[Image taken from here]
In a very recent decision that promises to change the aspect of legally permissible ‘breaking news’, especially regarding sports events, the Delhi High Court has sought to lay down certain cogent principles which the Spicy IP team brings as follows for the benefit of the readers. [Warning: Long Post]
Case name: New Delhi Television Ltd. (Appellant) v. ICC Development (International) Ltd. & Another (Respondent) [(FAO) OS 460/2012]
Date of Judgment : October 11, 2012
Forum: High Court of Delhi
Coram: Pradeep Nandrajog, J. and Manmohan Singh, J.
Facts: Appellant is the operator of a News Television Network, controlling TV channels like NDTV 24×7, NDTV India, NDTV Profit and NDTV Good Times, while the Respondent is the owner of the copyright i.e. broadcasting and reproduction rights, pertaining to cricket tournaments organized by International Cricket Council (ICC) (the broadcasters claim the right under a contract with ICC).
Forum: High Court of Delhi
Coram: Pradeep Nandrajog, J. and Manmohan Singh, J.
Facts: Appellant is the operator of a News Television Network, controlling TV channels like NDTV 24×7, NDTV India, NDTV Profit and NDTV Good Times, while the Respondent is the owner of the copyright i.e. broadcasting and reproduction rights, pertaining to cricket tournaments organized by International Cricket Council (ICC) (the broadcasters claim the right under a contract with ICC).
The Respondent filed this suit seeking permanent injunction to restrain the Appellant from infringing the copyright and reproduction right in the broadcast of the cricket matches organized by ICC. ESPN (Mauritius) Ltd. has acquired the broadcasting and the reproduction rights from the Respondent for all ICC events till 2015 vide an exclusive licence agreement dated July 11, 2007. As a licensee, ESPN also claims the right to exclusivity to record, edit and use footage for the purpose of making and transmitting highlights/clippings in television shows relating to cricket organized by ICC.
The News Broadcasters Association (NBA) had drafted the NBA News Access Guideline for One-day and T-20 Cricket Matches’ on its own (having no statutory authority) on January 9, 2011. Respondent objected to this and issued the ICC Cricket World Cup 2011 News Access Guidelines for India (ICC Guidelines) on January 25, 2011. No consensus emerged, however, on which guideline should the NBA members abide by. The Respondent pleaded violation of its own guidelines by the Appellant during the ICC World Cup, 2011 and accordingly, a quia timet action was brought via the present suit, so as to restrain the Appellant from using without Respondent’s consent, the footage of the proposed ICC Organized T20 World Cup Cricket Tournament.
The Appellant didn’t deny the Respondent’s proprietary rights, but extended the defence of fair dealing in the broadcast in reporting of current events [S. 39(b) of the Copyright Act, 1957 and S. 52(1)(a)(iii)]. The Appellant had, in the past, put on the air special programmes involving match discussion, review, criticism, analysis, pitch reports and commentaries by renowned cricketers. The Appellants profit from these programs by way of advertising revenue and display of brand names/ trademarks in the backdrop. The usage of such brand names in such programs in a prominent fashion like that may give rise to the impression in the minds of the populace that the company owing said brand name/trademark is in some manner associated with the original ICC event in some capacity such as the sponsor.
Permanent injunction was sought by the Respondent against the Appellant, so as to prevent the latter or its authorized representative from copying, reproducing, cusing, broadcasting or communicating to the public, telecasting or streaming, commercially utilizing or otherwise dealing in any manner whatsoever with any of the footage and content of the past/future ICC events or infringing the Respondent’s exclusive broadcast rights, broadcast reproduction rights or other rights. Damages were also sought from the infringer by the Respondent.
The Single Judge had originally decided that the Appellant could use footage length of the maximum limit prescribed by the ICC Guidelines, that fresh footage would be delayed by at least 30 minutes, the Appellant should not air any advertisement immediately before, during or immediately after the said footage, unless said footage is shown in the news bulletins, in which case, ticker advertisements would be allowed provided that such advertisements had not been booked by the Appellant to be shown only during reporting of ICC Twenty 20 World Cup, 2012. Moreover, the advertisement(s)/logo(s) of the sponsor of the news bulletin in which said footage is shown can be carried by the defendant on tickers at the time of reporting of the event, only if the sponsorship is of the news bulletin and the logo and/or advertisement of the sponsor appears on the ticker(s) throughout the news, except when the advertisements of others are being aired. Nor can such footage be used by the Appellant in special programs indicating an association between the advertiser/sponsor of the program and the subject matter of the program. Furthermore, any use of such footage by the Appellant would have to be accompanied by courtesy bugs/courtesy lines providing due acknowledgement to the Respondents and the official ICC event logo.
The Single Judge had relied upon decisions like ESPN Star Sports v Global Broadcast News Ltd. [2008 (38) PTC 477 (Del)] to hold that both copyright and broadcasting reproduction rights could separately co-exist, that these rights may vest with one/more persons and that prolonged and repeated footage of the broadcast, beyond what was permissible by fair dealing, would unfairly affect the goodwill, advertising and commercial prospects of the right holder. Reliance had also been placed on Media Works NZ Limited & Anr. v. Sky Television Network Ltd. wherein it was held that in the context of fair dealing, the extract must be brief and should be considered in the context of the length of the recording and that the extracts had to be used within 24 hours of the event in order for it to amount to a ‘current event’, and that too, only in a program that reported current events. The NBA guidelines did not have any legal authority, while the ICC guidelines were allowed to be relied upon as an aid to determine the extent of fair dealing while using the footage.
An appeal had been preferred from this decision before the Delhi High Court.
Judgment: The judges began with reiterating the need to protect the interest of the investors in such mega broadcasting events. Although NBA was partially allowed to be impleaded in the suit, it was not granted the right to make submissions.
The court held that an event/affair which may be entertainment to the masses can still pose as an news event/affair to be reported, as per Nine Network Australia Pty Ltd. vs. Australian Broadcasting Corpn.[(1999) 48 IPR 333] and TCN Channel Nine Pty Ltd. vs. Network Ten Pty Ltd. [2002(190) ALR 468]. In the present case, the first point to be determined was whether the Appellant’s alleged activities can be termed to occur by way of reporting or otherwise. The test that was laid down was whether the activity involves coverage/reporting that is result oriented or whether it is primarily an analysis/review of a sporting event. Cases like British Broadcasting Corpn. Ltd. v. British Satellite Broadcasting Ltd. [(1992) 1 Ch. 141] and the Media Works NZ’s case were cited in this context. In case it is not result oriented reporting, injunction must follow irrespective of whether the use of the footage is fair or unfair.
Another question that may arise is the status of reporting of an event that is primarily aimed to raise revenue by way of advertising profit, such as the reporting of cricket news in India for instance. Therein the concept of fair dealing will have to be looked into. Considering the constitutional right to freedom of speech and expression, the court permitted footages to be used while reporting sports events in both hard news and sports news programs but only if the programs were pre-existing news format programs rather than designed for a particular sports event and if specific advertisements are not solicited from third parties to be put on the air in the program or the third party has not voluntarily approached the TV channel and paid special premium for its advertisement to be put on the air.
The next issue to be considered was whether the use of the footage in the present case is consistent with the principles of fair dealing envisaged under Section 39(b) and Section 52(1)(a)(iii) of the Copyright Act. Certain factors were laid down by the court as to constitute the requisite consideration, viz. the proximity of time of the sports news being put on the air to the sports event [The more proximate the time, the more the weightage to the use being unfair, although longer the event is, lesser will be the importance attached to this factor], whether the offending program competes with exploitation of the copyright by the copyright owner [this would include the effect of the offending use on the actual or the potential market for the copyright work and depend on competition, duration and repetition of use, likelihood of the sponsor of the special program being associated by the viewer base with the original event, goodwill thereof etc.]
While admitting that such effects and association would harm the economic interests of the original investors of the event, the court at the same time recognized that stale news is no news and thus news has to be reported while it remains current [a lifespan of 24 hours was agreed upon].
After much deliberation about what consists news, the court agreed that the time span or gestation period will vary from event to event. In a cricket match, the span of the match as an event being news would span the entire duration of the match, while individual events within a match would be events which on the principle of stale news is no news would need to be reported immediately. Viewer interest also demanded the same.
Thus, the TV channels would have two options, only one of which can be opted for in relation to special sports news programs. They can either opt to put on the air, an advertisement specifically targeted during special programs, and not to use the footage. On the other hand, they can choose to use the footage but not put on the air any advertisements. With respect to a cap on the amount of footage used and repetition thereof, the court was of the opinion that each case would have to be viewed on its facts depending upon the number of matches played per day at different venues. Nor did the judiciary see any reason to make any qualitative or quantitative difference between tickers with advertisements being put on the air and regular advertisements sitting within the special shows.
The event organizers or the broadcasters were perceived to have the discretion to give something more to the TV channels in accordance with the ICC guidelines, but anything restrictive in the guidelines, which distorts the principle laid down here would not be protected under law.
Decision: The court did not comment upon the other directions issued by the Single Judge that were in challenge in the present appeal since the matter involved a quia timet action and related to events of the past with an apprehension of being threatened for the ensuing T.20 ICC World Cup Tournament, which has already come to an end. An expectation was voiced that for future events, the TV channels would use the footage strictly in accordance with the said principles or they would have to purchase the footage legally from ICC or the authorized broadcaster.
The News Broadcasters Association (NBA) had drafted the NBA News Access Guideline for One-day and T-20 Cricket Matches’ on its own (having no statutory authority) on January 9, 2011. Respondent objected to this and issued the ICC Cricket World Cup 2011 News Access Guidelines for India (ICC Guidelines) on January 25, 2011. No consensus emerged, however, on which guideline should the NBA members abide by. The Respondent pleaded violation of its own guidelines by the Appellant during the ICC World Cup, 2011 and accordingly, a quia timet action was brought via the present suit, so as to restrain the Appellant from using without Respondent’s consent, the footage of the proposed ICC Organized T20 World Cup Cricket Tournament.
The Appellant didn’t deny the Respondent’s proprietary rights, but extended the defence of fair dealing in the broadcast in reporting of current events [S. 39(b) of the Copyright Act, 1957 and S. 52(1)(a)(iii)]. The Appellant had, in the past, put on the air special programmes involving match discussion, review, criticism, analysis, pitch reports and commentaries by renowned cricketers. The Appellants profit from these programs by way of advertising revenue and display of brand names/ trademarks in the backdrop. The usage of such brand names in such programs in a prominent fashion like that may give rise to the impression in the minds of the populace that the company owing said brand name/trademark is in some manner associated with the original ICC event in some capacity such as the sponsor.
Permanent injunction was sought by the Respondent against the Appellant, so as to prevent the latter or its authorized representative from copying, reproducing, cusing, broadcasting or communicating to the public, telecasting or streaming, commercially utilizing or otherwise dealing in any manner whatsoever with any of the footage and content of the past/future ICC events or infringing the Respondent’s exclusive broadcast rights, broadcast reproduction rights or other rights. Damages were also sought from the infringer by the Respondent.
The Single Judge had originally decided that the Appellant could use footage length of the maximum limit prescribed by the ICC Guidelines, that fresh footage would be delayed by at least 30 minutes, the Appellant should not air any advertisement immediately before, during or immediately after the said footage, unless said footage is shown in the news bulletins, in which case, ticker advertisements would be allowed provided that such advertisements had not been booked by the Appellant to be shown only during reporting of ICC Twenty 20 World Cup, 2012. Moreover, the advertisement(s)/logo(s) of the sponsor of the news bulletin in which said footage is shown can be carried by the defendant on tickers at the time of reporting of the event, only if the sponsorship is of the news bulletin and the logo and/or advertisement of the sponsor appears on the ticker(s) throughout the news, except when the advertisements of others are being aired. Nor can such footage be used by the Appellant in special programs indicating an association between the advertiser/sponsor of the program and the subject matter of the program. Furthermore, any use of such footage by the Appellant would have to be accompanied by courtesy bugs/courtesy lines providing due acknowledgement to the Respondents and the official ICC event logo.
The Single Judge had relied upon decisions like ESPN Star Sports v Global Broadcast News Ltd. [2008 (38) PTC 477 (Del)] to hold that both copyright and broadcasting reproduction rights could separately co-exist, that these rights may vest with one/more persons and that prolonged and repeated footage of the broadcast, beyond what was permissible by fair dealing, would unfairly affect the goodwill, advertising and commercial prospects of the right holder. Reliance had also been placed on Media Works NZ Limited & Anr. v. Sky Television Network Ltd. wherein it was held that in the context of fair dealing, the extract must be brief and should be considered in the context of the length of the recording and that the extracts had to be used within 24 hours of the event in order for it to amount to a ‘current event’, and that too, only in a program that reported current events. The NBA guidelines did not have any legal authority, while the ICC guidelines were allowed to be relied upon as an aid to determine the extent of fair dealing while using the footage.
An appeal had been preferred from this decision before the Delhi High Court.
Judgment: The judges began with reiterating the need to protect the interest of the investors in such mega broadcasting events. Although NBA was partially allowed to be impleaded in the suit, it was not granted the right to make submissions.
The court held that an event/affair which may be entertainment to the masses can still pose as an news event/affair to be reported, as per Nine Network Australia Pty Ltd. vs. Australian Broadcasting Corpn.[(1999) 48 IPR 333] and TCN Channel Nine Pty Ltd. vs. Network Ten Pty Ltd. [2002(190) ALR 468]. In the present case, the first point to be determined was whether the Appellant’s alleged activities can be termed to occur by way of reporting or otherwise. The test that was laid down was whether the activity involves coverage/reporting that is result oriented or whether it is primarily an analysis/review of a sporting event. Cases like British Broadcasting Corpn. Ltd. v. British Satellite Broadcasting Ltd. [(1992) 1 Ch. 141] and the Media Works NZ’s case were cited in this context. In case it is not result oriented reporting, injunction must follow irrespective of whether the use of the footage is fair or unfair.
Another question that may arise is the status of reporting of an event that is primarily aimed to raise revenue by way of advertising profit, such as the reporting of cricket news in India for instance. Therein the concept of fair dealing will have to be looked into. Considering the constitutional right to freedom of speech and expression, the court permitted footages to be used while reporting sports events in both hard news and sports news programs but only if the programs were pre-existing news format programs rather than designed for a particular sports event and if specific advertisements are not solicited from third parties to be put on the air in the program or the third party has not voluntarily approached the TV channel and paid special premium for its advertisement to be put on the air.
The next issue to be considered was whether the use of the footage in the present case is consistent with the principles of fair dealing envisaged under Section 39(b) and Section 52(1)(a)(iii) of the Copyright Act. Certain factors were laid down by the court as to constitute the requisite consideration, viz. the proximity of time of the sports news being put on the air to the sports event [The more proximate the time, the more the weightage to the use being unfair, although longer the event is, lesser will be the importance attached to this factor], whether the offending program competes with exploitation of the copyright by the copyright owner [this would include the effect of the offending use on the actual or the potential market for the copyright work and depend on competition, duration and repetition of use, likelihood of the sponsor of the special program being associated by the viewer base with the original event, goodwill thereof etc.]
While admitting that such effects and association would harm the economic interests of the original investors of the event, the court at the same time recognized that stale news is no news and thus news has to be reported while it remains current [a lifespan of 24 hours was agreed upon].
After much deliberation about what consists news, the court agreed that the time span or gestation period will vary from event to event. In a cricket match, the span of the match as an event being news would span the entire duration of the match, while individual events within a match would be events which on the principle of stale news is no news would need to be reported immediately. Viewer interest also demanded the same.
Thus, the TV channels would have two options, only one of which can be opted for in relation to special sports news programs. They can either opt to put on the air, an advertisement specifically targeted during special programs, and not to use the footage. On the other hand, they can choose to use the footage but not put on the air any advertisements. With respect to a cap on the amount of footage used and repetition thereof, the court was of the opinion that each case would have to be viewed on its facts depending upon the number of matches played per day at different venues. Nor did the judiciary see any reason to make any qualitative or quantitative difference between tickers with advertisements being put on the air and regular advertisements sitting within the special shows.
The event organizers or the broadcasters were perceived to have the discretion to give something more to the TV channels in accordance with the ICC guidelines, but anything restrictive in the guidelines, which distorts the principle laid down here would not be protected under law.
Decision: The court did not comment upon the other directions issued by the Single Judge that were in challenge in the present appeal since the matter involved a quia timet action and related to events of the past with an apprehension of being threatened for the ensuing T.20 ICC World Cup Tournament, which has already come to an end. An expectation was voiced that for future events, the TV channels would use the footage strictly in accordance with the said principles or they would have to purchase the footage legally from ICC or the authorized broadcaster.
