Bombay High Court
Sony Music Entertainment India Pvt Ltd vs Kal Radio Limited And Anr on 18 June, 2021
Author: G.S. Patel
Bench: G.S. Patel
26-IAL-8813-2021 IN COMIPL-8229-2021.DOC
Shephali
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO. 8813 OF 2021
IN
COMMERCIAL IP SUIT (L) NO. 8229 OF 2021
Sony Music Entertainment India Private Limited ...Applicant/
Plaintiff
Versus
KAL Radio Limited & Anr ...Defendants
Mr Janak Dwarkadas & Mr Viraag Tulzapurkar, Senior
Advocates, with Amit Jamsandekar, Vighnesh Kamat, Vaibhav
Shukla, Vinita Muley, Aishwaryajeeta Tawde, i/b VVJ Law
Partners, for the Applicant/Plaintiff.
Mr Abhishek Malhotra, for the 1st Defendant.
CORAM: G.S. PATEL, J
(Through Video Conferencing)
DATED: 18th June 2021
PC:-
1. Heard through video conferencing.
2. Mr Dwarkadas for the Plaintiff makes an application for
urgent ad-interim reliefs. Having heard him and Mr Malhotra for
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the Defendant briefly, I am inclined to make a time-limited ad-
interim order operative only for about a fortnight from today.
3. The Suit is an action in copyright infringement seeking an
injunction and damages. The Plaintiff ("Sony India") is part of an
international conglomerate which manufactures and provides a
range of products and services. Among these is its media arm,
which provides film, television and music content. Sony India is the
owner inter alia of various sound recordings (including the literary
and musical works in those). These form part of its Indian
repertoire. The 2nd Defendant is Sony Music Entertainment
("Sony Music"), a New York-based music label. It acquires, owns
and controls copyright in various works and distributes music in
various genres. Sony India is Sony Music's exclusive licensee in
India for the international music and sound recordings in which
Sony Music has copyright. This is Sony India's "international
repertoire".
4. Sony India was a member of the Phonographic Performance
Limited ("PPL") prior to 2010. There is no dispute that, in the
past, the 1st Defendant ("KAL Radio"), a broadcasting
organisation within the meaning of the Copyright Act 1957,
previously used Sony India's copyright-protected works under
licenses it obtained from PPL. The Copyright Board, by an order
and judgment of 25th August 2010, determined a license fee in
regard to the compulsory licensing regime under Section 31 of the
Copyright Act. There is something of a litigation history about that,
but that can be looked into later, if necessary. What demands
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immediate attention is Section 31-D of the Copyright Act 1957,
introduced by the 2012 Amendment. It reads:
"31-D. Statutory license for broadcasting of literary and
musical works and sound recording.-- (1) Any
broadcasting organisation desirous of communicating to the
public by way of a broadcast or by way of performance of a
literary or musical work and sound recording which has
already been published may do so subject to the provisions
of this section.
(2) The broadcasting organisation shall give prior
notice, in such manner as may be prescribed, of it its
intention to broadcast the work stating the duration and
territorial coverage of the broadcast, and shall pay to the
owner of rights in each work royalties in the manner and at
the rate fixed by the Appellate Board.
(3) The rates of royalty for radio broadcasting shall be
different from television broadcasting and the Appellate
Board shall fix separate rates for radio broadcasting and
television broadcasting.
(4) In fixing the manner and the rate of royalty under
sub-section (2), the Appellate Board may require the
broadcasting organisation to pay an advance to the owners
of rights.
(5) The names of the authors and the principal
performers of the work shall, except in case of the
broadcasting organisation communicating such work by way
of performance, be announced with the broadcast.
(6) No fresh alteration to any literary or musical work,
which is not technically necessary for the purpose of
broadcasting, other than shortening the work for
convenience of broadcast, shall be made without the
consent of the owners of rights.
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(7) The broadcasting organisation shall--
(a) maintain such reports and books of
account, and render to the owners of rights
such reports and account; and
(b) allow the owner of the rights or his
duly authorised agent or representative to
inspect all records and books of account
relating to such broadcast, in such manner as
may be prescribed.
(8) Nothing in this section shall affect the operation of
any license issued or any agreement entered into before the
commencement of the Copyright (Amendment) Act 2012."
(Emphasis added)
5. As we can see, there is now a statutory right to obtain a
license. But it requires notice in the prescribed form to the holder of
copyright, and payment of a fee (including an advance, if so
ordered).
6. Various broadcasting organisations filed applications before
the Intellectual Property Appellate Board ("IPAB"), now
disbanded, seeking statutory licenses under Section 31-D read with
Rule 31 of the Copyright Rules 2013. On 31st December 2020, the
IPAB determined these royalty rates and the payment mechanism
for statutory licensing for FM radio broadcast. There are various
challenges against that order pending before the Delhi High Court.
That need not detain us today.
7. On 5th February 2021, KAL Radio emailed Sony India
seeking information about its copyright-protected works. On 9th
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February 2021, Sony India replied saying that these copyright-
protected works had been part of KAL Radio's broadcasts for many
years. It had even previously reported usage. Sony India
nevertheless gave KAL Radio a list.
8. On 12th February 2021, KAL Radio emailed a notice to Sony
India, purportedly under Section 31-D read with Rule 29 of the
Copyright Rules 2013, claiming an entitlement to a statutory license.
It forwarded a cheque of Rs. 64,750/-. 1 On 24th February 2021,
Sony India replied.2 It said that KAL Radio's notice was not in
conformity with Section 31-D and the relevant rules. The cheque for
Rs.64,750/-, supposedly 25% advance for February 2021, had been
quantified without basis and was bereft of the details that Section
31-D contemplated. Sony India returned the cheque and demanded
that KAL Radio comply with the rules.
9. In early March 2021, while monitoring KAL Radio's
broadcasts, Sony India's representative found that KAL Radio was
broadcasting, on various FM radio stations, recordings from Sony
India's Indian repertoire.
10. On 9th March 2021, KAL Radio emailed a royalty calculation
and a log file of some of its radio channels for January 2021. It
admitted use of Sony India's copyright-protected works. It also
enclose a cheque, this time for Rs.67,514/-.3
1Ex "F", pp. 44-47.
2Ex "G", p. 48.
3 Ex "H", p. 49-51.
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11. Sony India says that reports from AirCheck showed that KAL
Radio had indeed been broadcasting Sony India's copyright-
protected works.
12. Mr Dwarkadas submits that this constitutes infringement and
is immediately actionable. KAL Radio does not have a license. It has
not validly got even a statutory license. He is, he submits,
immediately entitled to an ad-interim injunction.
13. Mr Malhotra took instructions over the lunch recess but those
instructions were that KAL Radio wanted to press its case that it is
entitled to broadcast Sony India's works. He submits that the
scheme of Section 31-D entitles a broadcasting organisation to use
the works 'the moment it sends a notice and payment'. He submits
that the Sony India was not made out prima facie case. He also
submits that the balance of convenience is clearly with KAL Radio
because greater prejudice will be caused to it than to Sony India.As
to the question of irretrievable prejudice, he submits Sony India can
always be later compensated in money.
14. I disagree. The fact of the matter is that KAL Radio does not
have even a statutory license. It cannot show that it is fully
compliant with Section 31-D and Rule 29. Demonstrably, at this
prima facie stage, its notice is non-compliant. The details that it is
provided by its email 12th February 2021 do not conform to the
requirements of Rule 29, set out below.
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29. Notice to owner for communication to the public of
literary and musical works and sound recordings.--
(1) Any broadcasting organisation desirous of
communicating to the public by way of broadcast or by
way of performance of a published literary or musical
work and sound recording under sub-section (1) of
section 31-D shall give a notice of its intention to the
owner of the copyright and to the Registrar of
Copyrights before a period of five days in advance of
such communication to the public and shall pay to the
owner of the copyright, in the literary or musical work
or sound recording or any combination thereof, the
amount of royalties due at the rate fixed by the Board in
this regard.
Provided that in case of communication to the public
by way of broadcast or by way of performance of a newly
published literary or musical work or sound recording or
any combination thereof, which has been published within
the said period of five days of such communication and
which do not form part of the scheduled programmes, the
notice shall be given before such communication to the
public:
Provided further that in case of communication to the
public by way of broadcast or by way of performance of any
published literary or musical work and sound recording or
any combination thereof, in unforeseen circumstances, the
notice shall, be given within twenty-four hours of such
communication to the public:
Provided also that any broadcasting organisation shall
give a notice under this Chapter only after the royalty to be
paid is determined by the Board under rule 31 and
published in the Official Gazette and in the website of the
Copyright Office and the Board.
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(2) Every such notice shall be in respect of works
belonging to one owner only.
(3) Separate notices shall be given for communication to
public by way of radio broadcast or television broadcast or
by way of performance of a literary or musical work and
sound recording which has already been published.
(4) The notice under sub-rule (1) shall contain the
following particulars, namely:--
(a) Name of the channel;
(b) Territorial coverage where
communication to public by way of radio
broadcast, television broadcast or
performance under sub-rule (3) is to be made;
(c) Details necessary to identify the work
which is proposed to be communicated to the
public by way of radio broadcast, television
broadcast or performance under sub-rule (3);
(d) Year of publication of such work, if any;
(e) Name, address and nationality of the
owner of the copyright in such works;
(f ) Names of authors and principal
performers of such works;
(g) alterations, if any, which are proposed
to be made for the communication to the
public by way of radio broadcast, television
broadcast or performance of the works,
reasons thereof, and the evidence of consent
of the owners of rights, if required, for making
such alteration;
(h) Mode of the proposed communication
to public, i.e., radio, television or
performance;
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(i) Name, if any, of the programme in
which the works are to be included;
(j) Details of time slots, duration and
period of the programme in which the
works are to be included;
(k) Details of the payment of royalties at
the rates fixed by the Board; and
(l) Address of the place where the records
and books of accounts are to be maintained for
inspection by the owner of rights."
(Emphasis added)
15. In particular, the first notice of 12th February 2021 does not
have the names of the programmes in which the copyright protected
works are to be included, nor the details of time-slots, durations and
period of programmes in which the works are to be included. These
are mandated by Rule 29. KAL Radio has only said that the works
for which it seeks a statutory license 'will be used in various radio
programmes'.4 It does not specify how it has computed the advance.
In none of the communications that KAL Radio addressed am I able
to discern any logical or apparent basis of its computations. The
revised calculation is marginally more than the first, but again
without disclosed basis.
16. Mr Malhotra submits that there is 'sufficient' compliance
with the Act and the Rules, and that Rule 29 -- or parts of it -- will
need to be 'read down' so that strict compliance is unnecessary.
Prima facie, that is entirely untenable. KAL Radio cannot decide
4 Ex "F", pp. 44-47, at p. 45.
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which part of the Rules it wants to apply and which it does not and
simply discard those Rules that it finds inconvenient. In opposition
to Sony India's copyright infringement civil action, it cannot mount
a challenge to the validity of the Rules, or seek that these be read in
any manner other than what their plain language and meaning
demand.
17. Prima facie, the entire scheme of Sections 31 to 31-D is a
departure for the general principles in copyright law in regard to
licensing. These provisions force the grant of licenses under various
conditions. Generally, copyright licensing is a matter of contractual
volition in an arms' length transaction. A copyright-owner may
assign his or her copyright in whole or in part, or may license it
subject to agreed conditions. Section 31-D on the other hand, for
instance, compels a copyright owner to grant a license, and the
statutory regime itself sets out the terms and conditions. Section 31-
D therefore deprives a copyright-owner of the freedom of choice in
licensing. That is a deprivation of a species of property. For that
reason, such statutory licensing is rigidly controlled by statute.
Prima facie, it must follow, therefore, that the provisions of Section
31-D must receive a strict construction and there can be no room for
a liberal or more free-wheeling interpretation of the kind Mr
Malhotra suggests. This is, of course, only a very tentative prima
facie view. Ordinarily, I would not have ventured this far at this
stage. It is Mr Malhotra's submission (perhaps in a continuation of
his you-have-no-choice construct) that leaves me with no other
option. I must, therefore, conclude -- albeit prima facie -- that Mr
Malhotra is not correct in his submissions. If these are to be
accepted, they would drive a coach and four through the entire
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edifice of the Copyright Act. Prima facie if Mr Malhotra's
formulation is to be accepted, one might as well do away with all
copyright protection. In effect, his submissions amounts to saying
that his client can interpret the statute and the rules as loosely as it
wishes, need not conform to the statutory regime, and none can
deny his client a 'right' to use someone else's copyright-protected
material. KAL Radio need not specify in what program the works
are to be included. It need not give details of time-slots, durations
and program periods. It need not provide the basis for its
computations of license fees.
18. Mr Malhotra's attempt to justify this saying that FM radio
shows are 'dynamic' is too feeble to warrant acceptance. It suggests
that radio show hosts or radio jockeys are entirely clueless about
what they are going to present on which show or when, and that
content of every radio show or broadcast is entirely unknown
beforehand. That is not even remotely credible. First, the genre of
the radio show is an automatic filter -- a jazz standard is hardly
likely to feature in a Bollywood Top Hits show. Second, within a
genre, the broadcasting organization has a further drilled-down
choice foisted on it: it simply restricts its shows to those works in
which it has a statutory license. So: in a Bollywood hits broadcast,
KAL Radio would be confined to those works that do not belong to
Sony India. Nobody suggests that the copyright in every single work
in every single genre vests only in Sony India.
19. The 'compelling' component of Section 31-D is actually
bidirectional not unidirectional. Just as a copyright owner or holder
is compelled -- subject to strict compliance -- to comply with the
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statutory licensing regime of Section 31-D and the companion rules,
the statutory licensee is also compelled negatively to not use the
copyright-protected works unless it has obtained a statutory license.
That can only be done by demonstrating strict compliance with the
statute and the rules.
20. Notably, Sony India has not refused the license at all. What it
said in its email response was only two things. First, that the notice
under Section 31-D by KAL Radio was defective and non-compliant.
This is prima facie correct. Second, Sony India said that the basis of
the computation was undisclosed. That is also prima facie correct.
21. There is also the third aspect, viz., that KAL Radio
admittedly broadcast parts of Sony India's repertoire without a valid
statutory license. That cannot be permitted to continue.
22. Further, KAL Radio's notice does not make it clear whether it
intends or proposes to use only Sony India's Indian repertoire or the
international repertoire (of which Sony India is the exclusive
licensee from Sony Media) That is yet another lacuna in its notice.
23. I am more than sufficiently satisfied that the Plaintiff has a
prima facie case for a time-limited ad-interim injunction in terms of
prayer clause (a) at page 12 which reads thus:
(a) That pending the hearing and final disposal of the
present suit, Respondent No.1, its servants, directors,
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24. This ad-interim injunction will continue only until 2nd July 2021. Affidavit in Reply is to be filed and served on or before 23rd June 2021. Affidavit in Rejoinder, if any, is to be filed and served on or before 28th June 2021. I will hear both sides on 30th June 2021.
25. These are only prima facie views. All contentions are expressly kept open.
26. All concerned will act on production of an ordinary copy of this order.
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