Authored By: Yuvraj Pandey
University of Allahabad
CASE ANALYSIS OF WARNER BROS ENTERTAINMENT LTD
Vs.
MR. SANTOSH V.G.
ABSTRACT:
This is a case analysis of the landmark case of Warner Bros Entertainment Ltd versus Mr Santosh V G. This case has been analysed under the following heads, namely; Introduction, Brief Facts of the Case, Issues of the Case, Judgement, Dissenting Views, Critical Overview, Conclusion, Suggestion and References. The judgement explores copyright infringement under the first schedule of the International Copyright Order, of 1991, under the Copyright Act, of 1957 and the Copyright Amendment Act, of 1994. It deals with the sections of copyright Infringement under Section 14 (d) (ii) along with Section 51 (a) (i) of the Copyright Act & Section 51 (b) (iv) of the Copyright Act, 1957.
KEYWORDS: Copyright infringement, Copyright Act of 1957, Selling, Buying and Hiring of DVDs, Cinematography work.
INTRODUCTION:
Copyright is a legal universal right available to every person who owns it through legal registration. International laws play a major role in clarifying and deciding the copyright of individuals across the globe which is available to them at any place, at any time. The Indian court in this landmark case defined the infringement of copyrights of any party under Section 14 (d) (ii) read with Section 51 of The Copyright Act, 1957, Infringement under Section 51 (a) (i) of the Copyright Act, 1957, Infringement under Section 51 (b) (iv) of the Copyright Act, 1957. The judgement built an application of the Copyright Act, 1957 after its introduction in the very past. [1]
FACTS OF THE CASE:
Plaintiff (Warner Bros) claimed that Defendant (Santos VG) offered the DVDs (rented) to its customers who either collected them from the shop or the defendant delivered DVDs to them. Several DVDs are mentioned with the warning that they are (DVDs) not permitted for sale or rental outside the US and Canada but they are still hired out by Defendant. Plaintiff claims that without the copyright owner’s license providing (a film) on hire or offering a film for hire is an act of infringement.[2] The plaintiff alleged that the defendant lacks rental licenses in his favour and all such rental acts amount to the infringement of copyright under the provisions Section 14 (d) (ii) read with section 51 including Section 51 (a) (i) of the Copyright Act & Section 51 (b) (iv) of the Copyright Act, 1957.
Plaintiff further claimed that Defendant proclaimed to have obtained the assent of the registered organization against film piracy & he owns the first DVD store in India with a complete license. The defendant also had not allegedly obtained any legal consultations or assent from the Motion Picture Association of America (MPAA) or the MPA.[3]
Consequently, Plaintiff sued Defendant with the claim that the defendant had infringed their copyrights in respect of films, by hiring, and offering for hire, infringing copies, in India. The plaintiff also demanded for permanent injunction and damages against the defendant.
“The doctrine of first sale” applies in India, and there was no case of infringement was the argument presented by the defendant’s side. It was also argued that since Section 30 of the Trademarks Act, 1999, and Section 107 (A) of the Patents Act, 1970, permit certain types of use and importation analogous to that in the present, the same should be extended over copyright to ensure uniformity between the different laws.[4]
ISSUES OF THE CASE:
The case covers the following issues: –
- Whether the action of the defendant of giving on hire or rent in India, copies of cinematograph films, authorized for sale or rental only in a particular territory outside India constitutes infringement under Section 51 (a) (i) of the Copyright Act, 1957?[5]
- Whether the import by Defendant into India for giving on hire or rent in India copies of cinematograph films of DVDs authorized for sale or rental in a particular territory outside India constitutes an infringement of copyright under Section 51 (b) (iv)?
- Whether the plaintiff is entitled to an injunction as claimed?
JUDGEMENT:
The court held that the cinematograph films under which the plaintiff claims copyrights for the acts of the defendant of the giving on hire or rent in India, copies of cinematograph films, authorized for sale or rental only in a particular territory outside India constitutes infringement under Section 51(a) (i) of the Copyright Act, 1957.
Section 51 of the Copyright Act states that the copyright will be deemed infringed when any person without authorization does anything where the exclusive right rests with the owner of the copyright.
Under Section 14 rights available to the owner of copyright in a cinematograph film are to make a copy of the film, to sell or give on hire, or offer for sale or hire, any copy of the film & to communicate the film to the public.
Section 51(b) defines the act of any person when he without a licence from the owner of the copyright makes for sale or hire, or sells or lets for hire, or offers for sale or hire, distributes either for trade or to such an extent as to affect prejudicially the owner of the copyright, by way of trade exhibits in public & imports into India, any copy of a work will be deemed as an infringement of copyright. However, the exception for ‘one copy’ imported for private and domestic use of the person importing such copies is permitted. Thus, Section 51(b) makes it clear that the unauthorized importation of copies of any class of work (including cinematographic works) constitutes an infringement of copyright.[6]
The court also held the infringement of the Fundamental Rights of the defendant in the case of restriction on the defendant in conducting his rental business in India, using a copy of a cinematograph film procured from outside India which is authorized for sale or rental in a particular territory outside India only, without a license from the copyright owner, guaranteed under Article 19(1) of the Constitution of India considering [7]
The plaintiffs were granted no final relief but an ad-interim injunction granted binding the defendant till disposal of the suit.
ANALYSIS & CONCLUSION:
While referring to the mentioned laws and sections the judgement of the Court emphasised the established principle: parallel import cannot infringe the copyright of the owner in a cinematographic work by enforcing his rights against a person who, without authorization, imports and offers for hire copies of his work. There is no relevancy to the issue of infringement in the question of whether such unauthorized imported copies are original or pirated. The Court held correctly that the specific mention of exhaustion of rights in respect of literary (except computer programs), musical and dramatic works and the deliberate omission in case of any other class makes it clear that the legislature intended not to apply the exhaustion principle to any other class of works including cinematographic works. Thus, the judgement delivered by the Court that ‘exhaustion of rights in each case would depend upon the language of the relevant statute’, may own relevancy and application to all cases where the principle of exhaustion would be in question.[8]
REFERENCE:
The Court, while delivering its judgement has primarily referred to the following things:
- Copyright claims under the first schedule of the International Copyright Order, 1991 and therefore, under the Copyright Act, 1957 and the Copyright Amendment Act, 1994.
- Infringement of copyright under Section 14 (d) (ii) read with Section 51 of The Copyright Act, 1957.
- Infringement under Section 51 (a) (i) of the Copyright Act, 1957.
- Infringement of copyright under Section 51 (b) (iv) of the Copyright Act, 1957.
[1] https://ssrana.in/ip-laws/copyright-law-india/copyright-misuse-and-infringement-india referred on 12/01/2025 a 2:45 PM.
[2] https://indiankanoon.org/doc/67850614 referred on 12/01/2025 at 3:00 PM.
[3] https://indiancaselaws.wordpress.com/2013/09/08/warner-bros-entertainment-inc-and-ors-v-santosh-v-g referred on 12/01/2025 at 3:15 PM.
[4] https://indiancaselaw.in/warner-bros-entertainment-inc-and-ors-v-santosh-v-g referred on 12/01/2025 at 3:15 PM.
[5] https://indiankanoon.org/doc/67850614 referred on 12/01/2025 at 3:30 PM.
[6] https://indiankanoon.org/doc/67850614 referred on 12/01/2025 at 3:30 PM.
[7] https://nishithdesai.com/generateHTML/5805/4 referred on 12/01/2025 at 3:35 PM.
[8] https://www.nishithdesai.com/generateHTML/5805/4 referred on 12/01/2025 at 3:35 PM.
