[Copyright Act] Bombay HC Restrains Radio Channels From Broadcasting Songs Without Equal Royalty To Authors, Says Position Of Law Prima Facie Changed

Justice Manish Pitale held that prima facie, the original authors (authors, composers, publishers etc.) of the literary or musical works used in films and sound recordings are entitled to royalties equal to the producer for utilization of their works.

“The plaintiff - IPRS has indeed made out a strong prima facie case to claim that the position of law now stands changed and the defendants (radio broadcasters) cannot avoid payment of royalties to such authors, whose cause is espoused by copyright societies like the plaintiff herein”, the court held.

The court said that prima facie, due to a 2012 amendment in the Copyright Act, the original authors, who were earlier not entitled to royalty once their work became part of a film, can now claim royalty for any use of their work, except screening in a cinema hall in a movie. The amendment has fundamentally changed the manner in which the rights of authors of original works have to be treated, the court added.

The court was deciding two applications for interim relief in two suits filed by IPRS claiming that the authors were entitled to royalty for the broadcast of their songs over radio.

Plaintiff IPRS is a company with the object of protecting and enforcing rights and interests of its members who are original authors of literary and musical works. The defendants in the suits are the operators of FM radio channels Radio Mirchi and Radio City FM.

In IPRS v. Eastern Indian Motion Pictures Association (1977), the Supreme Court held that original authors who have assigned their work to a producer of a cinematograph film, could no longer claim any right from the producer when the film was communicated to the public. This position has been reiterated in various judgements regarding sound recordings also.

However, in 2012, the Copyright Act was amended to add provisos to sections 17 (first owner of copyright) and 18 (assignment of copyright), and two subclauses to section 19 (mode of assignment).

IPRS contended that the position of law has changed since the Apex court judgment due to the amendment, and now the original authors of literary, dramatic, musical and artistic works are entitled to receive royalty. The defendants contended that since sections 13 (works in which copyright subsists) and 14 (meaning of copyright) were not amended, mere provisos cannot give a substantive right to the authors.

Amendment To Section 17

In the East India Motion Pictures case, the SC held that when authors part with their works for valuable consideration (section 17 (b)) or when they create such works under an employment contract (section 17(c)), they lose any rights on the work as it becomes part of the final product. Authors cannot assert any rights against the producer/employer i.e., the first owner of the copyright.

The proviso to Section 17, added by the amendment states that nothing in the sections 17(b) and 17(c) shall affect rights of the authors of the original works. Therefore, the court concluded that there has been a legislative departure from the position set down by the Supreme Court.

Amendment to Section 18

The court remarked that the third and fourth provisos to Section 18, added by the amendment, introduce a concept unknown till now as they prohibit authors themselves from assigning or waiving their right to royalty for utilisation of their original works.

The moment the musical or literary works are used in any form other than in a cinema hall as part of a film, authors are entitled to receive royalty and cannot waive this right, the court said. In respect of sound recordings not part of a film, the prohibition is even wider as the authors would have the right to receive royalties for any use of the work at all, the court added.

Amendment to section 19

The court held that as per subsections (9) and (10) of section 19, added by the amendment, the author’s right to claim royalties is unaffected when their work, which is part of a film, is used in any manner except in a cinema hall along with the film. If the work is just a sound recording (i.e., not part of a film), the author’s right to royalty is unaffected whenever it is utilised in any form.

Effect of no amendment in sections 13 and 14

Both the sections contain the words “subject to the provisions of this section and other provisions of this Act” and “subject to the provisions of this Act” respectively.

The defendant radio stations contended the amendments are clarificatory in nature, re-enforcing the well settled position of law. They specifically submitted that Sections 13 and 14 of the Copyright Act haven’t been amended indicating that there isn’t any new substantive right to the authors of the original works.

When all the amendments are read with sections 13 and 14, the exclusive rights of the broadcasters while communicating the sound recordings to the public becomes subject to the amended provisions, the court held.

Meaning of “Utilisation”

It cannot be said that since the original works get included in the sound recording, the authors are not entitled to royalty despite specific guarantee of such rights by the 2012 amendment, the court said.

The court observed that playing a film’s song or sound recording from a radio station would amount to communication other than its broadcast in a cinema hall. Authors of such works are entitled for royalty on each occasion. If the sound recordings aren’t part of a film, the authors have a right to collect royalty for each occasion of their use in any form, the court added.

IPRS has made out a strong prima facie case that radio broadcast of the songs on each occasion amounts to utilisation of the underlying literary and musical works in which the authors have the right to royalty, the court held.

Right to royalty emanates from copyright

The court rejected the contention that the right to claim royalty is not copyright, observing that it emanates from copyright held by the authors in their original works. Consequences of the 2012 amendment cannot be defeated by claiming that the right to collect royalties does not fall under the definition of copyright, the court stated.

In the present case the court directed IPRS to make a royalty demand, as the order restraining them from broadcasting the songs would come into effect only if royalty amount wasn’t paid within six weeks.

Case no. – Commercial IP Suit No. 193 of 2022

Case Title – Indian Performing Right Society Ltd. v. Rajasthan Patrika Pvt. Ltd.