• Super Cassettes Industries Ltd. V. Myspace Inc. & Anr., 2011 (47) PTC 49 (Del.)

Main Provisions:  Copyright Act, Sections 59, 62 (2), 14, etc.; Information Technology Act, 2000, Section 79; US Digital Millennium Copyright Act; UK Copyright Designs & Patents Act, 1988 (CDPA)

Brief Facts/Main Issue(s):

• Application for interim injunction disposed of by this order.
• Plaintiff copyright owner of repertoire of songs, films, sound recordings etc.
• Defendant No. 1- Social networking & entertainment website allowing users to share and view music, video, films, etc. Based in USA. Provides cont… specific content.
• Defendant No. 2- Division of News Corp., Fox Interactive Media offers border fee online network that caters to consumer by giving  them platform or tools.
• Some defences raised by the Defendants

1. Acts of Defendants are of intermediary of providing free of cost platform to users without actual or direct knowledge of content being uploaded. Portal of Defendants such that it can’t exercise control over content being uploaded.
2. Protected acts under Section 79 of Information Technology Act, 2000 and the US Digital Millennium Copyright Act.
3. Defendant’s themselves required in their terms with users that content violating IP rights of others should not be uploaded. Various safeguards against upload report of CR content.

Salient Findings:

On infringement of copyright in the Plaintiff’s works by the Defendants:

• Section 51 of the Copyright Act provides that when any person ‘permits for profit any place to be used for the communication of the (copyright) work to the public’, such act constitutes infringement.
• Infringement by ‘authorization’: Further it is infringement under Section 51 of the Copyright Act when a person does anything, exclusive right to do which is conferred on the Copyright owner, such act constitutes infringement. Under section 14 only copyright owner can do or ‘authorise’ to do certain acts in respect of copyright work.  Held, that authorization requires knowledge coupled with approval sanction, countenance. While the Defendants had knowledge of infringement in facts of the case, held that presence of control/authorization on the Defendants’ part can only be determined upon trial.

Territorial Jurisdiction (As the Defendant based in the US):

• Case under Copyright Law and for infringement, not passing off. Therefore, suit can be instituted at place where Plaintiff carries on business or works for gain, etc. under Section 62 (2) of Copyright Act. Exphar S A & Anr. V. Eupharma Labs & Anr. (2004) 3 SCC 688 has already settled the law in this regard.
• As regards foreign defendant – Foreigner must be either resident and/or carrying on business within jurisdiction, but well settled that when municipal law provides otherwise or overrides private international law then municipal law prevails.
• Not a case of commission of torts outside India.
• Distinguishes Banyan Tree case-(i) It was for passing off where normal CPC Rules apply (ii) Plaintiff had no presence in the jurisdiction in any case.

Whether exemption under Section 79 of the Information Technology Act applicable to the Defendants

-     The exemptions under Section 79 have to be read with Section 81 which provides that the exemptions do not restrict rights under Copyright or Patents Acts. Further, the defendant may not be entitled to the exemptions for not fulfillment of conditions for claiming exemption under Section 79 (3).

Applicability of US Digital Millennium Copyright Act (DMCA):

• Adoption & drawing aid from provisions of DMCA when there is no para materia provision under Indian law, would mean adding to provisions of the Indian statute & enlarging its scope by the Court when legislature does not provide for it, which is not permissible.  Hence, in absence of para materia provisions under Indian law DMCA cannot be applied to the case.

-     Post-infringement measures safeguards provided by the Defendant may hold good in jurisdictions having specific legislation in this regard, but Indian law does not provide for such exemptions

Accordingly, an injunction in favour of the Plaintiff granted and Defendants directed to remove from their portal/restrained from displaying works of the Plaintiff as per list of works that the Plaintiff to provide to the Defendants.