For the Love of Cricket: The Delhi High Court’s Dicta on Fair Dealing Increases the Woes of the News Channels

ESPN Stars Sports v. Global Broadcast News Ltd. and Ors. is the latest case decided by the Delhi High Court following a string of cases dealing with the exception of fair dealing and news channel reporting.

This case seems to a chance to take advantage of the favourable attitude of the Delhi High Court towards broadcasters, especially in light of the earlier decisions of the concerned court in Prasar Bharti v. Sahara TV Network Pvt. Ltd. and Ors.(MANU/DE/3041/2005) and the injunction suit filed by Prasar Bharti against news channels in relation to infringing broadcast by the latter of the Beijing Olympics. An earlier post by Prashant dealt with the dispute involving Prasar Bharti and several news channels over the telecast of the 2008 Beijing Olympics.


The facts of the case are as follows: the Plaintiff, ESPN Stars Sports, sought a permanent injunction against the Defendants, Global Broadcast News Ltd. and Ors., seeking to restrain the Defendant news channels from utilizing the future footage of Plaintiff, in the matches played, and to be played during the India-Australia test matches, 20×20 series and the one day internationals involving Sri Lanka, India and Australia, (all the matches to be played in Australia, during December 26, 2007 to March 8, 2008) without obtaining the Plaintiff’s prior permission or in violation of the Plaintiff’s terms and conditions.

It is pertinent to note that the footage was used and to be used by the news channels in special segments/programmes telecasted by the news channels in relation to these matches. Some examples of these programs being ‘LOC: Love of Cricket’, ‘Sydney Ke Villain’, and ‘Wah Cricket’ (the Bollywood inspired names of these programs are cited here for pure entertainment purposes).

Case History

Just to map the case history, this case was originally decided by Justice Ravindra Bhat in favour of the Defendant news channels. His decision of dismissal of the matter was based on the failure of the Plaintiff Broadcasting Organisation, the exclusive licensee of the concerned broadcast, to implead the owner of the broadcasting right, in violation of the mandate of Section 61 of the Copyright Act. The appeal was based, inter alia, on the ground that the rights of broadcasting organizations are treated as ‘related rights’ under the Copyright Act, not falling within the ambit of a copyright. Therefore, given the special status and nature of these rights, they are exclusively governed by Chapter VIII (Sections 37-39A) of the Copyright Act. Consequently, since no reference is made to applicability of Section 61 to broadcasting rights and infringement actions in Chapter VIII (more specifically in Section 39A of the Act), the latter is not applicable to an action of infringement filed by an exclusive licensee of a broadcasting organization. Hence, the Court of First Instance erred on holding that Section 61 is mandatorily applicable to infringement actions filed by broadcasting organizations in the capacity of an exclusive licensee.

Section 61

In a very interesting judgment, the court overruled the earlier decision of non-maintainability of the suit in light of Section 61.

Section 61 of the Copyright Act reads as follows:

61. Owners of copyright to be party to the proceeding. – (1) In every civil suit or other proceeding regarding infringement of copyright instituted by an exclusive licensee, the owner of the copyright shall, unless the court otherwise directs, be made a defendant and where such owner is made a defendant, he shall have the right to dispute the claim of the exclusive licensee.

(2) Where any civil suit or other proceeding regarding infringement of copyright instituted by an exclusive licensee is successful, no fresh suit or other proceeding in respect of the same cause of action shall lie at the instance of the owner of the copyright

Thus, as is clear from a plain reading of the text, the provision mandates that in an civil suit of infringement filed by an exclusive licensee, the owner of the copyright shall, unless the court otherwise directs, be made a Defendant. As stated above, Justice Ravindra Bhat dismissed the suit on the ground that the Appellant (Plaintiff) had failed to comply with the mandate of Section 61 of the Copyright Act. He concluded that, “the mandate of Section 61(1) applies in case of claims for infringement of broadcast reproduction rights and the non-impleadment of the owner of copyright is fatal to the maintainability of the suit. Similarly, the non-joinder of owner of the copyright renders the suit liable to be rejected. The proviso to Order 1, Rule 9 Civil Procedure Code enacts that a suit can fail for non-joinder of a necessary party. The failure to implead the owner of copyright in the present case has resulted in keeping out a party whose presence is necessary for a final and complete decision on the question involved in the proceeding. Thus, apart from the suit being not maintainable due to Section 61(1) of the Act, it is also bad for mis-joinder of a necessary party.”

It is pertinent to note that in his reasoning Justice Bhat treated copyright and broadcaster rights to be at par, such that, provisions which govern copyright would also be applicable to broadcasters rights unless specifically excluded.

On appeal, the double bench of the Delhi High Court stated that as per Clause 11 of the Statement of Objects and Reasons of the Copyright Act, the broadcasting reproduction rights were akin to the rights of copyright holder. This terminology in itself showed that the two rights, though akin to each other, operated in exclusive and separate ambits.

The court further strengthened its argument of the separate existence of the two rights on the multiple reasons of:

(a) inclusion of a separate definition of ‘broadcast’ in Section 2(dd) of the Act and not including it within the definition of ‘work’ (defined under Section 2(y)) that would be the subject matter of copyright protection under Section 13 of the Copyright Act;

(b) copyright infringement being dealt with under Section 51 of the Copyright Act, whereas the infringement of Broadcasting Rights being dealt with under Section 37(3) of the Act, independent of any reference to provisions dealing with copyright infringement;

(c) Lastly, that fact that Section 39A referred only to certain specific provisions, applicable to copyright, which were to be adapted, modified and applied to rights of broadcasting organisations. Hence, given the fact that the legislature has enumerated the specific provisions which are to be made applicable to broadcasting organizations, the absence of a non-obstante clause does not take away from the exclusive operation of these provisions, independent and to the exclusion of provisions not mentioned in the concerned section. Thus, since Section 61 is not mentioned in Section 39A, the same is not applicable to infringement suits filed by exclusive licensees of broadcasting rights.

To briefly reiterate, the separation between broadcasting rights and copyright is important because it leads to the conclusion that the latter are ‘special’ in nature and are exclusively governed by Chapter VIII of the Copyright Act and the adapted and modified versions of the sections mentioned in Section 39A. Since Section 61 is not mentioned in Section 39A, the same is not applicable to the exclusive and special domain of broadcasting rights and infringement suits filed by exclusive licensees of broadcasting rights.

However, the most interesting part of the judgment regarding Section 61 relates to the analysis made of the separate parts of the telecast and the various rights held by the Appellants in the telecast. It is pertinent to note that during the telecast of these matches, the Appellant also telecasted several shows like experts in a pre-match analysis, change of innings show and a post match show, wherein cricket experts analysed the match and the result etc. Also, during the match the Appellants organized commentary by cricket experts and legends. The commentary is partnered by telecast of statistics and hawk eye analysis during the match. For example, when a batsman was to start his innings, the Appellants would flash his career statistics or flash statistics reflecting the possible run rate the batting team could reach if it retained a certain run rate. The court held that the Appellants held copyright over the independent insertions and programs telecast. However, in the live match broadcast by the Appellants as exclusive licensees of Cricket Australia, they held broadcasting reproduction rights, independent and exclusive of the copyright held by them in their own additional inputs. It also went on to say that the telecast by the Appellant is distinct from that of the host broadcaster in light of the substantial additional inputs made by the Appellant. Consequently, given the substantially altered nature of the final telecast made by the Appellant, it holds copyright in the same. Therefore, given the fact that the Appellant is the copyright owner of the substantially modified final telecast, it can file a suit against the Respondent. In such a situation, since the Appellant is the copyright owner, the requirement stated in Section 61 does not affect the maintainability of the suit. Moreover, if the Appellant is to be treated as Exclusive Licensee of the Broadcasting Rights given the special nature of these rights and the fact that they operate independent of provisions other than those mentioned in Section 39A of the Copyright Act, Section 61 does not affect the maintainability of the suit.

This decision of the Court also meets the practical concern of the exclusive licensees. Normally, under the exclusive license agreement, a foreign owner of the copyright or ‘broadcasting rights’ relinquishes all rights in the licensed market and often under the agreement allows the exclusive licensee to file infringement suits within the licensed territory. The point being that, after an exclusive licensee is appointed, the concerned market becomes his exclusive domain for exploitation of the licensed intellectual property rights, even to the exclusion of the copyright owner. Hence, subject to the terms of the contract, the owner has little incentive to effectively contest the infringement suit in the concerned country/territory of the exclusive licensee. Thus, casting a burden on the licensee to make the owner a party would often result in an ex-parte decision in relation to the owner and unnecessary delay in the proceedings since the Plaintiff would have to prove that he has made all reasonable attempts to serve notice on the owner such that he can turn up for the hearing.

Fair dealing

Before the Single Judge Bench, the Defendants had raised the defense of fair dealing to the claims of infringement. The Plaintiff opposed the defense stating that the extent of usage of the telecast footage and the fact that the news channels benefited commercially from the same took away from the claim of fair dealing. To support their claims the Plaintiff cited the earlier dicta of the Delhi High Court in Prasar Bharti v. Sahara T.V. Network Pvt. Ltd. and the Broadcast Code published by the British Broadcasting Corporation (BBC) and BSkyB, dated 29.2.2006. These sources basically restrict the broadcast usage by news channels and state clear caps in terms of time that a news item can report specified sporting events, using excerpts from the event. As per the BBC Broadcast Code, the concerned broadcast usage cannot exceed 90 seconds per sport events within the specified events. While, as mentioned above, in the Prasar Bharti case, the Delhi High Court accepted a cap of seven minutes of a broadcast in 24 hours. On the basis of these sources, the Plaintiff argued that the permissible levels of broadcast of such cricket matches by news channels, for the purposes of news, could not be in excess of 30 seconds per bulletin and a total of 2 minutes per day. As opposed to this minimal usage cap, the data submitted by the Plaintiff before the court showed that the aggregate amount of the plaintiff’s footage already used by the Defendant news channels varied from a maximum of approximately 15 hours to a minimum of roughly 9 hours, over a given period of telecast.

It is pertinent to note that the Appellate Court did not give any ruling on the matter of fair dealing or grant any interim relief as the concerned matches and telecast were over. However, as regards the defense of fair dealing the court stated that any unauthorized and prolonged telecast/replay of cricket matches or portion thereof falling beyond the concept of fair dealing and is an infringement of the exclusive rights of broadcasting organisations. They went on to disagree with the earlier judgment of a single judge and stated that the matter should not be dismissed on the mere ground that the cap proposed by the Appellant cannot be made universal. Interestingly the single judge in his obiter had dismissed the injunction application on the ground that the Plaintiff had not shown sufficient materials, barring the aggregate length of the clippings used by defendants in their news programmes and sports reviews, to say that it amounted to unfair dealing. Thus, the Plaintiff had not satisfied the balance of probabilities to be granted an injunction in its favour and not on the ground of the Plaintiff proposing a universal time cap.

Further, the court went on to state that there is no universal time cap or 30 seconds or 7 minutes, and to what extent an infringing telecast is fair dealing depends on the facts and circumstances of each case. To establish the relevant parameters to be used in determining of fair dealing, the court adopted the parameters laid down in Media Works NZ Limited and Anr. v. Sky Television Network Ltd., wherein it was stated that, “fair dealing meant that the extract must be brief, and should be considered in light of the length of the recording. Moreover, the extracts should be used within 24 hours of the concerned event for it to amount to current event and only be used in a programme that reported current events, e.g., not in a review of the player’s career to date.” Using these parameters, in the case the High Court of New Zealand decided the matter in favour of the Broadcasters. The Delhi High Court adopted the test and went on to state that commercial deployment of the Appellant’s footage in excess of 30 seconds per bulletin and a total of 2 minutes per day may negate the plea of fair dealing. Thus, bringing the law back to the post Prasar Bharti dicta. Thus, based on all these arguments the court opined that the Defendant could show controversial incidents and landmark achievements of players, however, in the guise of fair use such events could not be shown to the extent that fair comment transpires into a commercially profitable programme.

The most interesting part of the fair dealing argument kicks in with the connection made by the Respondents between Fair Dealing, Freedom of Speech under Article 19(1)(a) of the Indian Constitution and their right to telecast the snippets from the match. Following the established practice of American courts in this regards, the Delhi High Court held that though news reporting is a fundamental right, repeated and prolonged telecast by the Respondents, especially in the form of a special programme, may amount to commercial exploitation which is not protected under Article 19(1)(a), especially so, when the factum of the programme being aired later in the day is constantly advertised and announced by news channels and such programmes are liberally interposed with commercials. Thus, on these grounds, while not granting the interim relief application in favour of the Appellants, the court concluded that the excessive usage of the Appellant’s telecast commercially by the Respondent negated their plea of fair dealing.

To conclude, though the dicta of the Delhi High Court did not result in an interim application against news channels in this case, as stated by the court itself, its decision and the strict parameters laid down by it are relevant for deciding similar future cases.

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