We are reposting this excellent article by Prashant Reddy (details at the end of the post) first published on the IPKat
Academic publishing houses, OUP and CUP have suffered yet another defeat in their litigation against Delhi University and a photocopy shop when a Division Bench of the Delhi High Court ruled against them in an appeal on December 9, 2016.
The crux of the lawsuit was whether the practice of photocopying copyrighted material and compiling them in course-packs was copyright infringement under Indian law. Given that universities and students have been photocopying copyrighted material for several years without any restrictions, the lawsuit had provoked an angry backlash from students and academics – both of whom then organised themselves into an association and intervened in the case.
The first round of litigation ended in an emphatic defeat for the publishers when a Single Judge of the Delhi High Court dismissed the lawsuit on 16th September, without conducting a trial, on the grounds that photocopying for educational use was covered under Section 52(1)(i) of the Copyright Act, 1957. This provision states that the following acts shall not be considered as an infringement of copyright:
“the reproduction of any work—(i) by a teacher or a pupil in the course of instruction”.
The end goal of the publishers was to introduce a licensing system in Indian universities and charge them a royalty for photocopying copyrighted material that were compiled into course packs.
The second round of litigation began with an appeal filed by the publishers before a Division Bench of the Delhi High Court. In its judgment the Division Bench set aside the judgment of the Single Judge and remanded the matter for trial on two issues.
Quantitative and Qualitative restrictions on photocopying for the purpose of instruction
On the point of law however the Division Bench has broadly concurred with the Single Judge and has ruled that the language of Section 52(1)(i) does not impose any quantitative or qualitative restrictions when a work is being used for educational purposes. According to the Division Bench, the only issue to be determined while claiming this exception under Section 52(1)(i) is whether the “inclusion of the copyrighted work in the course-pack was justified by the purpose of the course-pack”. As per the court this was an issue to be determined at trial with expert evidence although as far as I know there was no factual dispute on this issue of the course packs being relevant to the course. It is not clear how a judge is going to decide the relevance of readings to a particular course since that’s the teacher’s prerogative – what one teacher may consider relevant another may not.
The second issue remanded for trial was whether the photocopying of entire textbooks was permissible since apart from the course-packs, the photocopying shop was also found to be photocopying entire textbooks. However given the court’s ruling that there are no quantitative restrictions on photocopying under Section 52(1)(i), the photocopying shop merely has to argue that the textbooks were being photocopied by students as a part of their course-work.
Photocopying through an agent
On the issue of whether Section 52(1)(i) allows for reproduction only in the classroom or whether it can be extended to photocopying through an external photocopier, the court ruled against the publishers. The publishers had tried arguing that the provision had to be confined to classroom teaching and external photocopying done through the Rameshwari photocopy shop would not be covered. The court however disagreed, stating that the core issue was reproduction of a work through photocopying. The issue of photocopying through an agency was thus deemed “irrelevant” by the court.
Liability of Delhi University for the actions of the photocopier shop
A secondary issue in this case was Delhi University’s liability for the acts of Rameshwari photocopying shop. Rather than dismiss this claim on the grounds that copyright infringement had not been established, the court dismissed this claim on the grounds that the University had no role to play since the academic council’s action was restricted to setting the course curriculum leaving it to the teachers to decide the reading material. It appears that the Court completely failed to understand the issue at hand because teachers are still employees of the University and the issue at question was one of knowledge regarding the actions of the photocopying shop i.e. was the University aware of the actions of the photocopy shop?
8% of book or an entire work: How much exactly was being photocopied?
One of the key problems with the publisher’s strategy in this case is that they presented the material being photocopied in terms of percentage of each book from which the material was taken. For example before the Single Judge they argued that quantities of copyrighted books copied ranged from 8% to 33%, while the Division Bench calculated that on average 8% had been copied from the 23 books that were at dispute. These calculations are incorrect because most of the 23 books in question were compilation of essays or articles by different authors on a similar theme. In such cases, each essay or article is counted as an individual copyrighted work under the law. Therefore when one essay or article is photocopied from one book for inclusion in a course-pack, an entire copyrighted work is being reproduced.
Framing the argument in terms of percentage of a book weakened the case of the publishers especially when they were trying to argue that a ‘substantial part’ of each book was being photocopied. The phrase ‘substantial part’ is found in Section 14 of the Copyright Act which explains that a copyright authorises the owner of a copyright to control the use of a work or ‘substantial part’ of a work.
Foreign precedent and Indian copyright law
One of the many perils of being a former colony of the UK is our over-reliance on foreign legal precedent, often without understanding the context. The danger of this approach cannot be overstated in the context of copyright law. The Indian Copyright Act, 1957 is fundamentally different from most common law jurisdictions because of its heavy reliance on compulsory licensing after the Paris Revision of the Berne Convention in 1971 – these CL provisions are absent from the copyright legislation of most common law jurisdictions, especially developed countries like the US and UK.
Similarly on the issue of exceptions and limitations under Section 52, we have some provisions which use the phrase ‘fair dealing’ and several others omit the phrase ‘fair dealing’ giving them the flavour of complete exceptions. Given these unique characteristics of Indian copyright law it is necessary for the Indian bar and bench to be careful while using foreign terminology or case law. Unfortunately that is not the case in India.
The IP bar, especially at the Delhi High Court, indiscriminately cites foreign precedent in IP cases resulting in an IP jurisprudence that is a train-wreck. For example, some judges of the Delhi High Court have granted punitive damages in copyright and trademark cases by citing utterly irrelevant American judgments, when neither Indian copyright or trademark law provide for punitive damages.
In the current photocopying case, the publishers apparently tried arguing in favour of reading in the American style four-factor ‘fair use’ analysis in order to convince the court to limit the quantity that could be copied under Section 52(1)(i). This is a surprising line of argument because copyright owners are usually terrified of the American style fair use analysis due to the high degree of discretion left to judges. Clearly the publishers arguing this case thought otherwise and maybe Indian lawmakers should consider incorporating such an exception into the Indian statute.
Although the Division Bench rejected the publisher’s argument on the American style fair use exception and also expressed caution against relying on foreign case law, it thought nothing of devoting reams of pages in its judgment towards discussing an old copyright case from New Zealand because the provision at dispute in that case was similar (not identical) to Section 52(1)(i). However the context of New Zealand’s copyright law is entirely different from Indian copyright law since the former has never had the equivalent of Section 32A of the Indian Copyright Act – which is a wide ranging compulsory licensing provision introduced in 1983 for the purpose of making available copyrighted works for educational purposes at a reasonable price.
As I argued in an earlier post on IPKat, a wide reading of Section 52(1)(i) results in providing a carte blanche for reproducing copyrighted material for educational uses and would render Section 32A redundant – the principles of statutory interpretation require judges to reconcile apparent conflicts in a harmonious manner. It is impermissible to interpret one provision in a manner which renders another provision of the same law redundant. For whatever reasons, the publishers did not take this line of argument before the Delhi High Court.
The writer is co-author of a forthcoming book to be published by OUP – Create, Copy, Disrupt: India’s Intellectual Property Dilemmas (with Sumathi Chandrashekaran) and is a Research Associate at ARCIALA, School of Law, Singapore Management University.