Remedies for Copyright infringement – Part 1

Introduction

“Artist Ed Sheeran wins copyright infringement lawsuit over his hit song ‘Shape Of You’”[1]

“Choreographer sues Epic Games for copyright infringement over unauthorized use of his dance moves for a Fortnite emote”[2]

“Celebrity sued by photographer for posting photo without seeking permission”

The mushrooming of copyright infringement claims involving popular figures makes one stop and think: what constitutes infringement and what are its repercussions? Part 1 looks into the criminal remedies available against instances of copyright infringement.

What is Copyright Infringement?

We know that copyright law grants some specific rights and related rights connected to the work in question. When someone other than the copyright owner or author uses the said work without seeking consent, it is called infringement.

Let’s say that Miss A is an author who has written and published several books. Mr Y, a director, happens to read and like one of these books and decides to make a movie based on the same storyline and characters. If he does not seek her consent before doing so, it will constitute infringement.

Chapter XI of the Copyright Act, 1957 (the Act) sheds light on infringement of copyright. Section 51 lists the various acts that amount to infringement.[3]

Criminal Remedies

Although cases of copyright infringement are largely civil in nature, this is not to say that imposing criminal sanctions would be futile. The general idea behind criminal prosecution in instances of IP infringement is to instil a sense of deterrence.[4] It can be instrumental in establishing public expectations of right and wrong, especially in scenarios where civil remedies are not enough to make up for the damages suffered by the copyright owner or author.

Chapter XIII of the Act specifies offences and penalties related to the same. Section 63 of the Act says that when a person knowingly infringes or abets the infringement of the copyright in a work or any other right conferred by the Act, they shall be subjected to imprisonment for a term ranging from 6 months to 3 years. Additionally, they will have to pay a fine of an amount not less than ₹50,000 which may be extended to ₹ 2 lakhs. However, if the infringement was not made for gain in the course of trade or business, the Court may impose imprisonment for a term of less than 6 months and a fine of less than ₹50,000. Such adequate and special reasons should be mentioned in the judgement. Repeated offence calls for enhanced penalties under Section 63A.

Keeping in mind the technological advancements, the Copyright (Amendment) Act, 1994 inserted a crucial provision in the form of Section 63B. If someone knowingly makes use on a computer of an infringing copy of a computer programme, they shall be punishable with imprisonment for a term ranging between 7 days and 3 years, along with a fine of an amount as mentioned in Section 63.

In addition to imprisonment and fine, seizure of infringing works is another criminal remedy. If a police officer not below the rank of a sub-inspector is satisfied that an infringement as envisaged under Section 63 has taken place, or is likely to take place, they can seize all copies of the infringing work without a warrant.

Section 66 lays down that the Court can order delivery of infringing copies or the plates used to make the copies to the copyright owner.

In the case of A.K. Mukherjee vs State And Anr.[5] , Dr A.K. Mukherjee had filed a complaint before a Metropolitan Magistrate under Section 63 of the Copyright Act, 1957 and alleged that the Respondent had knowingly infringed the copyright vested in a book written by him. In the judgement, Justice Jaspal Singh highlighted the importance of the word ‘knowingly infringes’ as mentioned in the provision. There has to be a clear and conclusive proof of the requisite knowledge. Even the existence of reasonable means of knowing would not be enough. Thus, there must be mens rea in the full sense. The petition was dismissed.

Further, in Cherian P. Joseph vs K. Prabhakaran Nair[6], the evidence found involving copyright infringement pinpointed towards the fact that a civil suit was already filed and pending before the Court. Therefore, the Karnataka High Court held that in the interest of justice, a criminal court cannot interfere with the order of acquittal.

Thus, it can be said that the inclusion of criminal liabilities as part of various copyright legislations gives a sense of confidence to the copyright owner and can help curb occurrences of infringement to an extent.

---

References-

[1] Ed Sheeran wins Shape of You copyright case and hits out at 'baseless' claims, BBC NEWS, Apr 6, 2022, https://www.bbc.com/news/entertainment-arts-61006984 [2] Morgan Sung, Choreographer sues Epic Games for using his copyrighted moves in a Fortnite emote, NBC NEWS, April 7, 2022 https://www.nbcnews.com/pop-culture/pop-culture-news/choreographer-sues-epic-fortnite-emote-kyle-hanagami-rcna23075

[3] Section 51 provides: Copyright in a work shall be deemed to be infringed— (a) when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under the Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under the Act— (i) does anything, the exclusive right to do which is by the Act conferred upon the owner of the copyright, or (ii) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or (b) when any person— (i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or (ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or (iii) by way of trade exhibits in public, or (iv) imports into India, any infringing copies of the work (does not apply to the import of one copy of any work for the private and domestic use of the importer.) Reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an “infringing copy”. [4] David Goldstone, Deciding Whether to Prosecute an Intellectual Property Case, 49 UNITED STATES ATTORNEYS' USA BULLETIN. No. 2, (Mar. 2001), available at https://ipmall.law.unh.edu/sites/default/files/hosted_resources/CyberCrime/usamarch2001_1.pdf

[5] A.K. Mukherjee vs State And Anr. , 1994 IIAD Delhi 221

[6] Cherian P. Joseph vs K. Prabhakaran Nair, 1967 CriLJ 1517