What if? Discussing the Elsevier Ltd. And Ors v Alexandra Elbakyan and Ors in the Multiverse of Substantive Copyright Arguments

In an earlier post, Swaraj highlighted that despite the Sci-hub case going on for the past 2 years (see here, here, here, here  and here for previous posts on this), there has hardly been any discussion by the court on the substantive issues. SpicyIP intern Tanvi Agarwal brings us up to date on the last two orders (see here and here) regarding amendments that the defendants wanted in the written statement, and the dismissal of the application to reject the plaint. In the context of certain questions that arose in the proceedings, Tanvi then brings up an interesting hypothetical i.e. what if the defendants had challenged the ownership of the copyright early on, instead of the attempt to amendment later on. Tanvi is a second-year student pursuing BA LLB at the National University of Juridical Sciences. She is intrigued by the field of Intellectual Property Law and wishes to explore the same.

What if? Discussing the Elsevier Ltd. And Ors v Alexandra Elbakyan and Ors in the Multiverse of Substantive Copyright Arguments

Tanvi Agarwal

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Back in December 2020, three major publishing houses had filed a copyright infringement suit against ‘Sci-Hub’ and ‘Libgen’ in the Delhi High Court. Over the course of two years the case has seen a steady development in terms of several orders being passed by the court (one of the important orders discussed here). However, these orders are merely procedural in nature and the core copyright questions surrounding the dispute have not been dealt by the court yet.

In this post, I delve into the two recent orders of the court wherein it: first, denied amendment in the written submission by the defendant; and second, refused to dismiss the plaint on Order VII Rule 11 grounds.

Amendment in the written submission

An order dated 3 November 2022 denied the defendants from making an amendment to their written submissions. The defendants sought an amendment to the effect of disputing the ownership of the plaintiffs in the copyright of the underlying works. The written statement that was sought to be amended read “In the case at hand, although it is not disputed that the Plaintiffs are owners of the Copyright in their works.” The defendants based their claim on certain assignment agreements that were filed by the plaintiffs in a sealed cover which was disclosed to them only pursuant to an order dated 14 January 2022. Subsequently, they wished to withdraw their undisputed admission of copyright ownership by the plaintiff on grounds of the assignment agreement and the same being unenforceable in law. The defendants also relied on the Supreme Court judgement in Om Prakash Gupta v Ranbir B. Goyal that allows amendment in written statement if the disclosure of the assignment agreement was made subsequent to the filing of the suit. Furthermore, Baldev Singh and Others v Manohar Singh holds the threshold of an amendment to a written statement to be lower than that of a plaint where the adding, substituting or altering a ground of defence was permitted.

There are two main arguments that can be identified in the order- one, in relation to the assignment agreements; and two regarding the nature of the amendment that can be brought about in a plaint. Firstly, the court denied amendment on the ground that the assignment agreement had been disclosed to the defendant along with the plaint although in a sealed cover. In-action on behalf of the defendant to inspect the agreement could not be the basis for allowing an amendment in the written submission. To this end, the court held that the judgement in Om Prakash was not applicable in the present instance. Secondly, the court relied on the judgement in Heeralal v Kalyan Mal which held that “an admission of the defendants cannot be allowed to be withdrawn, if such withdrawal amounts to totally displacing the case of the plaintiff and would cause him irretrievable prejudice.” The court analysed that the defendant did not seek to clarify or explain the admission rather it wished to withdraw it which would challenge the ownership rights of the plaintiff. Therefore, the court dismissed the request for amendment by the defendant.

Dismissal of the plaint

Subsequently, the defendant invoked Order VII Rule 11 of the Civil Procedure Code for rejection of the plaint contending that it did not disclose any cause of action and was barred by the law. The defendant claimed that the assignment agreements, relied upon by the plaintiffs, did not confer ownership rights and was void under the law. They argued that the Plaintiffs were required to pay royalty and other consideration under the assignment agreements to the authors in exchange for “exclusive right to publish and distribute the articles”. In the absence of this economic aspect of the agreement it was void under Section 23 and 25 of the Indian Contract Act, 1872 and Section 16 and 19 of the Copyright Act, 1957.

The court recognised that the defendant had admitted that the plaintiffs were the owners of copyright and pursuant to the dismissal of their attempt to withdraw this admission (as discussed above) bound the defendant by the same. The court also took cognizance of the fifteen assignment agreements signed between the authors and the plaintiff conferring exclusive rights to the plaintiffs over the literary work. The submission of these agreements had discharged the plaintiffs of their initial burden to claim ownership towards their work under Section 55(2) of the Act. While the court did not undertake a scrutiny of these agreements, it read the plaint to disclose a cause of action where the plaintiffs asserted copyright ownership on the basis of these agreements and narrated facts to prove copyright infringement by the defendant. Therefore, the court dismissed the application by the defendant.

A hypothetical: What if ownership had been disputed earlier on?

It is interesting to note the possible shape that the litigation would have taken if the defendants had disputed the ownership of copyright by the plaintiffs from the time of initiation of the suit. In such a scenario, before analysing whether Sci-Hub and Libgen’s act constituted copyright infringement, the court would first have to delve into the question of whether the plaintiffs were the owners of the copyright in the works. The dilemma arises as the plaintiffs which are publishers in the present instance may have ownership of the copyright or it may continue to vest with the authors of the works. In India, section 17 of the Copyright Act (‘the Act’) determines the first owner of copyright while section 18 of the Act allows assignment of these rights. To determine the ownership over the copyright, the court ideally has to analyse the contractual obligations between the author and the publisher. In the present case, the plaint also states that “By virtue of agreements between the Plaintiffs and authors of the various literary works published by the Plaintiffs, the Plaintiffs have been assigned and thus are the owners of, inter alia, the exclusive rights…” Therefore, to assess the viability of this claim, the court will have to venture into the contractual policy of each of the plaintiffs. For instance, the Plaintiff No.1’s policy reads as “ In order for Elsevier to publish and disseminate research articles, we need certain publishing rights from authors, which are determined by a publishing agreement between the author and Elsevier. For articles published open access, the authors license exclusive rights in their article to Elsevier where a CC BY-NC-ND end user license is selected, and license non-exclusive rights where a CC BY end user license is selected. For articles published under the subscription model, the authors typically transfer copyright to Elsevier.” The court will have to adjudicate on the facts to decide the legality, relevancy and veracity of the agreements and whether it assigns ownership of copyright to the publishers or is just a license agreement transferring certain aspects (like publishing rights)? If an affirmative answer is reached, for the former, then the plaintiffs can assert copyright infringement of their works.

What about royalties and consideration?

Another angle to the test the legality of the agreements could be to venture into the question of whether along with assignment of copyright to the publishers, do these agreements provided the authors with some form of royalty? Section 19 of the Act mandates that assignment of the work must also specify “royalty and any other consideration payable.” While consideration can take the form of publicity or publication for the author, the royalty must be paid in monetary terms. It is a common feature of agreements between the publishers and authors of journal articles to lack this element of royalty being paid to the latter (as highlighted here). Similar question was raised by the defendants: “ A cursory examination of the agreements demonstrates that Plaintiffs have not compensated the authors with any royalty or any form of consideration and yet, they assert to have acquired exclusive rights of publication and distribution.” While the court rejected to entertain this question in the second order above, and keeping it open for adjudication another day, whenever the time comes,  the court would have to analyse the assignment agreements from the perspective of royalties to the authors.

An analysis of this situation highlights the importance of the assignment agreements and the significance of questioning the status of ownership of the copyright in the dispute. If the defendants had challenged the ownership status from the beginning of the dispute, the plaintiffs would have encountered a challenge to provide the validity of the assignment agreements in light of assigning ownership of copyright to the publishers and providing the authors with royalties in return.

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