Shemaroo Films' Copyright Infringement Suit: Bombay High Court Grants Interim Injunction Against News Nation, Suspects Defence Of 'Fair Use'

The parties had entered into a non-exclusive license agreement for the period commencing from 1st July, 2019 to 30th June, 2022 to broadcast and exploit the audio visual songs clips copyrighted by the Plaintiff. The agreement was terminated on 1st August, 2020, upon request of the defendant. Post termination the defendant had explicitly agreed and undertaken not to exploit any of the plaintiff's content without obtaining prior permission and license from the plaintiff.

However, the plaintiff noticed that the defendant had broadcast the audio visual songs, clippings and scenes of the plaintiff's copyrighted cinematographic films on its channels. On 20th April, 2021 the plaintiff brought to the notice of the defendant, instances of infringement of the plaintiff's copyright in the month of August to October, 2020 and demanded the consolidated amounts towards the damages. In reply, the defendant sought to contest the liability despite admitting the unauthorized exploitation of the plaintiff's content. An attempt was made to justify the use of the said content by pressing into service the principles of fair use and de minimis.

The plaintiff instituted this suit seeking to restrain the defendant from further exploitation of the plaintiff's content on its channels. Defendant contended that use of the plaintiff's content by the defendant is permissible under section 52 of the Copyright Act, 1957, as it is covered under the doctrine of 'fair dealing', the defendant only disseminated the plaintiff's content as a part of its regular program and not to individually and otherwise commercially exploit the plaintiff's material for their own personal benefit, even otherwise, the instant action is barred by the principle of de minimis non curat lex.

The Delhi High Court in the case of India TV Independent News Service Pvt. Ltd. and Ors. vs. Yashraj Films Pvt. Ltd., FAO (OS) 583/2011 Dt.21-08-2012, after adverting to the statute in the USA and the principles enunciated by the precedents in India, observed that four factors determine whether it is a case of fair use. These are :- (i) The purpose of character of the use, including whether such use of a commercial nature or is for non-profit educational purpose. (ii) The nature of copyrighted work. (iii) The amount and substantiality of the portion used in relation to copyrighted work as a whole. (iv) The effect of the use upon the potential market or value of the copyrighted work.

As regards the application of the maxim de minimis, the Delhi High Court enumerated five commonly considered factors as under:- (i) The size and type of harm; (ii) The cost of adjudication; (iii) The purpose of violated legal obligation and (iv) The effect on the legal rights of the third party (v) The intention of the wrong work.

The single judge regarded whether these principles are applicable to the present case is moot. It allowed the interim application of the plaintiff to restrain the defendant from using the content under contention noting the following:

• The defence of fair dealing and de minimis are required to be seen in the light that for an identical activity, the defendant had obtained license for valuable consideration. On first principles, these defences may not be readily available to the defendant.
• There is a qualitative element as well, apart from quantitative, in deciding both the aspects of fair dealing and de minimis.
• In the context of the nature of the activity engaged in by the defendant, where advertising constitutes the primary source of revenue, onus rests on the defendant to demonstrate that the content was used for the purpose of reporting on current events and affairs.
• The purpose for which the content was used without license also assumes critical significance, whether the content was used as a part of its ordinary and regular course of business and reporting news and programmes or for commercial purpose.