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Enforcing Compulsory Licensing provisions under the Copyright Act

Issued: April 01 2009
The concept of compulsory licensing is a statutory exception to the 17 general principles governing copyrights for literary, artistic and musical works for exclusive rights owned by the author as the fruits of his labour, and thus considered to be his property. The provisions for compulsory licensing are included in copyright law in public interest, so that the work may not be withheld from public, for reason solely residing in royalty. The monopoly of the author to distribute, communicate or licence his works is reconciled with the accessibility of the work. The Indian Copyright Act, 1957 and rules made thereunder contain elaborate provisions regarding the licensing of copyrighted materials. Licensing under the copyright law can be either voluntary or non-voluntary and can be done not only with respect to the existing work, but also with respect to future works.

Compulsory licensing can be invoked under certain circumstances with respect to both published works and unpublished works under Section 31 of the Act. Compulsory licenses can also be obtained for the purposes of production and publication of the translation of works. In case of works published or performed in public, compulsory licenses can be obtained by making a complaint to the Copyright Board on the ground that the owner or his assignee has:

(1) Refused to re-publish or allow the republication of the work or has refused to allow the performance of the work in public and by reason of such refusal, the work is withheld from the public, or

(2) Refused to allow the communication of the work to the public by broadcast of the work or work in the sound recording on such terms, which the complainant considers reasonable.

The Copyright Board is required to inquire into the complaint and also give the owner of the copyright a reasonable opportunity to be heard. It must hold an enquiry as necessary to satisfy itself that the grounds of the refusal of the owner of the copyright or his assignee are not reasonable, and if so, it shall direct the Registrar of Copyrights to grant to the complainant the licence to broadcast. This grant would be on terms and conditions determined by the Copyright Board for payment of royalty and compensation and for doing such other acts and things as the board may determine.

The section, therefore, is a complete code. It lays down the entire procedure for determining the extent of the royalty. The Copyright Board may or may not accept the terms of the complainant as reasonable and may impose further terms and conditions. It may direct the complainant to make such payment of fee as royalty or compensation, as it may consider reasonable. That may be equal to, more or less than what the complainant may have offered to the owners of the copyright.

In Entertainment Network (India) v. Super Cassette Industries, the court laid down the procedure to be followed under Section 31(1)(b) by the Copyright Board, including the holding of proper enquiry, the reasonable opportunity of being heard to the copyright owner and to grant compensation only on reasonable basis to be determined and subject to compliance of other conditions. The ratio of the judgement was that upon the refusal of a reasonable offer for obtaining a licence to broadcast the sound recording, a complaint to the Board for issue of compulsory licence is maintainable “as it has jurisdiction to deal with the same.”

In Music Choice India Private v. Phonographic Performance, the plaintiff approached the civil court for a decree against the defendant who was demanding unreasonable royalty from the broadcasters. The plaintiff prayed that he be entitled to a licence to broadcast the present and future sound recordings of the defendant on payment to the defendant of such royalty and compensation subject to the terms and conditions determined by the Copyright Board on the plaintiff’s application already filed before it under Section 31(1)(b). It was also prayed that an injunction be granted against the defendant restraining them from interfering with the plaintiff’s broadcast of the sound recordings of upon latter paying the former royalty or compensation fixed by the Copyright Board and upon the terms and conditions determined by the Board.

The court considered the judgement in Premier Automobiles v. Kamlekar Shantaram Wadke of Bombay, which speaks about the ouster of civil court’s jurisdiction where a statute creates rights and liabilities and provides remedy for enforcement were already considered. The court pronounced that the machinery for adjudication of the plaintiff’s complaint is provided under Section 31(1)(b). The plaintiff can approach, and had in fact approached the Copyright Board for redressal of his grievance. The court ruled: “The rights under the Act can be enforced before the Copyright Board by following the procedure prescribed by that law. In fact the said Section sets out an entire code for redressal of such grievance. Hence, the Civil Court will not have jurisdiction to grant the final relief in the suit by trying it, and cannot also grant any injunction to prevent interference of the plaintiff's broadcast (which is a threatened action) under the agreement or the licence which becomes enforceable under the Copyright Act itself.”

Generally speaking, the broad guiding considerations are that wherever a right, not pre-existing in common law, is created by a statute and that statute itself provides a machinery for the enforcement of the right, both the right and the remedy having been created at the same time and a finality is intended to the result from the statutory proceedings, then, even in the absence of an exclusionary provision, the jurisdiction of civil courts is impliedly barred.

LEX ORBIS Intellectual Property Practice
709/710, Tolstoy House, 15-17,
Tolstoy Marg, New Delhi - 110 001,
T: +91 11 2371 6565
F: +91 11 2371 6556

About the Author

Manisha Singh Nair is a partner at Lex Orbis in New Delhi. She has the distinction of practicing in both the prosecution and enforcement arenas, and has extensive experience in the post-lodgment prosecution of patents, trademarks and designs.


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