In Shemaroo Entertainment Limited v. News Nation Network Private Limited IA(L) 21705/2021 in COMIP(L) 434/2021 (Suit), the Bombay High Court (Court) in a judgment and order dated 27 April 2022 (Decision) granted ad-interim injunction in favour of Shemaroo Entertainment Limited (Plaintiff) and restrained News Nation Network Private Limited (Defendant) from using the Plaintiff's works (defined hereinafter). The Court rejected the defences of fair dealing and de minimis use as the conduct of the Defendant and its use of the Plaintiff's works was not falling within the ambit of those defences which was clear from the fact that the Defendant had taken a license for the same Plaintiff's works in the past.

Factual background

The Plaintiff and the Defendant had entered into non-exclusive license agreements dated 19 July 2018 and 19 July 2019 (said agreements) whereby the Plaintiff had granted license to Defendant to use the Plaintiff's content such as cinematographic films including audio-visual songs and audio-visual scenes, clips of the films (Plaintiff's works), till June 2022. On 17 July 2020, the Defendant expressed its inability to continue with the said agreements, and the same was terminated w.e.f. 1 August 2020. Post termination of the said agreements, the Defendant had agreed and undertaken in writing not to use the Plaintiff's works without license. However, the Defendant was found to be using the Plaintiff's works. The Plaintiff issued cease and desist notices to the Defendant to which the Defendant responded and contested its liability.

As such, the Plaintiff instituted the suit for copyright infringement before the Court.

Rival Contentions

The Plaintiff contended that the Defendant having taken a license for a valuable consideration in the past for the same Plaintiff's works, had no right to use the same post termination of the said agreements.

In response, the Defendant banked upon the principle of 'fair dealing' and contended that it has used the Plaintiff's works as a part of its regular and ordinary course of business of reporting news and other programmes, and such use was permissible under Section 52 of the Copyright Act 1957 as amended from time to time (Copyright Act) which lays down certain acts which does not amount to copyright infringement. The Defendant also relied upon the principle of 'de minimis non curat lex' (which means that the law is not concerned with small things) contending that it has used the Plaintiff's works for a very short period of time (hardly lasting a minute) in its regular and ordinary programmes, and therefore, the same was not actionable before the Court. The Defendant relied upon the judgments of Delhi High Court in the matters of Super Cassette Industries Limited v Hamar Television Network Private Limited and Anr. (Super Cassette case) and India TV Independent News Service Private Limited and others v Yashraj Films Private Limited (Yashraj case) to bolster its submissions of fair dealing and de minimis use.

In rejoinder, the Plaintiff contended that the defense of fair dealing cannot be raised as the Plaintiff's works were commercially exploited which did not fall within the ambit of fair dealing and in fact amounted to infringement of copyright in Plaintiff's works. Regarding the defense of de minimis, the Plaintiff contended that the manner of use by the Defendant of the Plaintiff's works was exactly the same as it was when the Defendant had taken a license from the Plaintiff, and thus, the Defendant's contention of de minimis is baseless.

Findings and Decision

The Court considered the principles evolved by the Delhi High Court in Super Cassette case and Yashraj case in relation to fair dealing and de minimis use wherein the Delhi High Court has laid down certain factors to be considered such as the nature of use (commercial or non-commercial), the length / size of infringing use, the effect of infringing use upon the market value of the copyrighted work, the intention of the infringer, etc.

The Court observed that the Defendant used the Plaintiff's works in various programmes, and it failed to produce material to show that the Plaintiff's works were used as a part of its ordinary and regular course of business of reporting news. Thus, the Defendant failed to prove fair dealing.

The Court further observed that in examining the defences of fair dealing and de minimis use, while the duration / length of infringing use (quantitative aspect) is an important factor, however, it is also equally important to look at the nature of use (qualitative aspect). The Court observed that the quantitative aspect de hors the qualitative aspect is not sufficient to decide the above defences.

The Court also took into account the said agreements whereby the Defendants had taken a license for the same Plaintiff's works in the past and observed that the defences of fair dealing and de minimis use may not be available to the Defendant.

In view of the above, the Court granted ad-interim injunction against the Defendant.

Comment

The Decision is an important addition to the evolving jurisprudence on the defences of fair dealing and de minmis use in copyright infringement claims in India. The Decision underlines an important aspect that in adjudicating such defences, it is not only the duration and extent of use (i.e., quantitative aspect) but also the nature of use and conduct of parties (i.e., qualitative aspect) is to be considered in the facts and circumstances of each case. The fact that the Defendant had earlier taken a license for the Plaintiff's works weighed heavily (and rightly so) against the Defendant.

The Decision would act as a guiding light in examining and adjudicating similar disputes in future.

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