FACTS

1. Several DVD’s which were rented were containing

the warning saying that, they were not to be sold
out-side US and Canada.
2. Defendants even developed a
website(www.cinema paradisshop.com) stating
that, all the DVD’s which were rented were with
proper license and there were no copyright
infringements and their privacy is being protected.
It was declared on their website that, it was the
first store with all the necessary license. Even
though, when it is not.
• Contrary to the claim made by the Defendants, the DVD’s rented were
protected by the Warner brother against the copyright infringement.
• The distribution of movie to people is brought to people through various
medium’s.
• This method would be called as ‘Windows’.
• In the 1st window, the movie would be released to public through theatres.
• In the 2nd window, the movie would be released to public through Home
Video.
• Then it brought through DVD’s.
• For the movie which is released in US, it is essential that the process of
window has to be done properly or the company might incur loses.
• In this cases, the DVD’s were coded geographically. The code for US, DVD’s
was Zone 1 and for India it was Zone 5. The DVD’s which were sold by the
defendants was of Zone 1 and not Zone 5.
 ARGUMENTS OF PLAINTIFF’S
• The plaintiff’s have argued that, the defendants had some deep rooted
connections with cable operators and through them the film was being
aired to the public by television.
• Even a single copy of the film would lead to huge loses to the plaintiff’s. The
reason is that, by the time it would have been available to public in theatres
in India, it would be only through 1st window and that would be through
“Theatres”.
• Thus, airing them on television were causing huge loses to plaintiffs.
• They contended that, in the absence of the license between them and the
defendants they have to be made liable for copyright infringement.
• Plaintiff further alleged that Defendant has no rental licenses in his favor
and all such acts of rental amount to an act of infringement of copyright
under the provisions Section 14 (d) (ii) read with section 51 of The
Copyright Act, 1957.
• Consequently, Plaintiff sued Defendant for permanent injunction and
damages, claiming that the latter infringed their copyrights in respect of
films, by hiring, and offering for hire, infringing copies, in India.
 ARGUMENTS OF DEFENDANTS
• They have contended that there was no copyright
violation as they had purchased the DVD’s from the
Authorized purchaser and by the sale of 1st copy they
have lost their rights of copyrights by applying the
doctrine of exhaustion.
• They contended that, Zoning was only a matter of
showing dominance and there was no copyright
infringement.
• They even stated that, according to Constitution of
India, freedom of speech is an integral part and
providing entertainment is not violation of any act.
 What is Doctrine of Exhaustion?
• The exhaustion doctrine, also referred to as the first sale
doctrine, is a U.S. common law patent doctrine that limits the
extent to which patent holders can control an individual
article of a patented product after a so-called authorized sale.
• Under the doctrine, once an authorized sale of a patented
article occurs, the patent holder's exclusive rights to control
the use and sale of that article are said to be "exhausted,"
and the purchaser is free to use or resell that article without
further restraint from patent law.
• However, under the repair and reconstruction doctrine, the
patent owner retains the right to exclude purchasers of the
articles from making the patented invention anew (i.e.,
making another article), unless it is specifically authorized by
the patentee to do so
 ISSUE
• Whether the importation into India by
Defendant for giving on hire or rent in India
copies of films authorized for sale or rental in
a particular territory outside India, in which
the plaintiff claims copyrights, constitutes
infringement of copyright under section 51(b)
(iv) i.e. importation into India of Infringing
Copies and Section 51(a)(i) of the Copyright
Act, 1957?
 REASONING
• The court has held that, the doctrine of 1st
sale (doctrine of exhaustion) would not be
applied in certain circumstances. It even
answered that, the right to freedom of speech
and expression of Indian Constitution has
nothing to do with this case and all the copies
sold were not original copies which were
permitted by the plaintiff and there was a
infringement of Copyright.
 IMOPORTANT TERMS
• Infringing copy" is defined in section 2 (m) . An infringing copy means a
copy "imported in contravention of provisions of the Act." The central
provision in section 51 which says that copyright shall be deemed to be
infringed where any person without a license granted by owner of the
copyright "does anything, exclusive right to do which is by this Act
conferred upon the owner of the copyright.“
• The owner of the copyright or his licensee has the "exclusive right" of
printing, or otherwise multiplying, publishing and vending copies of the
copyrighted literary production in India.
• India Distributors are infringing this right. Therefore, India Distributors are
dealers in "infringing copies". They are handling unlicensed copies.
• section 2(m) (ii) of the Act, which defines "an infringing copy", as a
copy which is"made or imported in contravention of the provisions
of this Act"; infringement is not restricted to the act of "making"
but also extends to "importation" in contravention of the Act.
Section 30 of the Act deals with licensing of copyright; like Section
18, licensing has to be through agreement in writing. Infringement
of copyright, by Section 51, includes an act, when any person-
• makes for sale or hire, or sells or lets for hire, or by way of trade
displays or offers for sale or hire, or
• distributes either for the purpose of trade or to such an extent as to
affect prejudicially the owner of the copyright, or
• by way of trade exhibits in public, or
• imports into India,
• Any infringing copies of the work.
 HELD
• By showing the above reason, the court has
held:-
• The Court finally confirmed the ad-interim
injunction in favor of the plaintiff. The Court
has reaffirmed that importing original DVDs
and renting them out in India constitutes
copyright infringement under the Copyright
Act, 1957