Illegal Circulation of E-Newspapers Online and Through Messaging Apps: Implications for Copyright and Contractual Violations
On March 25, 2020, the Indian government declared lockdown throughout the country, and we could not have anticipated the number of issues across all sectors that would surface in such a short time. Copyright infringement through social media turned out to be one such issue.
At a time when so many industries are facing losses both in terms of work and revenue, the newspaper industry in India has not been spared. The newspaper companies have lost a large number of subscribers to their physical newspapers due to fear of the spread of COVID-19 .
“You may not copy, reproduce, republish, download, post, broadcast, transmit, make available to the public, or otherwise use…content in any way except for your own personal, non-commercial use. You also agree not to adapt, alter or create a derivative work from any…content except for your own personal, non-commercial use. Any other use of…content requires the prior written permission….”
Thus, the unauthorized circulation of e-newspapers is a violation of the contractual obligation and copyright and outside the scope of “fair dealing”.
What the Courts Have Said
In January 2019, the Single bench of the Delhi High Court in Bennett Coleman & Company Limited &Ors. v. Ajay Kumar & Ors(CS(COMM) 21 of 2019, Jan. 16, 2019), passed an interim order and prevented a website (www.sscias.com) from downloading e-newspaper copies of Times of India & Economic Times, in a suit filed by Bennett Coleman & Co. The Defendants were the owners of the website www.sscias.com, an educational website providing study material, including the Delhi editions of Times of India & Economic Times, for its students. The Delhi High court enjoined the Defendants from copying the E-newspaper in pdf form and making it available to their readers and students for educational purposes, stating that it was an unlawful gain, as it causes revenue loss to these newspapers and severe harm leading to a drop in physical sales as well as online visitors to their website.
More recently, the Single Bench of the Delhi High Court, in a suit for injunction against a messaging app by a daily newspaper, Jagran Prakashan Limited v. Telegram FZ LLC & Ors., CS (COMM) 146/2020, dated May 29, 2020, passed an ad-interim injunction restraining a messaging app for circulating an e-copy of the newspaper through various channels without permission, in violation of the copyright and trademark of the newspaper.
Take of the Western World
U.S.copyright law also does not provide a definition of “Fair Use,” but like India, has included an assortment of uses that will fall under the meaning of fair use. As per 17 US code § 107 “Limitation on Exclusive Rights”, the fair use of a copyrighted work includes reproduction of copies, phono records, or by any other means as specified in § 106 & 106A for the purpose of criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.
Section 52 of the Copyright Act of India is in consensus with Article 13 of TRIPS (Trade Related Aspects of Intellectual Property) which says:
“Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder”
In today’s developed world, while the need for “fair dealing” must be upheld considering the public interest at large, it is important to give due care to the latter part of Article 13, which says the use should not conflict with a normal exploitation of the work and should not unreasonably prejudice the legitimate interests of the right holder. As the Indian court found, the mass circulation of PDF copies of E-newspapers on messaging apps causes a loss in the number of visitors to news sites. The large number of visitors to a publication’s website can bring more market visibility and potential subscriptions for the future.
Newspaper houses need to work on legal strategies and technological solutions to control mass illegal circulation on messaging apps. The solution to this problem needs to be addressed from both a legal and a technological standpoint. Unfortunately, the legal remedies available to newspaper companies against aggregators, individuals and other social media group admins for circulating e-newspapers in their entirety are practically impossible to enforce, even after obtaining the desired relief from the courts. The execution of court orders in India is complex, and identification of individuals or groups on messaging apps is a difficult task. Even John Doe orders—in which an injunction is issued against an unknown defendant—cannot stop the illegal circulation in its entirety, from a practical standpoint.
Article 2(8) of the Berne Convention 1986, envisions that the protection of the Convention shall not apply to news of the day or to miscellaneous facts having the character of mere items of press information. No copyright lies in a news item, fact or information which already exists, and a mere discovery of a fact and reporting of the fact cannot be granted protection under copyright law.But once that information is used in a work created in the form of a compilation or bundle of articles, with an established amount of skills, labor and capital, with the help of graphics, design, logo, etc., it becomes the subject matter of protection under copyright law. Thus, the PDF copy or e-copy of the newspaper is protected under the Copyright Act in its entirety.
As per section 14 of the Act, no person without the permission of the owner of the work has the right to copy, publish or communicate the work to the public. The copyright owner is entitled to sue for remedies, including injunction, damages, profits and delivery of infringing goods/material.The right provided under section 14 of the Act is not absolute in its nature and is subject to “fair dealing”.
Section 52(a) of the Act enumerates exceptions to copyright infringement, termed as “Fair-dealing”. The copyright law in India does not define the term “Fair dealing” but on numerous occasions the courts have interpreted the meaning of it, while referring to authorities from different jurisdictions. Lord Denning’s interpretation given in the English case Hubbard v Vosper ( 2 Q.B. 84) is considered more frequently by the Indian Courts to define the term “fair dealing”. Lord Denning stated:
“It is impossible to define what is “fair dealing”. It must be a question of degree. You must first consider the number and extent of the quotations and extracts…. then you must consider the use made of them…. Next, you must consider the proportions…other considerations may come into mind also. But, after all is said and done, it is a matter of impression.”
The punishment for the offense of copyright infringement is provided in section 63 of the Copyright Act. It states that any person who knowingly infringes or abets the infringement of the copyright in a work or any other right conferred by the Act is punishable with imprisonment for a term which shall not be less than six months, but which may extend to three years, and a fine which shall not be less than Rs. 50,000 (USD 660) but may extend to Rs. 200,000 (USD 2,640). The other penal provisions are mentioned under Sections 63A, 65A, 65B of the Act.
Information Technology Act
Although the Copyright Act is the only law that deals directly with illegal acts of copyright infringement, Section 43(b) of the Information Technology Act, 2000 is also relevant. Section 43(b) imposes liability when a viewer of a website downloads any copyrighted material from the site and proceeds to use the material without any authorization from the owner.
There are various legal remedies available for the copyright owner to pursue in appropriate laws and their provisions against any kind of copyright infringement. Along with issuance of cease and desist or takedown notices, filing lawsuits, and John Doe orders criminal proceedings also can be initiated under sections 63 & 64 of the Copyright Act, and sections 43 and 66B of the IT Act, 2000. Criminal remedies include imprisonment, fines, seizure and delivery of infringing copies.
Article 11 of the WIPO Copyright Treaty (1996) deals with an obligation of the member states for adoption of technological measures to safeguard the copyright of the author/owner.Technological Protection Measures (TPMs)are technological tools designed to prevent the unauthorized use of or access to work in digital form. TPMs include access control, such as cryptographic locks, passwords and digital signatures, or such as a digital lock that prevents the copying of particular content available digitally. It is also imperative for newspaper houses to have tech solutions to enhance protection of their content through advanced software programs.
A few of the available measures are as follows:
- Encrypting e-newspaper PDF copies with a certificate or password that recipients have to enter before they can open or view them;
- Applying protections to e-newspaper PDFs with the “Publish Sensitive Information” action, which helps the author to redact or password protect a PDF, and save the file with edit and copy restrictions applied automatically;
- Creating custom security policies to help everyone apply PDF password protection and permissions the same way every time;
- Organizational/User policies allow the author/owner to have access to PDFs for a limited time;
- Publish e-copies of newspapers with a security policy applied;
- Forms Server/cloud for e-newspaper PDFs;
- Access to users/readers to the secure PDF only when they authenticate their identities; and
- Revoking and reinstating access to PDF documents in case of illegal circulation.
Newspaper houses need to step up their efforts firstly through TPMs and then by following up with legal action. The dual protection of legal and technological measures is the only way out.