S.C. § 501(a). “Anyone” is limited to any State, any State instrumentality, or any State
officer or employee. See also 4 NIMMER, supra note 58, § 17.02 (adding that U.S. copyright
laws do not have any extraterritorial application.); L.A. News Serv. v. Reuters Tel. Int’l, Ltd., 340
F.3d 926, 931–32 (9th Cir. 2003) (holding that U.S. copyright laws have no application outside
U.S. borders and that the 1976 Act does not provide actual damages for extraterritorial
infringement).
83
17 U.S.C. § 501(a); 4 NIMMER, supra note 58, § 17.02 (explaining that if part of the act of
infringement occurs in the U.S. and though the act is completed in a foreign jurisdiction, those
who contributed to the infringement within the U.S will be liable under American copyright law
and if a violation of any one of the exclusive rights of a copyrighted work under Section 106 is
completed in the United States, then that activity becomes actionable under American law).
84
Vaidhyanathan, supra note 50, at 21 (noting that copyright law provides an incentive to create and
that authors should enjoy the monopoly of promoting and selling their works for a limited time).

147
order to enforce the copyright laws.85 For example, the hot topic
issue of sampling music, where artists use small parts of other songs
in creating their own work,86 has ignited several copyright
infringement suits.87 In particular, Bridgeport Music Company has
brought hundreds of copyright infringement suits, complaining that
artists infringed by sampling.88 The United States Court of Appeals for
the Sixth Circuit (“Sixth Circuit”), in Bridgeport Music v. UMG
Recordings, held that using even a relatively small portion of an
original work is enough to constitute substantial similarity for
copyright infringement actions. In Bridgeport, one of the plaintiffs
claimed that a defendant infringed his copyrighted song. The Court
held that the jury made no error in finding that the defendant had
lifted small, but unique elements of the plaintiff’s song, which
constituted infringement. The Sixth Circuit affirmed the test that if an
ordinary observer could recognize that a song or other work is taken
from a copyrighted work, there is infringement.

The 1976 Act gives unknown and well-known musicians in the

United States to bring copyright infringement suits against
samplers.89 Funk artist George Clinton claimed that the Black Eyed

85
Peter Decherney, Copyright Dupes: Piracy and New Media in Edison v. Lubin, 19 FILM HIST.
109, 109 (2007) (noting that copyright law is where media piracy battles are fought and not only is
copyright the “metaphysics of the law,” but copyright law is the metaphysics of new media).
86
Jonna Demers, Steal this Music: How Intellecutal Property Law affects Musical Creativity vii
(University of Georgia Press 2006) (stating that the reproduction of short samples is potential
infringement if the original work is recognizable); see also VAIDHYANATHAN, supra note 50,
at 131 (writing that rap artists often “sample” bits of other artists’ melody and harmony in their
own songs).
87
Ben Challis, The Song Remains the Same: A Review of the Legalities of Music Sampling, WIPO
MAG., Dec. 2009, at 16, available at http://www.wipo.int/wipo_magazine/en/2009/
06/article_0006.html (noting that failing to obtain a license before sampling cost several artists,
including Dr. Dre, Truth Hurts, The Verve, and Vanilla Ice were sued for using samples in their
songs without obtaining permission from the original copyright holder, resulting in these artists
losing their royalties or their music from store shelves).
88
Bridgeport Music, Inc. v. UMG Recordings, Inc., 585 F.3d 267, 272 (6th Cir. 2009) (noting that
plaintiff filed several hundred copyright infringement actions to recover damages, injunctive relief,
and declaratory judgments from some 800 defendants in the music industry for copyright
infringement).
89
Associated Press, George Clinton Sues Black Eyed Peas Over ‘Shut Up,’ ABC NEWS (Dec. 15,
2010), http://abcnews.go.com/Entertainment/wireStory?id=12394165 (reporting that funk
pioneer George Clinton sued the Black Eyed Peas for sampling his music without his permission).

148
Peas used elements of his song, (Not Just) Knee Deep, in their song
“Shut Up. Further, rapper 50 Cent also received complaints of
infringing another rapper’s rights to an instrumental track.90 As
shown by these examples, copyright law in the United States exists to
protect copyright holders’ bundle of rights and to vindicate these
rights through appropriate enforcement of the laws.

4.2.1 The United States role for model copyright law

The United States provides comparatively strong enforcement of

its copyright law. In the United States, famous artists frequently file
infringement suits or have such claims brought against them.91
Artists and the recording companies are aware of their copyrights,
ensuring that infringement suits are brought frequently and without
regard to whether the artist is famous or unknown to the public. In
spite of strong enforcement policies and monitoring copyright
infringement, the United States’ copyright laws have been criticized by
some as providing too much protection. The Copyright Term
Extension Act (“CTEA”), which extended the copyright protection term
from fifty to seventy years,92 was criticized by the petitioners in
Eldred v. Ashcroft as exceeding Congress’s powers.93 Increasing a
work’s copyright term by twenty years means the work stays out of
the public domain for longer than intended. The Petitioners argued
that Congress exceeded its authority by enlarging the term of
copyright protection for published works with existing copyrights. The
Court, however, held that Congress followed historical practice by
“keeping the duration provisions of the 1976 Act largely in place” and
simply added twenty years to each of the copyright terms.

90
Associated Press, 50 Cent Sued for Copyright Infringement, BILLBOARD.COM (Dec. 16, 2010),
http://www.billboard.com/news/50-cent-sued-for-copyright-infringement-
1004134746.story#/news/50- cent-sued-for-copyright-infringement-1004134746.story (reporting
that rapper Tyrone Simmons filed a copyright infringement suit against 50 Cent for using an
instrumental track to which Simmons had bought the exclusive rights) accessed on 15.04.2014..
91
M. WILLIAM KRASILOVSKY & SIDNEY SHEMEL, THIS BUSINESS OF MUSIC 197
(Robert Nirkind& Sylvia Warren eds. 10th ed. 2007)
92
Copyright Term Extension Act, §§ 102–103; see also Catherine Seville, Copyright Term: Who’s
Taking the Mickey?, 63 CAMBRIDGE L.J. 291, 292 (2004).
93
Eldred v. Ashcroft, 537 U.S. 186, 193 (2003)

149
 In his dissent, Justice Stevens argued that the purposes of
encouraging new inventions and the overriding interest in adding
knowledge to the public domain are not served by increasing the term
of protection. Similarly, Justice Breyer added that the Copyright
Clause does not exist to provide a “private benefit,” but rather to
“stimulate artistic creativity for the general public good. The Copyright
Clause, he said, limited the copyright term so that the benefitting
public would not be permanently deprived of the artist’s product.
Where generally United States’ copyright law provides ample
protection for owners of creative works, Eldred suggests that there
might be something as too much copyright protection, which stifles
the benefits to the public of works in the public domain and any
resulting creative activity. In addition, as shown in the examples of
George Clinton, the Black Eyed Peas, 50 Cent, and Coldplay, high-
profile musicians bring suits against other music artists constantly in
the United States.94 In the United States, copyright owners do not
hesitate to take alleged infringers to court, because of the
exclusivity for the copyright holder by the 1976 Act. Despite
criticism of overprotection, the United States exhibits consistency and
reliability in its enforcement of the 1976 Act.

4.2.2 TEACH Act95.

The Technology, Education and Copyright Harmonization Act of

2002, known as the TEACH Act, is an Act of the United States
Congress. The importance of the TEACH Act stems from the previous
copyright laws that allow educators to copy documents or use
copyrighted materials in a face-to-face classroom setting. Because of
the growth of distance education that does not contain a face-to-face
classroom setting, revisions to these laws, particularly sections 110(2)

94
Associated Press: George Clinton Sues Black Eyed Peas, supra note 76; see also Phil Miller,
Coldplay Rocked by Guitarist’s Claim of Plagiarism, HERALD (Glasgow), Dec. 6, 2008,
at 10, available at http://www.heraldscotland.com/coldplay-rocked-by-guitarist-s-claim-of-
plagiarism- 1.896712
95
The Technology, Education and Copyright Harmonization Act of 2002, known as the TEACH Act,
is an Act of the United States Congress.

150
and 112(f) of the U.S. Copyright Act, needed to be made. It was signed
into law by President George W. Bush on November 2, 2002. The
TEACH Act clarifies what uses are permissible with regard to distance
education. Furthermore, the TEACH Act outlines what requirements
the information technology staff and students of a university must
abide by in order to be in compliance with the

While in some cases Fair Use Doctrine covers compliance to

copyright law, the TEACH Act clarifies what compliance measures
must be implemented with regard to distance education. This Act
permits teachers and students of accredited, nonprofit educational
institutions to transmit performances and displays of copyrighted
works as part of a course if certain conditions are met. If these
conditions are not or cannot be met, in order to be lawful, a use would
arguably have to qualify under another exception, such as fair use or
the de minimis rule, or be permitted by the copyright holder. The
implementation of this act has also implication on film and music
industry as the fair use doctrine advocated by this legislation does not
clearly detail about the use of film and music in the education
purposes. Even in the cases of such exceptions then the question of
misuse of the law has to be critically analysed.

4.2.3 Online Protection and Enforcement of Digital Trade Act96

The OPEN Act was proposed as an alternative to the PROTECT

IP Act (PIPA), which was approved by the United States Senate
Judiciary Committee in May 2011, and the closely related Stop Online
Piracy Act (SOPA), which was introduced by House Judiciary
Chairman Lamar Smith (R-TX) in November. After an initial
description on December 2 as an outline of possible approaches
written by a bipartisan group of eleven lawmakers, a draft text was
made public on December 8, 2011 in advance of a House Judiciary

96
(OPEN Act) is a bill introduced in the United States Congress proposed as an alternative to the
Stop Online Piracy Act and PROTECT IP Act, by Senator Ron Wyden of Oregon, a Democrat,
and Representative Darrell Issa of California, a Republican

151
markup of the SOPA Act the following week. The OPEN Act seeks to
stop transfers of money to foreign websites whose primary purpose is
piracy or counterfeiting, whereas SOPA and PIPA also seek to require
Internet providers and search engines to redirect users away from
viewing the sites. The PROTECT IP Act proposed to do this by blocking
domain name resolution, whereas SOPA imposes a broader
requirement for network providers to "prevent access by its
subscribers located within the United States" including blocking by IP
address and possibly deep packet inspection. OPEN places
enforcement responsibility on the United States International Trade
Commission (ITC), which currently adjudicates patent-related
disputes, rather than the United States Justice Department. The ITC
would be given power to collect fees from complainants and to hire
additional personnel for investigations.

Proponents of the OPEN Act describe it on the Keep The Web

Open website as a way to protect the rights of artists like SOPA and
PROTECT IP, but differing from its rivals by not introducing new
internet police powers or undermining calls for open internet in closed
societies, and by protecting legitimate internet businesses, social
media, legitimate websites and internet innovation. They say that their
proposal, but not its rivals, ensures that intellectual property cases
will be resolved by intellectual property experts, and will target the
actual criminals running foreign rogue websites. They criticize SOPA,
but not PROTECT IP, for failing to apply due process to judging
websites. The OPEN draft is backed by Web companies such as Google
and Facebook, whereas SOPA and PIPA are backed by the movie and
music industries. The Consumer Electronics Association commended
the sponsors of the bill, calling it "a quick, effective way to shut down
pirate sites without damaging legitimate companies or enriching trial
lawyers." The bill was also praised by the Computer and
Communications Industry Association. Google copyright counsel Fred
von Lohmann said for his company, "We think following the money,

152
the money that supports foreign rogue sites, is a sensible place to
start. It was quite successful in offshore gambling... We've been very
clear with members of the committee that we support that."

The OPEN draft was strongly opposed by the Motion Picture

Association of America (MPAA). The MPAA's vice president of global
policy and external affairs, Michael O'Leary, wrote in the MPAA's blog
that the bill "allows companies profiting from online piracy to advocate
for foreign rogue websites against rightful American copyright holders.
It even allows notification to some of these companies if they want to
help advocate for rogue websites." The MPAA rejects any law that fails
to block Americans' access to The Pirate Bay, a BitTorrent tracker
which survived prosecution in its home country of Sweden and
steadfastly refuses to remove information about infringing downloads
from its search index. Darrell Issa maintains that the OPEN act could
be effective against the site by targeting even overseas ad networks
placing ads on the site, though it is possible that the site could
survive without advertisements.

The Electronic Frontier Foundation (EFF) wrote that the

legislation "addresses many of the most glaring flaws in both SOPA
and PIPA" but stated that it is continuing to review and analyze the
draft. Public Knowledge deemed the bill a "marked improvement" that
would avoid the "vigilante justice" of its rivals. Center for Democracy
and Technology senior policy counsel Eric Sohn said that the bill's
definitions "appear to carefully target true bad actors--the ones who
are willfully fostering widespread infringement--while excluding
general purpose platforms and social networking services," whose
financial focus would "starve those bad actors of their financial
lifeblood, rather than pursuing the futile and costly approach of
messing with the Internet's addressing system."

Copyright Alliance executive director Sandra Aistars called the

OPEN Act "impractical for individual artists and creators" who would

153
be required to argue in Washington before the trade commission
rather than in their home jurisdictions, during a period of up to 18
months. The process would be much faster, however, for sites that fail
to reply and participate in the ITC process, according to Issac, who
note that the ITC has a "rocket docket" in which cases are heard more
quickly than any federal court. Writing in the Huffington Post, Aistars
argued that the bill placed more obstacles for individual artists than
for corporate litigants seeking patent remedies before the ITC, saying
that fees proposed for complainants in the action were
"unprecedented" and incompatible with "justice for all", while third
parties profiting from the infringement could argue for the decision to
be overturned by the Administration without paying any fee. She
further stated that the hearing officers assigned to hear cases by the
bill were not required to have intellectual property expertise, and that
the evidentiary requirement for a site owner to "willfully" commit
infringement would be a mental state impossible to prove for rogue
operators refusing to consent to U.S. jurisdiction.

Professor Eric Goldman of the Santa Clara University School of

Law reviewed the bill in detail for ArsTechnica, finding it "flawed, but
more salvageable" than "SOPA's disgustingly blatant rent-seeking" and
praising the bill's due process features and a focus on foreign trade
policy. However, Goldman also warned that the burden on U.S.-based
payment service providers and ad networks could drive business to
foreign competitors and permit domestic and foreign legal action
simultaneous with the ITC administrative proceeding, or other abuses.

Forbes ran a column denouncing the bill as "politically

untenable" and "not a viable alternative because it is a transparent
attempt to return a several year effort back to square one, while also
entangling it with thorny and debilitating congressional jurisdictional
turf battles and even thornier and glacial trade policy politics."

154
 Nonetheless, in support of OPEN, The New York Times, in an
editorial, notes "... [OPEN] gives copyright holders powerful new tools
to protect themselves. And it goes a long way toward addressing the
concerns of Internet companies, protecting legitimate expression on
the Web from over zealous content owners."

4.2.4 Problems and Issues of RIAA Case Study Analysis

* The RIAA has an evidentiary problem – more than one,

actually. First, there is the problem of linking the IP
address to a specific individual’s behavior. What defenses
could the defendants raise on this point? Are any of them
sufficient to win a dismissal before their identities are
revealed? How successful do you think they will
ultimately be?

* Assuming that the RIAA can prove that a particular

person was responsible for the activity associated with a
particular IP address, the next problem is proving the
allegations of infringement. But how hard can that be?
Media Sentry downloaded copyrighted files from the
defendants. Why is this not open-and-shut proof of
infringement? What factual links are missing from the
chain that would establish infringement as a legal
conclusion?

* The plaintiffs’ principal argument is that the “distribution”

was complete when the defendants connected to the
Internet and turned on their file-sharing programs. How
does this theory work? Would MediaSentry’s evidence
support a plaintiff verdict under this theory?

* London-Sire rejects the “making available” theory of public

distribution. Why? Where does that leave the plaintiffs?

155
 On the court’s reasoning, would the MediaSentry evidence
support a plaintiff verdict?

The defendants also argued that “digital distribution” is an

oxymoron. If the court had agreed with them, what would the
practical consequences have been? (Hint: don’t forget about the
reproduction right.) Is this a useful way of thinking about Internet-era
copyright?

4.3 World Trade Organization

The world trade organization has played an active role in

harmonisation of TRIPS and other Intellectual property rights. Though
enacting a sui generis optical disc law is not an explicit obligation
under TRIPS, however, in Part III of TRIPS rest the obligations of
member countries to provide adequate enforcement measures for
protecting intellectual property rights. It is under the ambit of
enforcement and cross-border measures that member countries facing
a high problem of optical media piracy have resorted to adopting the
optical disc regulatory law as another tool to strengthen its
enforcement arm. While Section 1 Article 41(1) sets out the general
obligations of member countries, the civil and criminal measures are
detailed in subsequent provisions. Section 4, Article 51 et seq.
mandate border control measures and Section 5, Article 61 mandate
criminal remedies of monetary fines, imprisonment, seizure, forfeiture,
destruction of infringing goods, material and implements the
predominant use of which has been for commercial piracy. The
provisions of an optical disc law fit within these enforcement
obligations of member countries. However, this obligation is selective
and is imposed only in countries that firstly, face high levels of optical
disc piracy and secondly, where the traditional anti-piracy laws are
insufficient to meet the challenges of optical disc piracy.

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4.3.1 The TRIPS Agreement -- IP Enforcement Protocols

Soundtrack scores, platinum selling songs, and any other

musical compositions created solely in the United States are protected
from infringement domestically, but such measures do not extend
extraterritorially.97 In lieu of the domestic copyright laws that stop at
a given country’s borders, a host of international IPR treaties and
conventions protect a country’s copyrighted work outside its
boundaries.98 Both the United States and India, for example, are
members of the TRIPS Agreement. The TRIPS Agreement requires that
a member nation offer a fellow member country’s nationals the same
treatment as it would to its own nationals with regard to IPR
protection. Article Fourteen of the TRIPS Agreement specifically seeks
to protect producers of sound recordings and performers. Where the
extraterritoriality provision of the 1976 Act does not reach, the TRIPS
Agreement exists to secure protection of a copyright holder’s exclusive
rights outside his country.99 The TRIPS Agreement addresses the
concerns of effective and adequate trade-related IPR protection.
Further, the TRIPS Agreement requires each member nation to satisfy
minimal national enforcement requirements for rights holders.

The TRIPS Agreement states that a member nation need not

extend IPR protection beyond what the TRIPS Agreement requires,
though a member nation may include extensive protection if
necessary. Developing countries, such as India, comply with the
TRIPS Agreement’s standards without improving any existing Indian
IPR legislation.100 Nevertheless, the TRIPS Agreement offers a
structure for developing countries to build their intellectual property

97
4 NIMMER, supra note 58, § 17.02 (stating that “[an]y purely extraterritorial conduct is not
actionable in American courts”).
98
Martin Kretschmer and FriedmannKawohl, The History and Philosophy of copyright in Music and
Copyright (Simon Frith& Lee Marshall eds. 2004)
99
Michael L. Doane, TRIPS and International Intellectual Property Protection in an Age ofAdvancin
Technology, 9 AM. U.J. INT’L L. & POL’Y 465, 481 (1994)
100
JayashreeWatal, Implementing the TRIPS Agreement: Policy Options Open to India, 32 ECON.
& POL. WKLY 2461, 2461 (1997) (noting that the TRIPS Agreement lays down standards for
various types of intellectual property and India, as a member, already was in compliance with the
TRIPS Agreement standards with its existing laws).

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laws and enforcement. One example of a developing country improving
its intellectual property infrastructure and enforcement is Malaysia.101
In order to fight illegal trade of counterfeit goods and piracy, the
Malaysian government improved the legislative framework. Malaysia
introduced specialized intellectual property courts within its judicial
system and added border provisions to curb copyright and
trademark infringement. Malaysia also formed a Special Task Force to
combat counterfeiting at a ministerial stage and encouraged inter-
agency cooperation to create awareness of illegal trade and
counterfeiting at all levels.

Another country that has slowly improved its copyright law

enforcement is Taiwan.102 When Taiwan was on the “priority
watch list,” it took measures to continue improving its IPR
protection in order to get off the list.103 The Taiwanese government
continued to push IPR protection as an important agenda. Like
Malaysia, Taiwan established an IP enforcement task force that dealt
with over a thousand infringement cases and seized over $60 million
worth of counterfeit goods. Taiwanese government officials remain
committed to improving IPR protection, and have also made efforts to
increase public awareness about piracy. Because these other
countries are making an enhanced effort to improve its copyright laws
and enforcement of said laws, India should also make a better
effort to bolster its copyright laws.

4.4 Optical Disc Law-Legal Measure

The WIPO advisory Committee on enforcement of Industrial

Property Rights observed that the optical disc regulation offers a cost
effective way to tackle the piracy problem in this medium at this
source. Companies that manufacture, duplicate and export VCDs,

101
Cathy Jewell, Country Focus: Where There’s a Will, There’s a Way!, WIPO MAG., Sept. 2009, at
24, available at http://www.wipo.int/wipo_magazine/en/2009/05/article_0010.html.
102
International Intellectual Property Alliance, Taiwan, 2010
103
Stephen Norris, Taiwan Remains Committed to IPR, CHINA POST, May 3, 2003, available at
http://www.chinapost.com.tw/business/2003/05/03/37289/Taiwan-remains.html

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DVDs and music CDs will now have to obtain licences to do so. Strict
licensing norms have been proposed in the draft optical disc law
prepared by the Ministry of Information and Broadcasting in
consultation with disc-manufacturing companies and the Federation
of Indian Chamber of Commerce and (FICCI).

Currently, there are no regulations governing the manufacture,

duplication and export of discs. The proposed law will be applicable to
pre-recorded discs and also to blank optical media (discs).According to
industry estimates, India produces 350 crore units of discs and CD-
drivers annually that are used to produce music CDs, film DVDs and
video CDs.104 The Rs 1,500-crore disc-production market is expected
to reach Rs 6,000 crore by 2010, but the mounting losses as a result
of piracy has forced the government to come up with this law.
According to the draft law, there will be separate licences for the
production, duplication and export of discs."This means that the
company which gets a licence to manufacture cannot export and those
who get the licences for export may not manufacture," a senior Moser
Baer official said. Once passed, the law may result in music
companies like T-Series, Saregama, and Yash Raj Films applying for
multiple-location licences. Currently all these companies not only
manufacture their own CDs but are also engaged in commercial
duplications. According to one of the provisions of the draft law, the
government will constitute an independent competent authority on the
lines of the Telecom Regulator (TRAI). These authorities will not only
issue licences to the companies for manufacturing or export of any
recordable devices, it will also have the rights to inspect and
confiscate any equipment for a period of 30 days. "The competent
authority will also have the right to cancel any licences of the
companies if any of its officers, directors, managers, shareholders, or
partners, commit an offence involving registration conditions covered
under the law," a I & B ministry official said.

104
Matthew Schruers, The History and Economics of ISP Liability for Third Party Content, VA. L.
REV. 205 (2002).

159
 Welcoming the law, RatulPuri, executive director, Moser Baer
India Ltd, said the industry needs strict regulations for manufacturing
of discs and the optical disc law will solve the menace of piracy.
According to estimates, the film sector loses Rs 2,000 crore and music
industry Rs 700 crore every year, due to piracy. In this backdrop, the
government decided to curb the menace. The draft law has been
prepared by the members of film sector at the initiative of Government
of India. The Secretary said that the I&B Ministry is actively pursuing
the creation of a National Centre for Excellence in Animation, Gaming
and Visual Effects with a view to promote this emerging sector. The
optical disc law allows Governments to regulate the manufacturing
and replication of optical discs manufactured through the
mechanisms of licensing. An optical disc law includes four key
features: (1) registrations and licenses; (2) identification coding; (3)
criminal remedies; and (4) enforcement. The effectiveness of anti-
piracy laws depends more in being a deterrent than punitive. Since
the incidence of optical disc piracy is large, criminal sanctions under
optical disc laws include heavy fines and imprisonment. Three to four
tiers of penalties are provided, each tier of penalties dependent on the
magnitude of the offence. Optical disc laws contain provisions of
inspection, seizure, closure, forfeiture, removal, disposal of any
unlicensed equipment, raw material or optical discs. However, for
searches and seizures to be constitutionally valid, they are normally
conducted only on obtaining a warrant from a court.

However, in case of delays in obtaining a search warrant, a

search can be conducted without a warrant in order to avoid
destruction of evidence. Provisions for making forcible entry are
provided for in optical disc laws. Often enforcement officials encounter
strong and sometimes armed resistance by pirates during raids.
Therefore, forcible entry with police assistance sometimes becomes
crucial for Copyright and Optical Disc Regulation. One of the dangers
in adopting a broad optical disc law is over-regulation. There are

160
several parties involved in the process of an optical disc product with
embodied copyrighted content reaching the consumer. They include:
Copyright owner (content or data) Manufacturer (mastering, preparing
stamps, replication) Distributors (finished products) Retailers (finished
products) Consumers An optical disc law aims at regulating only the
manufacturing level in the chain (viz. manufacturers and suppliers of
raw materials). Over-regulation could lead to regulating even the
distribution channels of data embodied optical discs, the dangers of
which would be several.

4.4.1 Problems of Optical Disc Law

Optical disc piracy is unusually challenging due to the nature of

the technology and the efficiency with which it can be replicated. One
of the key reasons for the high frequency and volume of piracy is that
the manufacturing capacity exceeds legitimate demand. A large
portion of the manufacturing capacity is expended in pirated
production.

In 2001, the International Federation of the Phonogram

Industry (IFPI), an organization representing the recording industry
reported that the supply of optical disc media has substantially
outstripped legitimate demand and the resulting overcapacity has
fuelled the pirate market.105 Pirates profit from this overcapacity by
filling in the difference between legitimate and actual demand with
unauthorized reproductions of entertainment content. IFPI reported
that the most significant reason for the growth of optical disc piracy in
the last seven years was the explosion in the compact disc
manufacturing capacity around the world.106 It is precisely this
overcapacity problem that an optical disc law seeks to regulate
through the mechanisms of licensing, coding and enforcement. The

105
See IFPI Formal Submission to Australian Parliament, House of Representatives Standing
Committee on Legal and Constitutional Affairs, Terms of Reference: Inquiry into Copyright
Enforcement at 3
106
Comments are primarily based on the provisions of the Prevention of Copyright Piracy Ordinance,
1998 (Hong Kong).

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provisions of the Prevention of Copyright Piracy Ordinance, 1998 of
Hong Kong are examined in relation to the problems addressed here.

4.5 JUDICIAL PERSPECTIVES

The judiciary has played a vital role in the deciding various

cases relating to regulation of digital piracy especially pertaining to
music and film industry. Some of the leading decisions have been
extracted land an understanding of the below given judgements will
give a detailed judicial perspective of regulation of digital piracy
especially pertaining to music and film industry.

4.5.1 London-Sire Records, Inc. v. Doe107

To discover potentially infringing transfers, the plaintiffs (acting

through their trade association, the Recording Industry Association of
America, or “RIAA”) have retained a third-party investigator,
MediaSentry, Inc. (“MediaSentry”). MediaSentry essentially functions
as an undercover user of the peer-to-peer networks. It connects to the
network and searches for the plaintiff record companies’ copyrighted
files. Upon finding the files, it downloads them. MediaSentry gathers
what information it can about the computer from which the files were
downloaded (the “sending computer.”) Most crucially, that information
includes the date and time at which the files were downloaded and the
IP number of the sending computer. It can also include the user’s
name, but if given, the names are usually pseudonymous. After the
files are downloaded, the RIAA verifies that they can form the basis for
a suit. It reviews a listing of the music files that the user has offered
for download in order to determine whether they appear to be
copyrighted sound recordings. The RIAA also listens to the
downloaded music files from these users in order to confirm that they
are, indeed, illegal copies of sound recordings whose copyrights are
owned by RIAA members. The plaintiff record companies have brought
approximately forty “John Doe” cases in this Court, many – perhaps

107
London-Sire Records Incv. Doe 542 F.Supp.2d 153 (2008)

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most – designating more than one defendant, grouped by ISP. In each
case, the Court has granted expedited discovery and leave to
subpoena the ISP, recognizing that the plaintiffs’ rights may be
irreparably and unfairly prejudiced unless they are allowed to seek the
defendants’ identities. Simultaneously, however, the Court has
recognized that the defendants should have the opportunity to combat
the subpoena if they desire to do so. Therefore, the Court has ordered
that the ISP provide the individual users with notice of the lawsuit
and a short statement of some of their rights before revealing their
identities to the plaintiffs. Furthermore, the ISP may not respond to
the subpoena for 14 days after each defendant has received notice.
Only three of the defendants have elected to fight the subpoena. …
The Court held a hearing on the Motions to Quash on January 28,
2008. Shortly thereafter, the Court granted the Electronic Frontier
Foundation ("EFF") leave to file an amicus brief supporting the Motion
to Quash. …108

4.5.2 Field v. Google Inc109

This is an action for copyright infringement brought by plaintiff

Blake Field (“Field”) against Google Inc. (“Google”). Field contends that
by allowing Internet users to access copies of 51 of his copyrighted
works stored by Google in an online repository, Google violated Field’s
exclusive rights to reproduce copies and distribute copies of those
works.

On April 6, 2004, Plaintiff Field, an author and an attorney who

is a member of the State Bar of Nevada, filed a complaint against
Google asserting a single claim for copyright infringement based on
Google’s alleged copying and distribution of his copyrighted work
entitled Good Tea. Field himself had previously published this work on
his personal Web site, www.blakeswritings.com. On May 25, 2004,

108
Alice Kao, RIAA v. Verizon: Applying the Subpoena Provision of the DMCA, 19 BERKELEY TECH.
L. J. 405 (2004).
109
412 F.Supp. 2d 1106 (D. Nev. 2006)

163
Field filed an Amended Complaint, alleging that Google infringed the
copyrights to an additional fifty of Field’s works, which likewise had
been published on his personal website. Field did not seek actual
damages, but instead requested $2,550,000 in statutory damages
($50,000 for each of fifty-one registered copyrighted works) along with
injunctive relief. On September 27, 2005, Field filed a motion for
summary judgment that Google infringed the copyrighted works at
issue and that Google’s defenses based on fair use, implied license,
estoppel and the Digital Millennium Copyright Act (“DMCA”) should be
dismissed as a matter of law. Google filed a motion for summary
judgment based on non-infringement, implied license, estoppel and
fair use … Undisputed Facts Google, the Google Cache, and “Cached”
Links. Google maintains one of the world’s largest and most popular
Internet search engines, accessible, among other places, on the World
Wide Web at www.google.com Internet search engines like Google’s
allow Internet users to sift through the massive amount of information
available on the Internet to find specific information that is of
particular interest to them. There are billions of Web pages accessible
on the Internet. It would be impossible for Google to locate and index
or catalog them manually. Accordingly, Google, like other search
engines, uses an automated program (called the “Googlebot”) to
continuously crawl across the Internet, to locate and analyze available
Web pages, and to catalog those Web pages into Google’s searchable
Web index. As part of this process, Google makes and analyzes a copy
of each Web page that it finds, and stores the HTML code from those
pages in a temporary repository called a cache. Once Google indexes
and stores a Web page in the cache, it can include that page, as
appropriate, in the search results it displays to users in response to
their queries. When Google displays Web pages in its search results,
the first item appearing in each result is the title of a Web page which,
if clicked by the user, will take the user to the online location of that
page. The title is followed by a short “snippet” from the Web page in
smaller font. Following the snippet, Google typically provides the full

164
URL for the page. Then, in the same smaller font, Google often
displays another link labeled “Cached.” When clicked, the “Cached”
link directs an Internet user to the archival copy of a Web page stored
in Google’s system cache, rather than to the original Web site for that
page. By clicking on the “Cached” link for a page, a user can view the
“snapshot” of that page, as it appeared the last time the site was
visited and analyzed by the Googlebot. The page a user retrieves from
Google after clicking on a “Cached” link contains a conspicuous
disclaimer at the top explaining that it is only a snapshot of the page
from Google’s cache, not the original page, and that the page from the
cache may not be current. The disclaimer also includes two separate
hyperlinks to the original, current page. Google has provided “Cached”
links with its search results since 1998. Until this action, Google had
never before been sued for providing “Cached” links. The “Cached”
link, and the consequences that flow when a user clicks on it, is the
subject of Field’s lawsuit.

4.5.3 A & M Records, Inc. v. Napster, Inc110.

In 1987, the Moving Picture Experts Group set a standard file

format for the storage of audio recordings in a digital format called
MPEG-3, abbreviated as “MP3.” Digital MP3 files are created through
a process colloquially called “ripping.” Ripping software allows a
computer owner to copy an audio compact disk (“audio CD”) directly
onto a computer’s hard drive by compressing the audio information on
the CD into the MP3 format. The MP3’s compressed format allows for
rapid transmission of digital audio files from one computer Napster
facilitates the transmission of MP3 files between and among its users
Through a process commonly called “peer-to-peer” file sharing,
Napster allows its users to: (1) make MP3 music files stored on
individual computer hard drives available for copying by other Napster
users; (2) search for MP3 music files stored on other users’ computers;
and (3) transfer exact copies of the contents of other users’ MP3 files

110
More popularly known as the P2P file sharing case. (239 F.3d 1004 (2001))

165
from one computer to another via the Internet. 111These functions are
made possible by Napster’s MusicShare software, available free of
charge from Napster’s Internet site, and Napster’s network servers and
server-side software In order to copy MP3 files through the Napster
system, a user must first access Napster’s Internet site and download
the MusicShare software to his individual computer. Once the
software is installed, the user can access the Napster system. A first
time user is required to register with the Napster system by creating a
“user name” and password. If a registered user wants to list available
files stored in his computer’s hard drive on Napster for others to
access, he must first create a “user library” directory on his
computer’s hard drive. The user then saves his MP3 files in the library
directory, using self-designated file names. He next must log into the
Napster system using his user name and password. His music share
software then searches his user library and verifies that the available
files are properly formatted. If in the correct MP3 format, the names of
the MP3 files will be uploaded from the user’s computer to the Napster
servers. The content of the MP3 files remains stored in the user’s
computer. Once uploaded to the Napster servers, the user’s MP3 file
names are stored in a server-side “library” under the user’s name and
become part of a “collective directory” of files available for transfer
during the time the user is logged onto the Napster system. The
collective directory is fluid; it tracks users who are connected in real
time, displaying only file names that are immediately accessible.
Napster allows a user to locate other users’ MP3 files in two ways:
through Napster’s search function and through its “hotlist” function.
Software located on the Napster servers maintains a “search index” of
Napster’s collective directory. To search the files available from
Napster users currently connected to the network servers, the
individual user accesses a form in the music share software stored in
his computer and enters either the name of a song or an artist as the
111
Jeff Langenderfer & Don Lloyd Cook, Copyright Policies and Issues Raised by A&M Records v.
Napster: “The Shot Heard “round the World” or ‘not with a Bang but a Whimper?,’” 20
JOURNAL OF PUBLIC POLICY & MARKETING 280 (2001).

166
object of the search. The form is then transmitted to a Napster server
and automatically compared to the MP3 file names listed in the
server’s search index. Napster’s server compiles a list of all MP3 file
names pulled from the search index which include the same search
terms entered on the search form and transmits the list to the
searching user. The Napster server does not search the contents of
any MP3 file; rather, the search is limited to “a text search of the file
names indexed in a particular cluster. Those file names may contain
typographical errors or otherwise inaccurate descriptions of the
content of the files since they are designated by other users.” Napster
contends that its users do not directly infringe plaintiffs’ copyrights
because the users are engaged in fair use of the material. See 17
U.S.C. § 107. The fair use of a copyrighted work . . . is not an
infringement of copyright.”). Napster identifies three specific alleged
fair uses: sampling, where users make temporary copies of a work
before purchasing; space-shifting, where users access a sound
recording through the Napster system that they already own in audio
CD format; and permissive distribution of recordings by both new and
established artists. The district court considered factors listed in 17
U.S.C. § 107, which guide a court’s fair use determination. These
factors are: (1) the purpose and character of the use; (2) the nature of
the copyrighted work; (3) the “amount and substantiality of the
portion used” in relation to the work as a whole; and (4) the effect of
the use upon the potential market for the work or the value of the
work. See 17 U.S.C. § 107. The district court first conducted a general
analysis of Napster system uses under § 107, and then applied its
reasoning to the alleged fair uses identified by Napster. The district
court concluded that Napster users are not fair users.112

112
Richard Stern, Napster: A Walking Copyright Infringement?, 20 MICRO, IEEE 4 (2000).

167
4.5.4 Sony v. Universal113

The Supreme Court did not hold that all uses of VCRs were
lawful, only that some were. It was substantially undisputed that
some VCR owners could and would use them to infringe. The Court
therefore focused on the nature of the secondary liability claim that
would tie Sony to VCR owners’ infringements: If … liability is to be
imposed on Sony in this case, it must rest on the fact that it has sold
equipment with constructive knowledge of the fact that its customers
may use that equipment to make unauthorized copies of copyrighted
material. This is a contributory infringement theory: it bases liability
on knowingly doing something that meaningfully assists in someone
else’s act of infringement. Make sure you understand why a vicarious
infringement theory was a bad fit for the facts. Once Sony sold a VCR
to a retailer, it had no further “right and ability control” what
happened with that VCR114. Sony was not in a position to knock on a
consumer’s doors and seize a VCR that was being used to infringe.
Notice also that this contributory infringement theory rests on
constructive knowledge. Things might be very different if Sony had
actual knowledge of a customer’s planned acts of infringement at the
time it sold a VCR. While Sony might know in a general, perhaps
statistical, sense that some of its customers would do blatantly
infringing things with their VCRs, it couldn’t know in advance which
customers would, or how, or when. The only way Sony could have
prevented the infringement would have been to stop selling VCRs
altogether (or at least to stop selling VCRs with a “record” button). The
problem, from the Court’s perspective, was thus that the VCR had
both infringing and non-infringing uses. A finding of contributory
infringement against Sony would have the effect of taking VCRs off the
market for non-infringing uses, as well: no more taping Mister Rogers’
Neighborhood to watch with your kids later. Thus was born the “Sony

113
29. Sony Corp. v. Universal City Studios, 464 U.S. 417, 429 (1984) (U.S.)
114
Jesse M. Feder, Is Betamax Obsolete: Sony Corp. of America v. Universal City Studios, Inc. in the
Age of Napster, 37 CREIGHTON L. REV. 859 (2003).

168
defense.” The Court held that so-called dual-use technologies – those
with both infringing and non-infringing uses – were legal: Accordingly,
the sale of copying equipment, like the sale of other articles of
commerce, does not constitute contributory infringement if the
product is widely used for legitimate, unobjectionable purposes.
Indeed, it need merely be capable of substantial non-infringing uses.
This seems straightforward enough.115 The Court created a defense
specifically to contributory infringement. It applies when one sells a
product “capable of substantial non-infringing uses.” Direct and
vicarious infringements are unaffected. But interpretive issues wait in
the wings. First, how many non-infringing uses are required to count
as “substantial?” The Court gives some guidance in its discussion of
fair-use time-shifting and authorized home taping: presumably those
uses qualify. But then notice the phrase “merely be capable of” – does
this now mean that uses which are not yet taking place, but could,
would also qualify?

4.5.5 Universal City Studios, Inc. v. Corley116

For decades, motion picture studios have made movies available

for viewing at home in what is called “analog” format. Movies in this
format are placed on videotapes, which can be played on a video
cassette recorder (“VCR”). In the early 1990s, the studios began to
consider the possibility of distributing movies in digital form as well.
Movies in digital form are placed on discs, known as DVDs, which can
be played on a DVD player (either a stand-alone device or a
component of a computer). DVDs offer advantages over analog tapes,
such as improved visual and audio quality, larger data capacity, and
greater durability. However, the improved quality of a movie in a
digital format brings with it the risk that a virtually perfect copy, i.e.,
one that will not lose perceptible quality in the copying process, can
be readily made at the click of a computer control and instantly

115
Jesse M. Feder, Is Betamax Obsolete: Sony Corp. of America v. Universal City Studios, Inc. in the
Age of Napster, 37 CREIGHTON L. REV. 859 (2003).
116
Universal City Studios Inc. v. Eric Corley and Others, 273 F.3D 429 [2007];

169
distributed to countless recipients throughout the world over the
Internet. This case arises out of the movie industry’s efforts to respond
to this risk by invoking the ant trafficking provisions of the DMCA.

The movie studios were reluctant to release movies in digital

form until they were confident they had in place adequate safeguards
against piracy of their copyrighted movies. The studios took several
steps to minimize the piracy threat. First, they settled on the DVD as
the standard digital medium for home distribution of movies. The
studios then sought an encryption scheme to protect movies on DVDs.
They enlisted the help of members of the consumer electronics and
computer industries, who in mid-1996 developed the Content
Scramble System (“CSS”). CSS is an encryption scheme that employs
an algorithm configured by a set of “keys” to encrypt a DVD’s
contents. The algorithm is a type of mathematical formula for
transforming the contents of the movie file into gibberish; the “keys”
are in actuality strings of 0’s and 1’s that serve as values for the
mathematical formula. Decryption in the case of CSS requires a set of
“player keys” contained in compliant DVD players, as well as an
understanding of the CSS encryption algorithm. Without the player
keys and the algorithm, a DVD player cannot access the contents of a
DVD. With the player keys and the algorithm, a DVD player can
display the movie on a television or a computer screen, but does not
give a viewer the ability to use the copy

4.5.6 Universal City Studios, Inc. v. Reimerdes117

The plaintiffs, movie studios, successfully sought

an injunction against the distribution of DeCSS, a program capable of
decrypting content protected using the Content Scramble
System (a DRM scheme commonly used to protect DVDs.) It was
produced and released without a license from DVD CCA, the trade
organization responsible for DVD copy protection. DeCSS was released
in October 1999 on LiViD, a mailing list focused on producing
117
Universal Studios v.Reimerder 111 F. Supp. 2d 294 - Dist. Court, SD New York 2000".

170
programming tools and software libraries relevant to DVD use on
Linux. The motion picture industry became aware of the existence of
DeCSS later that same month and began litigation on a number of
fronts. On January 14, 2000, eight movie studios filed a lawsuit
against Eric Corley118 Shawn Reimerdes, Roman Kazan and 2600
Enterprises, Inc. The movie studios claimed that all three defendants,
by making available DeCSS, were 'trafficking in circumvention
devices', an illegal act under the DMCA. The studios sought injunctive
relief in the form of a court order preventing the defendants from
further publicizing or disseminating the DeCSS program, as well
as damages.

In mid-January, shortly after the suit was filed, the Court

granted a preliminary injunction barring defendants from posting
DeCSS. This action allowed the court to prevent the further
dissemination of DeCSS until the court could officially decide the
legality of disseminating DeCSS. The court felt this precaution was
necessary given that the movie studios supplied a reasonable
argument that widespread dissemination of DeCSS would cause
irreparable harm to their interests.

After the preliminary injunction was issued, Shawn Reimerdes

and Roman Kazan both entered in to consent decrees with the
plaintiffs and were subsequently dropped from the suit\. The consent
decree that Shawn Reimerdes entered into barred him both from
posting the code for DeCSS and from linking to other sites that did
so. Reimerdes was originally sued because he hosted the source
code for DeCSS on dvd-copy.com, a personal website. The consent
decree that Kazan entered into was similar to Reimerdes'. Kazan was
initially sued because he ran an internet hosting service that hosted
websites offering DeCSS. Eric Corley removed DeCSS from 2600.com
after the preliminary injunction was issued, but did not reach a
settlement agreement. 2600 Enterprises Inc. was also added to the

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Publisher of 2600: The Hacker Quarterly Magazine

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lawsuit after the preliminary injunction was issued. Although Corley
removed the source code for DeCSS, in what Corley termed an act of
"electronic civil disobedience," 2600.com continued to host links to
other websites that hosted the source code for DeCSS. By July 2000,
they had compiled links to nearly 500 such sites.

The defendants sought to invalidate the DMCA itself on

constitutional and other grounds. After a three day trial, United States
District Judge Lewis A. Kaplan issued an 89-page ruling on August
17, 2000 upholding the motion picture industry's position and the
constitutionality of the DMCA. In the final analysis, the dispute
between these parties is simply put if not necessarily simply resolved.
Plaintiffs have invested huge sums over the years in producing motion
pictures in reliance upon a legal framework that, through the law of
copyright, has ensured that they will have the exclusive right to copy
and distribute those motion pictures for economic gain. They contend
that the advent of new technology should not alter this long
established structure. Defendants, on the other hand, are adherents
of a movement that believes that information should be available
without charge to anyone clever enough to break into the computer
systems or data storage media in which it is located. Less radically,
they have raised a legitimate concern about the possible impact on
traditional fair use of access control measures in the digital era. Each
side is entitled to its views. In our society, however, clashes of
competing interests like this are resolved by Congress. For now, at
least, Congress has resolved this clash in the DMCA and in plaintiffs'
favor. Given the peculiar characteristics of computer programs for
circumventing encryption and other access control measures, the
DMCA as applied to posting and linking here does not contravene the
First Amendment. Judge Kaplan also spoke to the legality of Corley
and 2600.com's continued linking to sites that offered DeCSS for
download, saying to the extent that defendants have linked to sites
that automatically commence the process of downloading DeCSS upon

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a user being transferred by defendants' hyperlink there, there can be
no serious question. Defendants are engaged in the functional
equivalent of transferring DeCSS code to the user themselves.
Substantially the same is true of defendants' hyperlinks to web pages
that display nothing more than the DeCSS code or present the user
only with the choice of commencing a download of DeCSS and no
other content...

In addition to the legal opinion issued by Judge Kaplan

affirming the constitutionally of the DMCA and rejecting the
defendant's arguments, Judge Kaplan also issued a second document
permanently enjoining defendant Eric Corley from engaging in any
activities related to the further dissemination of DeCSS or any other
content protection schemes developed for DVDs. The case was
appealed to the U.S. Court of Appeals for the Second Circuit,
attracting fifteen amicus curiae briefs. After a hearing on May 1, 2001
a three judge panel Judges Newman, Cabranes and Thompson
affirmed Judge Kaplan on November 28.

Although Judge Kaplan's opinion was upheld, the appellate

court did agree with the view (held by Corley) that computer programs
are a form of protected speech regardless of whether they are in
source code or object code form, which commentators regarded as
significant. They also agreed with Corley that the DMCA was properly
subject to intermediate scrutiny, but said that the specific facts of the
suit barred them from considering the question of the constitutionality
of the DMCA's effect on fair use, because the defendants had not
claimed to be engaging in fair use. (The district court had previously
found that the "primary purpose" of the defendants' actions was to
promote redistribution of DVD's in violation of copyright laws)

The appellate court's opinion focused on Corley's First

Amendment defenses. Citing the precedent set in Hill v. Colorado that
law that incidentally restricts speech for reasons that are "justified

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without reference to the content of regulated speech", are not
unconstitutional, the appellate court found, like the district court had,
that even though DeCSS was a form of speech, it was constitutional to
limit it because the limitations were related to the functionality of
DeCSS, and not the content of the speech

4.5.7 Lenz v. Universal Music Corp119.

Lenz v. Universal Music Corp. was a 2007 case in which
the US District Court for the Northern District of California ruled
that copyright holders must consider fair use before issuing takedown
notices for content posted on the internet. Stephanie Lenz posted
on YouTube a home video of her children dancing to Prince's song
"Let's Go Crazy."Universal Music Corporation sent YouTube a
takedown notice pursuant to the Digital Millennium Copyright
Act (DMCA) claiming that Lenz's video violated their copyright in the
"Let's Go Crazy" song. Lenz claimed fair use of the copyrighted
material and sued Universal for misrepresentation of a DMCA claim.
In a decision rejecting a motion to dismiss the claim, the district court
held that Universal must consider fair use when filing a takedown
notice, but noted that to prevail a plaintiff would need to show bad
faith by a rights holder

In February 2007, Stephanie Lenz posted on YouTube a twenty-

nine second clip of her children dancing to Prince's "Let's Go Crazy."
The audio was of poor quality, and the song was audible for
approximately twenty seconds of the twenty-nine seconds. In June
2007, Universal, the copyright holder for "Let's Go Crazy", sent
YouTube a takedown notice in compliance with DMCA requirements,
claiming the video was a copyright violation. YouTube removed the
video and notified Lenz of the removal and the alleged infringement. In
late June 2007, Lenz sent YouTube a counter-notification, claiming
fair use and requesting the video be reposted. Six weeks later,
YouTube reposted the video. In July 2007, Lenz sued Universal form
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174
is representation under the DMCA and sought a declaration from the
court that her use of the copyrighted song was non-infringing.
According to the DMCA 17 U.S.C. § 512(c)(3)(A)(v), the copyright
holder must consider whether use of the material was allowed by the
copyright owner or the law.

In September 2007, Prince released statements that he intended

to "reclaim his art on the internet." In October 2007, Universal
released a statement amounting to the fact that Prince and Universal
intended to remove all user-generated content involving Prince from
the internet as a matter of principle. Based on Prince's and Universal's
statements, Lenz argued that Universal was issuing takedown notices
in bad faith, as they attempted to remove all Prince-related content
rather than considering whether each posting violated copyright, and
in particular was a non-infringing "fair use." Universal expressed
concerns over the fact-intensive investigation and subjective results of
determining whether a potentially infringing use falls under the
general "fair use" doctrine.

The district court held that copyright owners must consider fair
use before issuing DMCA takedown notices. Thus, the district court
denied Universal's motion to dismiss Lenz's claims, and declined to
dismiss Lenz's misrepresentation claim as a matter of law. The district
court believed that Universal's concerns over the burden of
considering fair use were overstated, as mere good faith consideration
of fair use, not necessarily an in-depth investigation, is sufficient
defense against misrepresentation. The court also explained that
liability for misrepresentation is crucial in an important part of the
balance in the DMCA. On February 25, 2010, Judge Fogel issued a
ruling rejecting several of Universal's affirmative defenses, including
the defense that Lenz suffered no damages, though the court did
suggest that at that stage in the proceedings, Lenz' damages seemed
nominal.

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4.5.8.Viacom International, Inc. v. YouTube, Inc120

U.S. District Court for the Southern District of New York case in
which Viacomsued YouTube, a video-sharing site owned by Google,
alleging that YouTube had engaged in "brazen" and
"massive" copyright infringement by allowing users to upload and view
hundreds of thousands of videos owned by Viacom without
permission. A motion for summary judgement seeking dismissal was
filed by Google and was granted in 2010 on the grounds that
the Digital Millennium Copyright Act's "safe harbor" provisions
shielded Google from Viacom’s copyright infringement claims.
However, on appeal to the United States Court of Appeals for the
Second Circuit, it was overturned in part in 2012, and a trial in the
case is pending. It is imperative to note that the judiciary has taken
different standards in various cases pertaining to Digital piracy of
Music and film. The opinions of various judges also pin points to the
fact that judiciary is badly in need of consistent and techno friendly
legislations to avoid digital piracy with reference to film and music
industries. The jurisdiction issues have become a major factor in the
adjudication of these disputes due to nature of internet technologies.
The different standards of legal regulations followed by different
countries are also creating a threat to judiciary during the process of
issuing summons and adducing evidences.

120
Vaicom International Inc v. YoutubeInc No. 07 Civ. 2103 (U.S)

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