Overview of Indian Law

Issue 3: Whether future rights not included in an assignment agreement automatically vest in the assignee

An issue that often arises is whether any future rights that have not been assigned are automatically assigned once they come into existence. For example, if the producer has assigned the broadcasting rights in a film a decade ago, does the assignee also own broadcasting rights over the Internet (i.e. webcasting rights)?

In one case, the Madras High Court held that all rights assigned must be defined specifically. Merely because the agreement deals with assignment of all the negative rights in the film to one person does not mean that video and television rights cannot be assigned to another person. On the other hand, in another case concerning the film Chupke Chupke, rights in all forms of exploitation were assigned to one party. The Bombay High Court held that in such a case, satellite television rights could not be assigned to another party.

With the emergence of new technologies and media, salami slicing of the copyright in a film is possible. It is necessary that producers and distributors address these issues at the very outset.

(v) Infringement of Copyright
Any person who performs any of the exclusive rights that the owner of the copyright has without seeking his consent / permission would be said to have infringed the copyright in the work.¹⁷⁴ Therefore, if any person performs any of the acts enumerated in the Copyright Act, which require prior permission of the copyright owner without obtaining such permission, such acts could constitute copyright infringement.

Issue 4: Whether making a remix of a song amounts to a violation of the copyrights in the original song

It is common practice in the film industry to make remixes of existing songs. An issue that arises is whether making a remix of an existing song violates the copyright in that song. The Act currently has no provisions specifically for remixes.

However, the Act does provide for cover versions.¹⁷⁵ As per this provision, cover versions of a sound recording can be made two calendar years after the end of the year in which the first sound recording was made and after obtaining a license from the owner of the sound recording. Further, no alterations can be made to the original sound recording without obtaining the consent of the owner.

A remix of a song could violate the copyright in the original song, if, in the remix, a substantial part of the original song has been copied and the people listening to the remix can associate it with the original song. However, if the remix maker has taken a license from the owner of the original song to use the song or alter the song, he may be protected under the law.

Remixes are popular in India, and several Indian music producers are known to borrow heavily from old film songs, as well as western music, without obtaining the required licenses. Such activity could attract potential lawsuits claiming copyright infringement and it is important for music composers to take due care while creating new versions of old song. This is true in the case of Indian composers as well as those located overseas, who may use copyrighted works owned by Indian producers. A recent example is the lawsuit by Saregama India Ltd., the Mumbai-based film and music company in the U.S. seeking US $500 million in damages from Dr Dre and his label, Aftermath Records, its parent company Interscope Records, Universal Music and Vivendi Universal for using an unlicensed sample of a 20-year-old track, 'Thoda Resham Lagta Hai', originally performed by popular Indian artist Lata Mangeshkar. Not only was a snippet of Mangeshkar's soaring vocals borrowed, but the hook, melody and rhythm were also lifted in a song titled “Addictive.” Bappi Lahiri, the songwriter of the original track later filed a similar suit, charging the producers of the song “Addictive” with a form of "cultural imperialism" by not crediting Third World artists and seeking a halt to the further sales of the release "Truthfully Speaking" on Aftermath Records.¹⁷⁶ Both the lawsuits are currently pending before courts in the US. However, with regards to the case filed by Bappi Lahiri, a Federal judge in LA recently prohibited further sales of the song "Addictive" until Lahiri is listed on the song's credits.¹⁷⁷

(vi) Remedies
While the Copyright Act provides civil¹⁷⁸ and criminal¹⁷⁹ remedies for copyright infringement, most state governments have still not been successful in effectively enforcing these provisions. The real lacuna is in the implementation of the existing laws. In addition, the long-drawn litigation process in India also adds to the plight of the copyright owner. Further, several procedural and evidentiary hurdles deter effective enforcement. Due to these factors, copyright protection is one of the tardiest areas in the Indian legal and justice process.

(vii) Performer's Rights
Performer's rights were incorporated into the Copyright Act in 1994. This provides protection to various types of performers, like actors, dancers, musicians, jugglers, acrobats. A 'performance' means any visual or acoustic representation made live by one or more performers,¹⁸⁰ and it need not be in front of an audience, nor carried out in a particular manner or fulfill any conditions. A performance covers rehearsals, and it does not have to be the final polished version. It may not even be planned. For example, if an actor does an impromptu street show, it could qualify as a performance. Similarly, the performance of an actor in front of a large audience in an auditorium, as well as the performance of the same actor rehearsing in his/her home could qualify as a performance that is entitled to protection.

Protection of performers' rights is granted for a period of fifty years from the calendar year following the year in which the performance is made.¹⁸¹ However, once a performer consents to the incorporation of his performance in a cinematograph film, his performer's rights have no further application.¹⁸² This is because when a performer authorizes a film producer to incorporate his performance in a cinematograph film, the producer on completion of the cinematograph film, acquires a copyright in the work as a whole, which gives him the exclusive privilege of communicating the work to the public.

The performer's consent is required for making sound or visual recordings of live performances and for broadcasting the performance or communicating it to the public. Persons carrying out such acts without the performer's consent would be guilty of infringement.¹⁸³ In addition, if a sound or visual recording were made for purposes different from those for which the performer granted his consent, such an act also amounts to infringement of the performer's rights.¹⁸⁴

However, the Copyright Act does not specify the form in which consent is to be obtained. Furthermore, the definitions of a performance and a performer under the Copyright Act are extremely wide, thereby making it necessary to obtain consent from all those who could fall under the category of performers, prior to making recordings of such performances. In Aneesh Pradhan V. Banyan Tree Events Pvt. Ltd., the Plaintiff (a tabla player) was one of the accompanying artistes in a concert held in April 1997.The defendant released tapes and CDs of the concert in 2000 and the Plaintiff alleged that his prior consent was not taken by Banyan Tree Events Pvt Ltd while recording the performance. The Bombay High Court passed an interim order restraining the defendants from manufacturing, marketing or selling the cassettes titled 'Nirala,' which contain an illegal and unauthorized recording of a music concert held in April 1997.

Hence, not obtaining the consent of performers in a film could expose a film maker to lawsuits for example, if a film includes the footage of various Indian classical dancers and singers at different festivals and cultural events around India and if the consent of such performers is not taken prior to making such recordings the producer could be liable for infringement. Not only is obtaining consent an important factor, but also the precise nature of consent is necessary. If a film producer obtains consent, but does not disclose the purpose for the recording and the how the recording would be used in the future, then he/she would be infringing on the rights of the performers.

Obtaining consent from every person whose performance is included in a film seems to be a daunting task. However, producers should ensure that they take the necessary precautions to minimize their risks and avoid being sued for damages for infringing upon the rights of performers. The current ambiguities with regards to the form of consent that is required can be overcome by entering into agreements with all artists whose performances are recorded. Such agreements should specify in clear and simple terms the scope of the rights involved and should include clauses relating to the assignment of such rights, the nature of the assignment (including the territory and the purpose) and lastly, the term for which such rights are granted. Such steps could go a long way in ensuring that the rights to performances incorporated in a film are legitimately obtained and protected.

(viii) Copyright Societies
The Copyright Act also provides for the formation of copyright societies that facilitate the granting and issuing of licenses for the use of copyrights in different works.¹⁸⁵ Copyright owners may assign their rights to the respective copyright society, which in turn will administer, control and enforce the copyright on their behalf. Presently, in India, there are three copyright societies:

(i) The Indian Performing Rights Society Limited ("IPRS"): Indian composers, authors and music publishers whose works are publicly performed have the option to register with the IPRS. The IPRS administers and controls the performing rights, mechanical rights and synchronization rights¹⁸⁶ in musical works on behalf of its members and those of its sister societies with which it has reciprocal agreements

(ii) The Phonographic Performance Ltd. ("PPL"): Music companies register themselves with the PPL, which in turn will administer the broadcasting, telecasting, and public performance rights in their sound recordings.

(iii) Society for Copyright Regulation of Indian Producers for Film and Television ("SCRIPT"): Producers are members of this society for protection of their films. However, the same is not in full force as yet.

Issue 5: Whether a person who wants to broadcast / webcast a sound recording needs to take a license from the IPRS and the PPL.

While addressing this issue, let us assume that the producer has the right to assign the sound recordings in the film to the music companies, as the producer has entered into appropriate agreements with the authors and music composers. Writers, composers and owners /publishers of musical works¹⁸⁷ who are members of IPRS assign all the rights in their musical works to it. Similarly, music companies assign all their rights in sound recordings to PPL.

Let us assume a situation in which a person wants to broadcast or webcast a song of a Hindi film. Typically, there are three works in the song, namely the lyrics (literary works), the music (musical works) and the recording of the literary and musical works (the sound recording). As of today, one has to obtain two licenses: one from IPRS for the lyrics and the musical works, and from PPL for the sound recording.

The issue is that if the sound recording, which includes the musical and literary works, has already been assigned to PPL, the person should be able to obtain the license from PPL directly to broadcast the sound recording without approaching IPRS. PPL can internally have a mechanism to distribute the royalties to IPRS, if so required. An alternate and more effective approach, wherein the person approaches only IPRS for the rights in the musical and literary works may also hold good. The practice of obtaining two separate licenses to broadcast only one song is a burden on the broadcaster, which results in added expenses and needs to be amended.